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Intellectual Property
Representative Matters

Intellectual property may well be one of your most valuable assets, and M&R’s Intellectual Property Practice Group stands ready to protect it in a myriad of ways.

We advise on the validity of trademarks and copyrights. The firm handles associated opinion-work concerning e-commerce, business and finance systems and computer software, hardware and networking, among many other things. Likewise, M&R represents companies – those in the advertising and digital media, consumer products, entertainment, financial services, health care, hospitality, insurance, retail and apparel sectors – relative to brand identity and rights protection matters. In addition, we litigate IP infringement matters in federal courts as well as the Trademark Trial and Appeal Board (TTAB), and skillfully prosecute trademarks before the U.S. Patent and Trademark Office.

Without question, when it comes to all things IP related, M&R and our IP specialists are second to none.

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Areas Of Expertise

Amended Mark: Successfully petitioned on behalf of a prominent heavy metal guitarist to correct the record and have the registration of his mark for coffee beans reissued after his original application was found to include a misspelling of the mark.

Copyright & Trademark Prosecution: Handled all stages of trademark and copyright prosecution in the U.S. Patent and Trademark Office and U.S. Copyright Office, including opposition and cancellation practice before the Trademark Trial and Appeal Board.

Counterfeiting: Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of a major recording artist. Thereafter, participated in seizure of counterfeit goods.

Distribution Agreement: Drafted and negotiated 13-episode home video distribution agreement for startup digital animation content provider.

Domain Name DisputeSuccessfully challenged the improper registration of an Internet domain name by a competitor of our client, a world-renowned science and education museum. Also, by way of a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, forced the transfer of the domain name.

Financing: Represented a privately held, New York-based medical device company from its inception through several rounds of financing. The company boasts proprietary technology that provides a secure cloud-based solution for reliable reviewing, reporting, archiving, managing and distribution of ultrasound and other forms of medical imaging.

Illegal Bootlegging: Represented a major hard rock band that was negotiating a repackage release of recordings in Europe, but encountered problems when the distributor identified unauthorized bootleg concert DVDs available on Amazon’s German website. Facilitated the removal of the infringing products from the website, allowing the client to move forward with the planned release, all the while enjoying reduced fallout from unauthorized third-party product sales.

Licensing Agreements: Negotiated and drafted a cross-license and field-of-use agreement between two major specialty chemical corporations for patent portfolios relating to anti-reflective and top-coat immersion compositions.

Misappropriation of Trade Secrets: Represented a young entrepreneur after his “life’s work” was stolen by a large corporation, which claimed the work as its own. After a four-year legal battle against some of the largest national law firms, obtained a multi-million dollar verdict on behalf of our client, an award that remains one of the largest in the U.S. for the misappropriation of computer trade secrets.

Patent Prosecution – International: Successfully defended an electronics manufacturer before the World Intellectual Property Organization (WIPO) in the prosecution of its patent portfolio of software algorithms and processes for the identification of products displayed in media programs.

Rebranding: Managed all intellectual property-related aspects of corporate-wide rebranding effort for large entertainment company client.

Technology Transaction – Business Acquisition: Negotiated on behalf of a major private investment firm and drafted the intellectual property and services clauses in contracts associated with its $2 billion equity and asset purchase of a telecommunications company’s business and manufacturing facilities.

Technology Transaction – Merger Agreement: Negotiated and drafted the intellectual property clauses included in a merger agreement governing a global technology provider’s $35 million acquisition of the retail commerce arm of a leading next generation mobile solutions provider.

Trade Secret Litigation: Represented a social gaming company in litigation against a large competitor that involved allegations of misappropriation of trade secrets and employee raiding.

Trademark Infringement: Obtained favorable settlements and consent decrees on behalf of NFL Properties, LLP and a local NFL franchise in connection with multiple trademark infringement and false designation of origin cases filed against defendants in connection with their unlicensed use of trademarks and sale of NFL merchandise.

Trademark Infringement/Sanctions Award: Obtained a massive $250,000 sanctions order for the failure of a defendant and its attorney in a trademark infringement case to participate in discovery. A Judge in the United States District Court issued his staggering ruling after the defendant neglected to respond to our client’s discovery requests and then refused to abide by the Court’s order to provide responses to interrogatories and produce documents, which was requested by way of our comprehensive motion to compel.

Trademark, Copyright: Managed all trademark and copyright issues for renowned digital film studio.

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