Business Services

Intellectual Property

Behind every success is a team working in unison. We value the relationships we build with our clients; our commitment to excellence in client service includes investing the time to listen to our clients and thoroughly understand not just their legal issues and goals related to intellectual property, but also their organizational structure and goals.

Roetzel's Intellectual Property team will work with you to determine the best strategy for achieving these goals.

Our Intellectual Property (IP) team will work with you to determine the best strategy for achieving these goals, each step of the way. We have found that a strategic analysis of our clients' IP portfolio helps our clients obtain and maintain the most value for their IP assets.

Our Experience

  • Managing a domestic and international trademark portfolio for a publicly-traded global entity consisting of over 3,000 trademarks in Australia, Asia, Europe, North America, South America, Africa, and the Middle East
  • Conducted pre-acquisition buy-side due diligence of trademark and other IP assets obtained as part of a manufacturing company acquisition and assisted with the negotiation of the IP representations and warranties and indemnification provisions of the related acquisition agreements
  • Drafting comprehensive policies relating to trademark assets, copyrights, acceptable use of the internet, and websites
  • Representing privately-held and publicly-traded entities in negotiating IT vendor contracts
  • Conducting trademark audits to ensure appropriate trademark registration coverage and eliminate unnecessary or duplicative coverage and costs
  • Represented a manufacturing company in several federal court actions involving trade dress infringement, trademark registration cancellation, false advertising, unfair competition and false patent marking claims, and obtained favorable and cost-effective settlements for the client at the discovery stage
  • Represented a large manufacturing client in numerous Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings, obtained transfer of the subject domain names from the infringers
  • Represented a utility company in a federal court action for trademark infringement, resulted in prompt and efficient settlement that complied with all client demands and resulted in complete cessation of use of client trademarks by infringer
  • Representing a large manufacturing client in numerous trademark opposition proceedings to protect a number of its marks, including some under the "family of trademarks" doctrine

What We Do

  • Comprehensive domestic and international trademark portfolio management, including through the use of secured electronic data rooms
  • Confidentiality, non-disclosure, and technology escrow agreements
  • Consulting and technology development agreements
  • Copyright licensing, protection, and litigation
  • Domestic and international trademark clearance, investigation, and enforcement programs
  • Trademark litigation and adversarial administrative proceedings (i.e., trademark oppositions and cancellation proceedings)
  • Internet and IT transactions, including negotiation of software agreements, cloud services agreements, IT services agreements, and other similar IT and/or IP agreements
  • Domain name acquisition, management, enforcement, and disputes
  • Marketing, licensing, transfer, and exploitation of intellectual property rights through appropriate agreements
  • Technology transfer and commercialization
  • Addressing Open-source software (OSS) risks with clients

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