Intellectual Property Litigation
Virtually every business has existing or potential intellectual property (IP) that should count among its most valuable assets. Yet, far too many businesses ignore these IP rights and assets until it is too late. Numerous IP issues and pitfalls for the unwary can arise without your business even realizing it, whether due to failing to secure necessary rights and permissions, improperly attempting to secure rights or registrations without the assistance of experienced IP counsel, inadvertently forfeiting valuable IP rights, engaging in activities that could result in liability for infringement, misappropriation, or violations of state, federal, or international laws, or simply cutting corners. Your business needs to adequately protect, manage, and enforce its IP rights and avoid infringing or misappropriating the IP rights of others in order to carve out space in an increasingly crowded market and maximize business opportunities, value, and growth potential.
The Beggs & Lane Intellectual Property Group has extensive experience in a broad range of intellectual property matters, from the initial startup, planning, and protection stage through dispute resolution, litigation, and appeals. Our IP services include, without limitation, the following areas.
Trademarks and Unfair Competition
Successful companies utilize their trademarks, service marks, and brands to convey the superiority and distinctiveness of their products and services. Beggs & Lane can help determine the best path to protect and enforce trademark rights, as protection of brands begins even before the registration stage. We work to manage, protect, and enforce our clients’ trademarks and branding portfolios and advise clients on brand, logo, and slogan protection, advertising issues, website and domain name rights enforcement, product name disputes, and trade name disputes. We assist clients with trademark searches and due diligence, availability and infringement opinions, trademark selection, branding strategies, trademark prosecution, trademark portfolio management, trademark licensing and assignment, copyright registrations for logo artwork, trademark aspects of franchise disclosure documents (FDD), cease and desist (C&D) letters, settlement agreements, IP audits, and other matters.
Beggs & Lane handles all aspects of the trademark registration process, from the initial filings and responses to office actions to appeals and opposition proceedings before the Trademark Trial and Appeal Board and federal courts. The firm’s experience in trademark infringement, dilution, and unfair competition litigation ranges from preliminary injunction proceedings through trial and appeals. Our services include the following:
- U.S. and International Trademark Prosecution and Registration
- Trademark Licensing
- Trademark Assignments
- Trademark Searches and Availability Opinions
- Trademark Trial and Appeal Board (TTAB) Ex Parte and Inter Partes Proceedings
- Opposition proceedings
- Cancellation proceedings
- Interference proceedings
- Concurrent Use proceedings
- Trademark and Unfair Competition Litigation and Appeals
- Trademark Infringement
- Infringement of Copyright Rights in Logo Artwork
- Dilution, Blurring, and Tarnishment
- Lanham Act
- False Advertising
- Unfair Competition
- Unfair and Deceptive Trade Practices
- Domain Name Disputes
- Uniform Domain Name Dispute Resolution (UDRP) Complaints
- Alternative Dispute Resolution (including Arbitration, Mediation, and Settlement Conferences)
Businesses in today’s competitive climate need to protect their valuable confidential assets. With its experience in the area of trade secrets, Beggs & Lane can provide the assistance necessary both to protect trade secrets and defend against claims of misappropriation. We regularly assist businesses with drafting confidentiality, non-disclosure, non-compete, and non-circumvention agreements to protect their confidential and proprietary information and help to avoid future litigation.
Beggs & Lane’s attorneys have litigated numerous trade secret matters in both state and federal courts on behalf of a diverse range of clients. Trade secret litigation presents unique challenges, from its often speedy process to protecting the confidentiality of sensitive information within the litigation itself. Beggs & Lane can guide your business through this process.
- Trade secret misappropriation litigation
- Employee confidentiality agreements
- Corporate confidentiality policies
- Non-Disclosure Agreements (NDA)
- Non-Circumvention agreements
- Non-Compete Agreements
- Protection of trade secrets in non-trade secret litigation
- Defend Trade Secrets Act of 2016 (DTSA) litigation and notices
Whether for a celebrity chef or an established songwriter, we handle all legal aspects of the protection and management of creative works. The Beggs & Lane Intellectual Property Group’s copyright experience includes registration, enforcement, and litigation. We advise clients on a variety of issues, including infringement and ownership. Our client base includes actors, artists, musicians, and a wide range of businesses in many fields. In addition, the firm’s litigation experience equips it well to both enforce and defend against copyright infringement claims, ownership disputes, and breach of copyright agreement claims.
- Copyright Registration
- Copyright Licensing
- Work for Hire Agreements
- Copyright Assignment Agreements
- Copyright Arbitration
- Digital Rights Management (DRM)
- Digital Millennium Copyright Act (DMCA) take-down notices
- DMCA Agent Registrations, Renewals, and Notices
- Termination of Copyright Transfers and Licenses
- Copyright Litigation, Appeals, and Alternative Dispute Resolution (ADR)
- Piracy and Counterfeiting
- U.S. Customs and Border Protection (CBP) Recordations, Seizures, and Enforcement
Rights of Privacy and Publicity
We assist athletes, actors, entertainers, musicians, celebrity chefs, reality TV personalities, and other celebrities and individuals and their estates to protect and control the use of their name, image, and likeness; maximize income opportunities; and take action against unauthorized use or misappropriation of their rights. We also assist in securing rights to use the name, image, or likeness of others in film, commercials, endorsements, marketing, advertisements, branding, social media, e-commerce, and other uses, and in complying with privacy laws.
Our services include negotiation, preparation, and enforcement of endorsement, license, and other agreements; model releases; celebrity trademark and copyright registrations; litigation; and estate planning. We also prepare website and mobile application privacy policies; assist businesses with General Data Protection Regulation (GDPR) compliance and data breaches; and assist clients with other matters involving personal information and data.
Intellectual Property Aspects of Transfers, Licenses, Mergers, Acquisitions, Bankruptcies, and Securitizations
Accurate assessment and allocation of intellectual property assets is crucial to the success of commercial ventures and transactions, both from the buyer side and seller side, as well as the lender side. Wise buyers and sellers will retain experienced IP counsel to conduct necessary IP due diligence well in advance of a potential sale or acquisition to avoid surprises at the last minute or after closing. We conduct IP audits, assist companies in assessing and securing their IP portfolio to maximize potential value in anticipation of sale or valuation, assist buyers in assessing weaknesses and limitations in IP assets of businesses to be acquired that could affect value or viability, identify IP chain-of-title issues that could be fatal to a deal, and work with buyers and sellers to solve IP problems that could potentially derail an otherwise lucrative deal.
We also assist banks, lenders, and other clients in securitization of rights in intellectual property, and enforcement of IP security interests. Clients look to us for assistance in mergers, acquisitions, divestitures, joint ventures, bankruptcies, and securitizations to ensure that IP rights are properly secured, registered, licensed, and transferred.
Patent Disputes and Litigation
Beggs & Lane assists clients with patent disputes, cease and desist (C&D) letters, litigation, appeals, and alternative dispute resolution (ADR), including patent infringement litigation, patent term adjustment (PTA) litigation, arbitration, mediation, settlement agreements, licenses, assignments, inventor and owner disputes, licensor and licensee disputes, and other IP litigation, appeals, and ADR. Our firm can assist businesses and inventors with disputes ranging from contract disputes to declaratory actions to determine patent validity to enforcement and patent infringement claims. We also assist patent prosecutors and firms as local counsel in connection with patent litigation, disputes, and other IP matters. Our clients include patent owners, inventors, licensors, licensees, assignors, assignees, contractors, intellectual property holding companies and operating companies, manufacturers, government contractors, and other firms.
We assist U.S. and international IP rights holders and firms with domestic and foreign IP registration, licensing, transfers, border protection, and enforcement, including Madrid Protocol and other international registrations, U.S. Customs and Border Patrol (CBP) registrations and enforcement, grey market goods, Lever Rule protection, seizure of counterfeit goods, litigation, and international arbitration and other alternative dispute resolution (ADR). We maintain an international network of foreign associates to assist clients throughout the world. We counsel U.S. and international clients in connection with domestic and foreign IP rights and registrations under international treaties, including the following:
- Madrid Agreement
- Madrid Protocol
- Paris Convention for the Protection of Industrial Property (Paris Convention)
- Inter-American Convention for Trademarks and Commercial Protection (Pan-American Convention)
- World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)
- Memorandum of Understanding Between United States and Taiwan
- European Union (EU) Regulations and Directives on Community Trade Marks (CTM), European Union Trade Marks (EUTM), Office for Harmonization in the Internal Market (OHIM), and European Union Intellectual Property Office (EUIPO)
- Berne Convention for the Protection of Literary and Artistic Works (Berne Convention)
- Universal Copyright Convention (UCC)
Beggs & Lane is a member of the International Trademark Association (INTA), a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation. INTA members collectively contribute approximately $12 trillion to global GDP annually.