Intellectual Property

Overview

A company's intellectual property rights rank among its most valuable assets and its protection is critical. At Tannenbaum Helpern, we understand the commercial importance of properly identifying, protecting, and commercializing the integrity, intrinsic value, and use of intellectual property. Tannenbaum Helpern's Intellectual Property practice includes trademarks, trade dress, patents, trade secrets, copyrights, product configurations, and marketing and advertising counseling and when appropriate litigation.

Our attorneys are skilled in strategically evaluating, protecting, registering, and enforcing intellectual property rights, helping clients create and maximize the value of their intellectual property portfolios, minimizing legal risks so that clients can focus on their business objectives, and successfully resolving and litigating domestic and international intellectual property disputes. We also work closely with clients to develop local and global branding strategies and create bespoke programs to police and enforce their brands.

Trademark

Tannenbaum Helpern’s Intellectual Property practice has decades of experience in successfully clearing, registering, protecting, licensing, enforcing, and defending trademarks in the U.S. and internationally. We advise clients on the selection, adoption, and clearance of strong, commercially effective trademarks, brand strategies and proper usage of marks, due diligence in mergers and acquisitions, and cost-efficient ways to protect marks in jurisdictions relevant to the client's current business and future plans. Tannenbaum Helpern attorneys also have substantial experience in litigation involving trademark infringement, unfair competition, false advertising, gray market goods, cybersquatting, and other online infringement, right of publicity, and related intellectual property disputes. Our experience includes representing multiple clients in high-profile disputes in state and federal courts throughout the US, in arbitration proceedings, before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and before the World Intellectual Property Organization (WIPO) and other domain name dispute resolution providers.

We are also members of INTA – the International Trademark Association. Our lawyers regularly present at global INTA events and programs and are active members of INTA committees, including INTA’s Anticounterfeiting Committee, as well as members of INTA’s Panel of Trademark Mediators.

Patent

Tannenbaum Helpern attorneys are experienced in patent litigation in the federal district courts and the United States Court of Appeals for the Federal Circuit, and in Administrative Proceedings before bodies such as the International Trade Commission. We also advise clients on the life cycles of patents and technologies in existing portfolios and how best to extend the protection of commercially vital products. Additionally, our attorneys assist clients in patent technology transfers of all types including in- and out-licensing, joint ventures, due diligence in mergers and acquisitions, and preparation of Freedom-to-Operate opinions. Much of our patent experience comprises litigation and licensing relating to pharmaceuticals, medical devices, electronics, cosmetics, heavy machinery, and consumer goods.

Trade Secrets

Tannenbaum Helpern intellectual property attorneys have considerable experience in recognizing when an intellectual property asset should be safeguarded as a trade secret rather than another method requiring disclosure and advising clients on the measures necessary to maximize protection. Our attorneys are skilled in determining, under current standards, which business methods and trading strategies are likely patentable or not patentable subject matter and must be protected as trade secrets. Additionally, Tannenbaum attorneys are skilled in litigating trade secret theft claims in state and federal courts.

Copyright

Our copyright experience encompasses assistance with identifying copyrightable works, copyright registration, licensing, and enforcement in multiple jurisdictions, as well as fair use and parody analyses, joint ownership issues, work-made-for-hire agreements, software copyright rights, assignments and due diligence. We assist clients with their copyright needs across a wide range of industries, including banking and finance, sports and entertainment, interior design, textiles, technology and software, print and Internet publishing, architecture and construction, fashion and jewelry, travel, manufacturing and the illicit trade and local and federal law enforcement industry.

Industries Served

Tannenbaum Helpern IP group clients include inventors, designers, small and newly established businesses, established multinational corporations, international banks, hedge funds, real estate companies, breweries, restaurants, and retail stores. Industry experience includes but is not limited to life sciences, medical devices, software, chemical, electronic, e-commerce, Internet, music, art, publishing, distribution, construction, financial services, food and beverage, hospitality, technology, fashion, staffing, and the sports and entertainment industries, including professional athletic leagues and teams, as well as media companies, producers and distributors.

In the field of entertainment law, our attorneys have represented motion picture producers and distributors, artists, playwrights, authors, photographers, fashion designers, and technical personnel, as well as clients in the music and publishing industries. We have considerable experience in commercial transactions and financings having intellectual property as their foundation.

Internet and Ecommerce

We are experienced in addressing the many ways that intellectual property issues arise in e-commerce and on various online platforms, including resolving domain name disputes, advising clients with respect to the use on their websites or social media of copyright-protected materials and other intellectual property belonging to third parties, establishing new e-commerce websites, and negotiating license, distribution and other agreements in the Internet context.

Representative Services

• Litigating copyright, trademark and patent infringement matters
• Litigating misappropriation of trade secrets, false advertising, and unfair competition disputes
• Negotiating and drafting license agreements, joint venture agreements, publishing agreements and other contracts relating to copyrights, trademarks and patents
• Crafting and implementing programs to police and enforce assorted patents, trademarks, trade dress, trade secrets, product configurations, copyrighted works, and marketing and advertising efforts
• Copyright registration and enforcement programs
• Trademark registration and U.S. and global registration strategies
• Negotiating, drafting and enforcing settlement agreements, coexistence agreements, and restrictive covenants
• Resolving disputes through creative settlements, arbitration, and litigation
• Advising on the protection of copyrights, trademarks, patents and trade secrets
• Establishing rights to domain names and litigating gTLD and ccTLD domain name disputes
• Ensuring websites and other promotional material comply with applicable copyright, trademark, and advertising laws and FTC regulations

Our attorneys have experience working with the United States Customs Service (both I.C.E. and Homeland Security), the United States Federal Bureau of Investigation, the United States Treasury Department, the United States Alcohol, Tobacco and Firearms Agency, Interpol, the World Intellectual Property Organization, and numerous local law enforcement agencies (within the United States and throughout the World) in connection with the exposing and thwarting of illicit trade including smuggling, parallel imports, and the manufacture and sale of counterfeit goods, as well as the freezing and seizure of assets derived from such illegal activities.

Selected Accomplishments

• Assisted Fortune 20 company with designing, creating, executing and governance of an internal worldwide Anti-Illicit Trade unit.
• Representation of Fortune 50 companies in multi-national, multi-forum trade secret/copyright case. Awarded judgment in excess of $12.5 half million dollars, as well as attorneys’ fees and costs of over $500,000. Assisted U.S. Customs Service in criminal conviction of counterfeiters. Oversaw and coordinated simultaneous civil raids, asset freezes and seizures in multiple U.S. States (New York, South Carolina, Las Vegas, and Sacramento) and foreign countries (India and Singapore).
• Successfully litigated more than 500 ex parte counterfeiting cases concerning parts for heavy machinery, cars and tractors, luxury products (watches and jewelry), clothing (shoes, sneakers, sports apparel, and event merchandise), cosmetics, sporting goods and pharmaceuticals. Exposed multiple counterfeiting and smuggling syndicates and enterprises relying on civil ex parte proceedings and remedies. Located, froze and recovered nearly $300 million of ill-gotten assets hidden in several foreign jurisdictions including Argentina, Brazil, Bolivia, Bulgaria, Cyprus, India, Malaysia, Paraguay, Romania, and Singapore.
• Representation of investors in a patent infringement case against a publicly-traded licensor that broke its license agreement with the investors and stole the technology. Case settled favorably for client.
• Representation of medical device, apparel, footwear, sporting goods, multimedia and entertainment companies in worldwide brand development and protection programs, including trademark, patent and copyright counseling and prosecution. Created, negotiated and implemented manufacturer and distributor agreements and product, supply, purchase, license and development agreements.
• Tried patent infringement cases concerning pharmaceuticals, electrical devices, mechanical devices, medical devices, sporting goods, garbage bags and consumable products and their packaging.
• Litigated right of publicity case concerning Defendants theft and use of a celebrity’s persona and trademark to unfairly compete with that celebrity’s products.
• Representation of film distributor in arbitration for North American DVD and VHS distribution rights of a blockbuster film. Settled favorably for client.
• Outside general counsel to professional athletic leagues and teams. Drafted and enforced standard players’ agreements. Created and implemented sponsorship and licensing programs, including league merchandising and video gaming rights. Represented parties in connection with the purchase and sale of teams.
• Negotiated and implemented an exclusive worldwide, multi-platform Software License and Development Agreement between a publicly-traded video game manufacturer and a major national professional sports league.
• Representation of entities in connection with the creation, launching, operation, and management of two sports leagues.
• Advised Fortune 500 telecommunications equipment manufacturer in connection with restructuring their distribution arrangements, including trademark and software licensing issues with both resellers and end-users.
• Negotiated license agreement for soft drink bottler with Fortune 500 candy manufacturer
• Negotiated licensing agreements for portfolio management, pricing, hedging and trading software used as the arbitrage trading system at a major securities firm.
• Prepared license agreement for a new financial index to the investment advisor of an index fund.
• Acted as special trademark counsel to a consortium of lenders in connection with the $300 million financing and acquisition of a major worldwide foods company and its subsidiaries, secured principally by the borrower's owned and licensed trademarks.
• Represented Australian company in acquiring engine supercharger technology from Scottish and American companies for use and license in the U.S. and around the World.
• Represented owners of pinball machine copyrights and other intellectual property in drafting and negotiating licenses exploiting those rights, including a license to Microsoft to use intellectual property in historically important pinball machines in "Pinball Arcade" computer game.
• Represented foreign-based distributor of duty-free merchandise in licensing rights to use the name and trademarks of a well-known men's magazine worldwide to develop and market a line of alcoholic beverages.
• Negotiated license of articles for Internet content site in exchange for cash and stock options.
• Advised Scottish counsel on New York and U.S. law concerning patent and technology licenses relating to pharmaceutical products.
• Negotiated license agreements for works of art to be used on consumer products, including license of famous cartoonist's work.
• Negotiated license of name and likeness of prominent entertainment industry figure.
• Advised hedge funds and financial services business on need for and terms of licenses for financial indices and securities identifying numbers.
• Won summary judgment and the subsequent appeal in a copyright case against a well-known sculptor who based an edition of sculptures on a photograph taken by a client.
• Secured judgment on behalf of employer against a former employee who used the employer's trade secrets to compete with it.
• Secured early, cost-effective dismissal of patent infringement litigation by demonstrating that statements in the prosecution history barred the plaintiff’s doctrine of equivalents infringement theory.