Trademark and Copyright

Trademark Prosecution and Maintenance

Members of the BakerHostetler Trademark team have vast experience in all stages of the prosecution of trademark applications domestically, including ex parte appeals before the Trademark Trial and Appeal Board, and maintaining the resulting registrations through post-registration requirements.

Our attorneys and paralegals are also skilled in facilitating the registration of marks in jurisdictions outside the United States. Through our management of numerous international trademark portfolios, we have established relationships with trademark lawyers in jurisdictions throughout the world to provide our clients with seamless global trademark services. We have a proven ability to manage and maintain thousands of trademark applications and registrations in jurisdictions all over the world.

Oppositions and Cancellations

Clients call on us to enforce rights in their “crown jewel” brands. We seek resolution of disputes without formal adversarial proceedings whenever possible, and, where appropriate, craft agreements that maintain crucial protection for clients’ brands while conserving resources. When litigation is required, we are fully equipped to pursue opposition and cancellation actions, as well as trademark infringement actions in courts in the U.S. and in any necessary foreign jurisdictions. On numerous occasions, our swift enforcement measures have averted the launch of confusingly similar brand names by clients’ competitors.

Trademark Litigation

Our Trademark team manages disputes, including trademark and trade dress infringement, unfair competition, false advertising, dilution, and cybersquatting. Our skill in drafting cease-and-desist letters, or responding to cease-and-desist letters during the initial stages of disputes, frequently saves clients enormous sums of money in the long run. Our capabilities extend to non-U.S. courts and agencies through our network of associated firms throughout the world. We advise our clients on numerous strategic matters and counseling as it relates to trademark disputes. For example, we engage in complex clearance of marks to avoid potential issues, we negotiate and revise license and co-existence agreements, including providing strategic advice as to whether such an agreement is appropriate in the first instance, and we engage in meaningful mediation and settlement discussions in order to secure a favorable settlement and/or to mitigate any potential damages on behalf of our clients.

Anti-Counterfeiting

Our Trademark team pioneered anti-counterfeiting programs using a combination of civil and criminal seizure actions and border control through customs authorities in the U.S. and around the globe. Our team coordinates a nationwide network of investigators, attorneys, and government agencies on both the federal and state levels, pursuing individuals and entities trafficking in counterfeit and pirated merchandise. BakerHostetler’s Trademark team regularly seize a wide variety of items, including novelty items, household goods, jewelry, clothing, watches, handbags, accessories, sunglasses, and hats.

Additionally, when applicable, we follow up with the property owners where our seizures occurred to make them aware of the any applicable state laws affecting counterfeiting problems, such as state laws holding landlords liable for tenants’ illegal acts if the landlord had knowledge of the acts but failed to stop to the illegal activity.

Copyright

BakerHostetler’s experience in handling copyright issues in media spans more than 100 years. In that time we have been alongside our clients as they grappled with changes in the way content is distributed, copied, and created.

We represent a range of clients from individuals and start-ups to some of the world’s largest content providers, including publishing companies, television and radio networks, film studios, performance rights societies and recording and production companies, online media companies, and professional sports leagues. Our team of sophisticated attorneys and professionals utilizes its experience in software and reproduction technologies, along with its depth of knowledge in intellectual property, media, and Internet law, to remain at the forefront of legal issues, including those created by evolving technologies. This broad base of knowledge and skills allows us to provide our clients with focused solutions in a cost effective manner, regardless of industry type or company size.

Intellectual property strategies must adapt to evolving content delivery methods, such as Bit Torrent, HTML5, and 3D printing, to protect both innovators of and participants in the new digital frontier. Our seasoned team carefully examines all aspects of our clients’ needs and provides a full array of services, including litigation of all types of rights related issues, sophisticated transactions, traditional prosecution, and portfolio management.

Working across practice groups and with attorneys throughout the firm, our team counsels clients in copyrights and trademarks, trade secrets, licensing agreements, IP business strategies, and, when pertinent, patent procurement. We represent clients in all kinds of content industries—including musicians and music companies, graphic novelists and large publishers, gamers and the biggest software providers, and content creators for whom descriptions are still being invented. Our team regularly litigates copyright cases in federal courts nationwide, with cases ranging in focus from well-known musical compositions and works of fine art to jewelry designs and software. We manage copyright matters in contexts that include variable printing technologies, Internet advertising, cryptography hard disk cache algorithms, network administration, and security and automated payment systems. We also enforce rights under the Digital Millennium Copyright Act, including issuing “John Doe” subpoenas to learn the identities of anonymous infringers. Our attorneys have represented everyone from Elvis Presley to Microsoft.

Areas of Focus

• Counsel on effective and appropriate use and protection
• Assist with rights clearance
• Registration practice
• Copyright enforcement programs
• Prosecute and defend infringement claims
• Negotiate and prepare appropriate consents, licenses, and releases
• Develop internet policies, terms and conditions, and website review
• Monitor legislation that impacts on copyright rights and usage
• Internet delivery and infringement issues
• Brand management, competition, and advertising issues
• Licensing
• Internal investigations
• New media/emerging technologies
• Social media