Intellectual Property

CHAIR

Cohen, Joshua D.

510.834.6600 T

510.808.4731 F

Overview


The attorneys in Wendel Rosen’s Intellectual Property Practice Group have represented a variety of companies in disputes, transactions and counseling related to complex copyright, trademark, trade secret, patent, and other intellectual property issues.  We represent software and other technology companies, manufacturers, wholesalers and retailers, business and professional services, real estate and construction companies, medical and health services, and nonprofit and trade organizations in matters including:

  • Trademark selection, registration and protection
  • Trade secrets counseling and litigation
  • Licensing, development and distribution agreements
  • OEM, end-user license, reseller and distributor agreements
  • Copyright infringement and protection matters, and copyright registration
  • Digital Millennium Copyright Act (DMCA) claims
  • Entity formation, operating or partnership agreements, stock option plans
  • Strategic partnerships and joint ventures
  • Litigation to enforce and defend intellectual property rights
  • Domain name matters and disputes
  • Anti-counterfeiting
  • Alternative dispute resolution, including mediation and arbitration
  • Advertising and sweepstakes matters, see Advertising
  • Privacy Issues
  • Patent Infringement
     

We've worked with technology clients whose industries include software, Internet, multimedia, telecommunications, chip design and manufacturing, laser, medical instrumentation and computer equipment.  A major part of our work for these clients involves intellectual property; the development, protection, acquisition, licensing and disposition of trade secrets, copyrighted material, ideas, processes and trademarks. We prepare and negotiate software, hardware and multimedia development agreements, software licenses, distribution agreements, equipment procurement agreements and joint venture agreements.  The parties to these agreements are typically developers, manufacturers, service providers, distributors, resellers and end users.  We also perform trademark searches and registrations, and advise clients regarding the selection and enforcement of trademarks. 

Firm attorneys also perform intellectual property audits on behalf of client companies and investors in order to verify a company’s intellectual property portfolio, as well as IP due diligence on transactional matters.  In addition, we regularly advise and counsel companies on advertising and sweepstakes issues and other marketing and advertising activities.

We also provide intellectual property services to non-technology industries. For example, the firm provides extensive trademark registration and litigation services to the craft brewery, restaurant and educational industries.

We strive to anticipate potential issues and draft clear agreements that help our clients avoid litigation.  And, when disputes arise, we seek to resolve them by negotiation or alternative dispute resolution procedures, such as mediation.  However, we recognize that litigation and threats of litigation are a fact of business life. The firm’s intellectual property litigators are experienced in a wide range of business and IP disputes, in both state and federal court, and will work with clients to aggressively protect their important intellectual property assets. 

 

Experience

Transactional

  • Advised leading Bay Area ice cream maker in trademark matters and licensing agreement with professional athlete.

  • Prosecuted trademark infringement claims for an internationally-known sporting equipment manufacturer against a competing enterprise selling infringing golf clubs. Filed motion for preliminary injunction, which provoked quick and favorable settlement.*

  • Represented a Bay Area corporate inventor and licensor of patented water filtration devices prosecuting an action for breach of a patent license agreement against a large New York based global producer and distributor.  Shortly after the submission of briefing on a pivotal motion for summary judgment, the case settled on favorable terms.*

  • Represent leading pre-visualization and technology company in intellectual property, licensing, and corporate matters.

  • Advised nonprofit "green" building organization in trademark certification program and certification mark registration.

  • Advised organic and fair trade food manufacturer in acquisition of North American trademark rights and worldwide trademark registration matters.

  • Advised snowboard company in domestic and foreign trademark issues and registrations.

  • Draft and negotiate license agreements (SLA, Saas, ASP) for leading GIS mapping and technology provider.

  • Advise leading exercise and fitness company in sweepstakes and advertising matters.

  • Advised client on privacy issues and policies for website and customers' websites; negotiated licensing agreement regarding use of large business information database.

  • Serve as intellectual property counsel for a leading manufacturer and distributor of motorcycle parts, clothing and accessories, including handling trademark prosecution and enforcement actions worldwide.

 

Litigation & Disputes

  • Lead-authored amicus curiae brief filed by major Taiwan and U.S. wi-fi manufacturers (and joined by Microsoft Corporation) in the U.S. Court of Appeals for the Federal Circuit in a closely watched patent infringement case.*

  • Lead attorney representing a regional franchisee of a major residential real estate brokerage in a case alleging trade secret misappropriation.  Case settled early and favorably, with all claims being dismissed in exchange for no monetary compensation.

  • Lead attorney defending a startup industrial component distribution company and its chief executive accused of trade secret misappropriation. Defeated opponent’s motions for temporary restraining order and preliminary injunction, resulting in quick settlement for a small fraction of the original demand. Client’s business is now thriving.*

  • Co-lead attorney defending a print brokerage company accused of misappropriating trade secrets and driving a vendor into bankruptcy by hiring the vendor’s key employees. Defeated RICO claim on demurrer. Depositions and motion work set the stage for favorable settlement with an insurance company funding the majority.*

  • Prosecuted trademark infringement claims for an internationally-known sporting equipment manufacturer against a competing enterprise selling infringing golf clubs. Filed motion for preliminary injunction, which provoked quick and favorable settlement.*

  • Lead attorney in several cases involving temporary restraining orders and preliminary injunctions based on claims of trade secret theft, “corporate raiding” and solicitation, unfair competition, and trademark infringement.

  • Represented a Bay Area corporate inventor and licensor of patented water filtration devices prosecuting an action for breach of a patent license agreement against a large New York based global producer and distributor.  Shortly after the submission of briefing on a pivotal motion for summary judgment, the case settled on favorable terms.*

  • Defense verdict for East Bay engineering firm in jury trial of trade secret misappropriation and unfair competition action.*

  • Successfully represented in lawsuit by a startup software company against prominent Silicon Valley company for violating trade secrets and software license agreement.

  • Advise social gaming company in various intellectual property matters and disputes, including trademark prosecution, TTAB proceedings and copyright counseling.

  • Represented leading craft brewery as plaintiff in trademark infringement action in federal district court; obtained consent permanent injunction and fees in action to enforce injunction.

  • Represented software developer company against preeminent networking company in a trade secret misappropriation and violation of licensing agreement dispute involving our client's source code.

  • Represented medical laser device company in trademark infringement action in federal district court.

  • Represented building developer in copyright infringement action involving architectural drawings.

* Work performed by attorney at prior law firm.

Attorneys
  • Cohen, Joshua D.
    Chair
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  • Brodehl, Kevin R.
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  • Horst, Jason M.
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  • Kao, Katherine
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  • Lyons, Richard A.
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  • Marquez, Leonard E.
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  • Myers, Daniel B.
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  • Pak, Eugene M.
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  • Tang, Jennifer P.
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Blog & Resources

The IP Legal Forum Blog

On June 4, 2014, the Intellectual Property Practice Group launched a blog at www.iplegalforum.com.  We invite you to check it out and, if you like it, subscribe to receive email updates whenever a new post is published.  We'll be writing on a variety of IP topics, including:

  • Trademarks
  • Trade Secrets
  • Copyrights
  • Domain Names
  • Advertising
  • Counterfeiting
  • Licensing
  • Patents

 

Other Resources (past articles, presentations and news):