Trademark Clearance Registration & Portfolio ManagementOur attorneys regularly counsel clients worldwide on the selection, clearance and protection of brands, trademarks, service marks, trade identity, slogans, designs and logos. We file and prosecute applications before the U.S. Patent and Trademark Office (USPTO) and each of the separate trademark authorities in all 50 states, and prosecute foreign applications.
We also negotiate and draft agreements for the license and sale of brands, logos, trademarks, service marks, trade names and trade dress.
Our attorneys are experienced in registering trademarks with the U.S. Customs Service to bar entry of counterfeit goods and obtain the release of goods barred from entry because of trademark registration certificates on file. We give legal opinions regarding trademark infringement and dilution, validity and ownership issues involving brands, logos, trademarks, service marks, trade names and trade dress.
Our attorneys and paralegals manage large U.S. and foreign portfolios of registered trademarks for diverse clients and industries.
We are experienced in filing direct foreign national applications, Madrid Protocol applications and European Community (CTM) Trademark applications. We have cultivated a group of law firms in countries around the world to assist in foreign filing of trademarks and designs.
To secure and protect valuable trademark rights for our clients, we prosecute and defend administrative trademark oppositions and cancellations before the Trademark Trial and Appeal Board of the USPTO.
We have a continuously updated computerized docketing system for tracking deadlines for responding to official actions, as well as deadlines for filing of renewal affidavits of use in the United States, and abroad, as well as tracking annuities due worldwide.
Celebrity Rights ProtectionWe represent celebrities and sports figures, their estates and licensing agents to secure trademark rights in their names, likenesses, signatures, numbers and unique gestures. We prosecute and defend right of publicity actions in the state and federal courts. We also assist with compliance with the statutes of various states for registration of deceased person license rights. Finally, we draft license agreements and commercial agreements for use of the names, likenesses, signatures, numbers and unique gestures of celebrities and sports figures
Due Diligence in Trademark Transactions In a merger or acquisition transaction, we work closely with our clients to assess risk and conduct due diligence on the trademark portfolio, advertising, promotional materials and packaging being transferred. We evaluate the trademarks and brands for correct record title, and the advertising, promotional material and packaging for freedom from infringement claims from and for compliance with regulations and laws. Further, we counsel on the compliance with warranties and indemnities on these issues in merger and acquisition agreements.
FranchisingIt has been said that trademarks are the cornerstone of a franchise. We work with our franchise attorneys to assist in the selection, clearance, registration and enforcement of trademarks and company names for franchised businesses of all types. We also assist with the drafting of provisions for Franchise Agreements, SEC Filings and Franchise Disclosure Statements.
When trademark-related litigation arises in the franchise context, we have the experience to handle the prosecution and defense of litigation in courts around the country.
Copyright & MediaFrom literary works to computer software licensing, Locke Lord's attorneys are skilled in every aspect of copyright law. We are ahead of the curve in high technology applications and in author, composer and performance rights. We advise clients on obtaining copyright protection for Internet websites, multimedia, CD-ROMs, computer software and computer databases. And we secure rights in works created by third party consultants and artists.
We have experience with obtaining copyright protection on broadcast and media works. We advise on ownership rights for copyrighted works, including works for hire and rights that descend by devise or inheritance. Our attorneys negotiate and prepare all types of agreements, including:
Our attorneys prepare license agreements for film clips, text and graphic artwork and assignments of copyrights in music, print and film. We practice before the U.S. Copyright Office with a full range of services, including filing of copyright applications, recording of security interests and arranging for title transfers and title searches. We also advise on copyright infringement actions, ownership, validity and title issues involving:
We also clear the rights to use text, artwork, photographs, music and sound recordings originating with others and obtain necessary rights and permission to use them.
Due Diligence in Copyright Transactions In a merger or acquisition transaction, we work closely with our clients to assess risk and conduct due diligence on the assets being transferred, including computer software and other copyright protected materials. We evaluate the copyright portfolio being transferred for correct record title and freedom from infringement claims from others. Also, we evaluate whether the client holds the full copyright in the computer software and copyrighted works created by freelance programmers, authors, photographers and artists. Further, we counsel on the compliance with warranties and indemnities on these issues in merger and acquisition agreements.
Agreements, Contracts & LicensesWe have experience in negotiating and drafting licenses for use of trademarks, brands and copyrights. We also advise clients on structuring corporate organizations to limit trademark licensor liability and reduce state income and franchise taxes.
Our attorneys draft trademark license agreements that avoid being considered franchise agreements requiring delivery of franchise disclosure statements and compliance with franchise regulations. We negotiate for our clients’ agreements involving the license and sale of multimedia, Internet websites, domain names, brand names and logos, always checking on the record title to the works being licensed or sold and arranging for completion of any necessary acts to protect title and rights.
We regularly prepare agreements involving the license and sale of:
In addition, we negotiate, draft and review all types of agreements:
Anti-CounterfeitingLocke Lord leverages the broad experience of its attorneys who provide ADMARKSM anti-counterfeiting services to protect clients’ brands and trademarks. We understand and recognize that every well-known and profitable product is the target of counterfeiters and infringers.
When investing and growing a brand, brand owners must consider the impact of counterfeiting and develop global anti-counterfeiting strategies to combat this growing problem. While counterfeits are difficult to identify, track and remove from markets and counterfeiters are difficult to identify and prosecute civilly and criminally, Locke Lord’s trademark section is at the forefront in anti-counterfeiting enforcement.
We employ effective anti-counterfeiting strategies designed to fight counterfeiting and pirating, to stop importation and prevent sales of infringing goods. Our lawyers seek temporary restraining orders and preliminary injunctions against counterfeiters to immediately stop the sale and distribution of the offending products and to preserve the counterfeit products as key evidence for trial. Our attorneys are experienced in registering trademarks and copyrighted works with the U.S. Customs Service to bar entry of counterfeit goods and piratical works and obtain the release of goods barred from entry. Many of our lawyers are former prosecutors, bringing with them a prosecutorial zeal and the diligence required to stop counterfeiters.
We also have assisted multiple brand owners in developing and deploying anti-counterfeiting programs, strategies and best practices to fight counterfeiting and pirating, and to stop importation and prevent sales of infringing goods both through traditional channels, the Internet and through social media outlets such as Facebook, Twitter and YouTube.
Mike Schulman, Chair of Trademark, Copyright & Advertising PracticeSean Fifield, Chair of Trademark & Branding SectionGreg Casamento, Chair of Advertising & Marketing Section
Locke Lord attorneys have represented numerous high profile clients in connection with stopping counterfeiters, including the following cases:
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