Representative Experience

Worked with the tax advisors to a multinational client to design a tax-effective restructuring of the client’s trademark and patent portfolio. We implemented the structure by handling transfers of ownership of relevant intellectual property to different entities, and by drafting and recording worldwide inter-company and third-party trademark and patent licenses. We continue to advise this client on maintenance and modification of the structure and protection of our client’s rights in the licensed assets.

Advised a U.S. apparel company with a portfolio of fashion brands on the licensing of certain of its marks in connection with the manufacture, distribution and retail sale of apparel in several Asian countries. We worked with our network of foreign agents to draft, negotiate and record trademark license agreements that allow this client to exploit these assets in previously under-utilized markets, while continuing to protect our client’s trademark rights.

Our client, a developer of large-scale database software products, which are sold throughout the world, had grown rapidly and recently acquired several companies. We helped the client integrate and rationalize its new and existing trademark portfolios, which comprised over 500 registrations and applications in some 50 countries. As a result, the client’s trademark strategy was re-focused on core brands and significant cost savings were realized.

Our client, a software manufacturer, was challenged by another company for infringing its trademark. We determined that the challenger's trademark rights were limited to specific areas of the United States, and that our client had priority in many other areas. Armed with this information, we were able to force the other company to sell its rights to our client for a modest amount.

Our client, a clothing manufacturer, was challenged by a world-famous company for infringing its alleged rights in the shape and placement of clothing labels. We determined that the famous company's rights were suspect, and that it was vulnerable to charges of fraudulent registration and enforcement. We forced the company to abandon its claims against our client.

Our clearance and selection experience ranges from helping founders name hedge funds, select corporate names or create future flagship-product brands

Help established companies review dozens of alternative names for products launching worldwide, including investigating the connotations of marks in different languages and arranging for their translation into different alphabets

Our client, a Canadian franchisor, was seeking to expand its operations in the United States market but risked challenges by other similar marks. We assisted our client in clearing and registering its mark, including acquiring priority rights.

Represent a manufacturer of dressings, sauces and other condiments that owns a portfolio of valuable marks. Our watch services have alerted this client to a number of trademark infringements by food companies and restaurants. We are regularly successful in persuading these third parties to cease using infringing marks or modify their marks to avoid any infringement.

Our client, an international airline that flies to the U.S., regularly adopts new marks as it introduces new in-flight services and adapts to the changing airline market. In consultation with the airline’s counsel in its home country, we file and prosecute the client’s trademark applications in the United States

Our client, a provider of consumer products with a stable of famous trademarks, was beginning the worldwide rollout of an innovative new product. Using our established network of foreign counsel, we secured registrations for our client’s product trademark in the U.S. and nearly 100 other countries.