Sean Fifield is the Chair of the Trademark, Copyright and Branding section at Locke Lord. His practice focuses on intellectual property protection and licensing, and general business contracts and financing, and merger and acquisition transactions. Mr. Fifield is a member of the firm’s Business Technology, Intellectual Property and Merger and Acquisitions practice groups.
Intellectual Property
Mr. Fifield regularly handles matters involving the protection and licensing of copyrights, trademarks, trade secret and related intellectual property rights. He is experienced in the negotiation and drafting of patent licenses, trademark licenses, trade dress licenses, software licenses, Internet service, hosting and linking agreements, and other agreements governing a wide range of intellectual property rights. Mr. Fifield also has experience in reviewing Web sites for intellectual property, privacy and a variety of other Internet and e-business legal issues.
Mr. Fifield regularly advises and assists clients with their selection, screening, registration and protection of trademarks in a wide variety of industries, including specialty minerals, consumer food products, specialty chemicals, banking, insurance and other financial services, hospitality products, restaurant services, specialty apparel, video games and entertainment. He regularly reviews and analyzes trademark search reports to screen new trademarks for infringement and prepares trademark applications on behalf of clients, both in the United States and in foreign jurisdictions though the Madrid Protocol international treaty process (or by supervising and coordinating local trademark counsel).
Mr. Fifield also assists clients in the publishing, entertainment, financial services, software and other industries in the protection and licensing of their copyrights. He assists with the preparation of copyright applications and drafts license agreements covering subject matter as diverse as dramatic works to Internet websites.
In connection with assisting clients in the protection of their intellectual property, Mr. Fifield regularly prepares and responds to cease and desist letters involving infringement or allegations of infringement of trademarks, copyrights and patent rights.
Finally, a substantial portion of Mr. Fifield’s intellectual property practice involves the negotiation of information technology licenses and agreements, including application service provider arrangements, information management and outsourcing transactions. Mr. Fifield has prepared forms of licenses for the products of a number of software vendors. Mr. Fifield also regularly negotiates custom software licenses with software vendors on behalf of a wide variety of clients.
Merger and Acquisitions; General Corporate
Mr. Fifield’s practice also involves merger and acquisition transactions and financing transactions, particularly transactions focused on the transfer of intellectual property assets or involving technical businesses. Mr. Fifield also regularly handles matters relating to corporate governance, antitrust regulation, consumer finance regulation, and the negotiation of a wide range of agreements, including consulting arrangements, sales contracts and distributorship agreements.
Education
- J.D., University of Michigan Law School, 1996
Michigan Journal of International Law - B.S.E., cum laude, University of Michigan, 1993
Bar Admissions
Admitted To Practice
- U.S. District Court for the Northern District of Illinois, 1997
Representative Experience
Intellectual property matters in which Mr. Fifield has assisted clients include:
- Represented a large insurance company in the negotiation of multiple platform and application licenses for use in a new data center;
- Represented large insurance company in the negotiation of an extended IT transition services agreement in connection with the acquisition of a major line of business (transaction value approx. $500 million). In addition, advised client and assisted in the negotiation of the intellectual property aspects of transaction;
- Represented a specialty minerals supplier in connection with the negotiation of the first stage of the licensing and implementation of a Microsoft Navision ERP system for the client’s operations;
- Represented a multinational pharmaceutical company in the renegotiation and expansion of an agreement for the outsourcing of substantially all of its IT department;
- Represented specialty minerals supplier in the negotiation of services agreements for the outsourcing of client’s e-mail system through an ASP solution and the outsourcing of client’s internal IT help desk;
- Represented IT consulting firm in the negotiation of usage tracking software development and implementation project for a Fortune 500 media company;
- Represented manufacturer of wafer production machines in the negotiation of a joint development agreement and underlying technology license with Fortune 500 corporation for the next generation of client’s devices;
- Represented automotive component manufacturer in the acquisition and license of sensor technologies for use in automobiles;
- Represented provider of remote network monitoring and facility management systems (hardware/software) in negotiating an OEM license agreement for software components to be used in a new product offering;
- Represented publisher of a magazine in the preparation of a form of subscription license agreement for access to an archival database of back-issues; and
- Represented a non-for-profit provider of a database in the negotiation of a license agreement with a local governmental entity for the use of the data in the provision of social services.
Corporate transactional matters in which Mr. Fifield has assisted clients include:
- Represented a manufacturer of component and subsystem devices in the $65 million acquisition of a manufacturer of proprietary touch sensitive user interface panels;
- Represented the shareholders in the sale of a medical receivable collection business utilizing certain proprietary software;
- Represented a large national insurance broker in the sale of its business to a competitor;
- Represented cosmetic ingredient manufacturer in the acquisition of an FDA-certified manufacturing facility for compounds utilized in consumer personal care products and a patent and technology license for the related intellectual property;
- Regularly represent a hearing care product manufacturer in connection with the establishment of joint venture and financing arrangements with distributors of its products;
- Regularly represent a bicycle manufacturer in connection with the sale and financing of specialty stores for its products;
- Represented large insurance company in the negotiation of an extended IT transition services agreement in connection with the acquisition of a major line of business (transaction value approx. $500 million). In addition, advised client and assisted in the negotiation of the intellectual property aspects of transaction;
- Assisted an audio equipment manufacturer in the establishment of joint ventures in China, Thailand and other jurisdictions; and
- Represented audio equipment manufacturer in the acquisition of a commercial audio management systems provider.
Publications & Presentations
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Co-Author,
"
Locke Lord QuickStudy: Brand Owners Can Protect Trademarks in Trademark Clearinghouse for New gTLD Domain Names
,"
Locke Lord
(April 24, 2013)
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Co-Author,
"
Locke Lord QuickStudy: FTC Updated Dot Com Disclosure Guide - How to Make Your Website, Mobile Apps, Social Media and Online Media Comply
,"
Locke Lord
(April 8, 2013)
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Co-Author,
"Locke Lord QuickStudy: Trademark Applicant’s Failure to Submit Written Proof of Intent to Use May Be Fatal,"
Locke Lord
(October 18, 2011)
-
Co-Author,
"Locke Lord QuickStudy: FTC Considers Updating Online Advertising Guide,"
Locke Lord
(June 21, 2011)
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Co-Author,
"Locke Lord's QuickStudy: Asian Domain Name and Keyword Scams – They’re Back!,"
Locke Lord
(January 20, 2011)
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Co-Author,
"Locke Lord's QuickStudy: SAS 70 Reports - Soon a Thing of the Past,"
Locke Lord
(January 18, 2011)
-
Co-Author,
"Client Alert: FTC Unveils Proposed New Guides for Environmental Marketing Claims,"
Locke Lord
(October 13, 2010)
-
Co-Author,
"Client Alert: SMS “Text Message” Advertisers Beware,"
Locke Lord
(June 10, 2010)
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Contributor,
"e-Matters: Outsourcing,"
Locke Lord
(October 1, 2009)
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Co-Author,
"Client Alert: Social Media and the Business of Insurance,"
Locke Lord
(July 10, 2009)
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Co-Author,
"Client Alert: Immediate Action: Well-known Brand Names and Trademarks are in Jeopardy on Facebook,"
Locke Lord
(June 11, 2009)
Events
- Advertising and Marketing Law: Emerging and Hot Topics (January 27, 2011)
- 2010 Advertising and Marketing Law: Emerging and Hot Topics New York, NY (May 13, 2010)
- "Internet Advertising Law Green Deceptive Advertising Law," The Essentials of Advertising & Marketing Law (Chicago, 2009) Chicago, IL (September 13, 2010)
- "Internet Advertising," The Essentials of Advertising & Marketing Law (Dallas, 2009) Dallas, TX (May 6, 2009)
Professional History
Professional Affiliations & Achievements
- Member, Chicago Bar Association
- Member, Illinois State Bar Association
- Member, American Bar Association
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