EXPERIENCE
INTERNATIONAL INTELLECTUAL PROPERTY PROSECUTION & GLOBAL BRANDING
- Counsel a wide variety of clients regarding the selection, availability, registration and protection of all types of trademarks, both domestically and internationally
- Analyze domestic and international trademark search reports and prepare opinion letters for global branding projects
- Prosecute state and federal trademark applications; supervise international filings including WIPO, CTM and nationals
- Maintain trademark registrations worldwide and with the USPTO
- Prosecute opposition and cancellation proceedings before the TTAB
- Negotiate, draft, and enforce licensing, consent, and co-existence agreements
- Monitor and supervise foreign associates regarding trade dress, industrial design, PCT prosecution and litigation
- Advise, prepare, file, prosecute, manage and enforce copyrights
- Analyze, prepare, register, and enforce Internet domain name registrations worldwide
LITIGATION
- Initiate or defend copyright and trademark infringement actions in the U.S.D.C.
- Initiate or defend trademark matters before the Trademark Trial & Appeal Board
- Prepare and file complaints with ICANN regarding trademark infringement
- Monitor and police clients' existing trademarks and copyrights, worldwide, including investigation and analysis of situation, cease and desist notices, and litigation
- Supervise foreign associates with regard to investigations, enforcement and litigation
GENERAL BUSINESS AND ADVERTISING
- Licensing: conduct review, analysis, negotiation, and management of royalties and payments
- Advertising Clearance: review and revise clients' advertising proofs, brochures, promotional materials, annual reports, product designs, website content, proposed joint ventures and licensing, authorizations and releases for use of name or marks, and internal corporate memoranda and policies with regard to intellectual property
- Provide daily advice and review to corporate clients regarding potential infringement problems, general trademark, copyright, licensing, advertising, FTC and FDA regulatory compliance, and other related regulatory and business issues
ADMINISTRATION
- Liaison and coordinate projects with Corporation Departments and Directors and Officers
- Supervise and train staff of legal assistants and associates
- Create department procedures, training manuals, docket databases such as CPI, WEB TMS
- Cultivate new client contacts and organize client development activities
- Write department brochures, create templates and case and trademark portfolio reports
