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Our Intellectual Property practice group represents a variety of companies in disputes, transactions, and counseling related to complex copyright, trademark, trade secret, 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, food and beverage businesses, and educational, nonprofit, and trade organizations.

Typical matters addressed for clients include:

  • Trademark selection, registration, and protection
  • Intellectual property audits
  • Due diligence on transactional matters
  • 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
  • Privacy issues
  • Patent infringement
Technology Industry

The firm counsels technology clients in software, internet, multimedia, telecommunications, chip design and manufacturing, laser, medical instrumentation, and computer equipment industries. We are experienced in 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, for parties including 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.

Conflict Resolution and Litigation

Our attorneys are skilled at anticipating potential issues and drafting clear agreements that help clients avoid litigation. When disputes arise, we pursue negotiation and alternative dispute resolution procedures as appropriate, including mediation. We also recognize that litigation and threats of litigation are a fact of business life; our intellectual property litigators are experienced in a wide range of business and IP disputes, in both state and federal court, and work with clients to aggressively protect their intellectual property assets.

 

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.

  • 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-author of 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.*

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

  • Represented an industrial component distribution company and its chief executive accused of trade secret misappropriation. Defeated motions for temporary restraining order and preliminary injunction, resulting in quick settlement for a small fraction of the original demand.*

  • Defended 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.*

  • 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.*

  • Achieved full defense verdict in jury trial for East Bay engineering firm accused of trade secret misappropriation and unfair competition.*

  • 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.

 

* Work performed by attorney at prior law firm.

publications

USPTO Stripped of Power to Deny Disparaging or Vulgar Trademarks

USPTO Stripped of Power to Deny Disparaging or Vulgar Trademarks

04/27/2018 | The Recorder

Wendel Rosen intellectual property litigation attorney Joshua Cohen explains the trademark case that stripped the USPTO from blocking disparaging trademarks in this article that first appeared in the April 27,…

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New Agreements Required to Defend Your Trade Secrets

New Agreements Required to Defend Your Trade Secrets

05/19/2016 | Maggie Grover and Joshua Cohen

Companies should act now to protect their trade secrets in light of the new Defend Trade Secrets Act (DTSA), which was signed by President Obama on May 11 and became…

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News

Register Your California Cannabis Trademarks Now

Register Your California Cannabis Trademarks Now

02/16/2018 | Joshua Cohen

[This article originally appeared in Law 360 on February 16, 2018.]   Any cannabis business that is holding its breath waiting for the United States Patent and Trademark Office to…

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Latest post from the IP Legal Forum Blog