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

Related Media & Events

  1. Alerts
    Name, Image, and Likeness Reform Is Here: The Business Basics - Jul 16, 2021
    Following CARES Act, USPTO and Copyright Office Directors Extend Certain IP Filing Deadlines - Apr 6, 2020
    U.S. Patent and Trademark Office Temporarily Extends Filing Deadlines - Mar 30, 2020
    Copyright or Wrong? - Nov 2, 2018
    UPDATE: US Patent & Trademark Office Issues New Trademark Use Rule (Delayed until March 21, 2017) - Feb 15, 2017
    US Patent & Trademark Office Issues New Trademark Use Rule - Feb 9, 2017
    New Federal Law Provides Additional Protection for Trade Secrets - Jan 16, 2017
    What Does "Brexit" Mean For Your Valuable Trademarks and Brands? - Jun 30, 2016
    Supreme Court Delivers Myriad Opinion - Jun 13, 2013
  2. Articles
    Three Years into the Defend Trade Secrets Act, How Do Its Remedies Differ in Practice from the Uniform Act's Remedies? - Winter 2020 - American Bar Association (ABA) Business Torts & Unfair Competition
    Tips on Filing for Preliminary Injunction in Trade Secret Cases—Considerations when Seeking Emergency Injunctions - Sep 30, 2019 - American Bar Association (ABA) Business Torts & Unfair Competition Practice Points
    The Evolution of Counterfeiting and 5 Essential Steps for Fighting Back - Jul 25, 2017
    Technology M&A Predicted to Rise Significantly in 2017 - Apr 19, 2017
    Buyers should be wary of "copyleft" software - Jan 16, 2017 - ACG Cleveland Corporate Growth & M&A
    Do You Need Copyright Protection for Your Website? - Nov 18, 2016
    Highlights of the Defend Trade Secrets Act of 2016 - Jul 6, 2016
    Dot Anything - Spring/Summer 2014
    PL Wins in Court - Nov 1, 2006
    The Fair Use of Copyrighted Material - 1995 - Ohio Lawyer
  3. Podcast
    Roetzel HealthLaw HotSpot: Physician and Dental Practice Branding – A Legal Perspective - Jan 15, 2021
  4. Firm News
    Seventy Roetzel Attorneys Named to 2021 The Best Lawyers in America© List; Ten Named “Lawyer of the Year” - Aug 20, 2020
    Link Named Practice Group Manager of Roetzel’s Corporate, Tax & Transactional Group - Jun 9, 2020
    Jessica Lopez Featured in Akron Legal News - Jan 13, 2016
    Jessica Lopez Named to Ohio State Bar Association's Women in the Profession Section Council - Dec 21, 2015
    Jessica A. Lopez Joins Roetzel's Akron Office - Nov 14, 2013