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Copyrights & Trademarks

Copyrights

As dynamic and disruptive innovations alter our daily lives with alacrity, the body of laws intended to govern and protect those innovations struggles to keep pace. The speed with which creative works are disseminated over the Internet impels dramatic change in traditional copyright law. As science, technology and the marketplace converge, Miles & Stockbridge lawyers are at the forefront, providing clients with proactive, strategic advice on capturing, protecting, licensing, exploiting and enforcing the more traditional multimedia works such as books, video and music as they evolve to the Internet, as well as databases, computer software and semiconductor chips. Our counsel to sports, media, and entertainment figures regarding film, broadcast, and live performance agreements, licensing, enforcement issues, libel and privacy, use of name and likeness, parody and fair use, often results in innovative protection strategies that not only safeguard the client’s IP assets but also advance a client’s overall business strategy.

Our copyright team is experienced in the preparation and filing of U.S. copyright and computer chip mask work registration applications, shepherding applications through the expedited special handling procedures offered and recording documents with the U.S. Copyright Office. We assist in negotiating commercial transactions and preparing related documentation involving copyrighted works, including licensing, development, joint venture, and distribution agreements in addition to those addressing derivative works, contributions to works by independent contractors, permissions and releases, rights of privacy and publicity.

Miles & Stockbridge lawyers bring particular expertise to computer software innovations, applying our experience and skill to the varying strengths and weaknesses of copyright and patent protection, with the goal of providing the most enduring means of protecting an author’s works.  Drawing on decades of litigation experience, we represent clients in matters on both sides of infringement claims, including defending clients threatened with audits or lawsuits by the Business Software Alliance (BSA).

Trademarks

Miles & Stockbridge offers comprehensive trademark and service mark registration preparation and prosecution services that are provided by our experienced trademark attorneys and paralegals. Our trademark lawyers and paralegals have extensive experience preparing and prosecuting trademark and service mark registration applications, enforcing trademark rights, and counseling clients on trademark issues both domestically and around the world. For example, our trademark lawyers have extensive experience prosecuting and defending opposition and cancellation proceedings, with the ultimate goal of achieving a favorable result for each client at a reasonable cost. Likewise, in regard to cost, we are able to provide our clients with up-front, realistic cost estimates and alternatives for pursuing trademark registrations in countries around the world. For example, in some instances it may be cost effective and/or require less time for the registration to issue, to file registration applications directly in each desired foreign country and/or regional office instead of filing a Madrid Protocol application naming each country and/or regional office.

Related to the pure cost aspect, we also recommend and perform clearances of potential trademarks prior to a client developing the branding for a new mark that ultimately cannot be registered for the desired goods and/or services. The development of this cost and availability information early on in the process enables us to work with our clients to determine and recommend the most economical mix of which marks should be pursued and in which countries they should be pursued. As a result, we are able to help clients manage and control the costs associated with obtaining and maintaining trademark protection.

In addition, our trademark lawyers take a global view of each client's business and products/services with the goal of integrating the various available trademark registrations with other intellectual property (IP) protections (e.g., patents). For example, in some cases it may make sense, and be possible, to register a three-dimensional trademark of the shape of a product that may also be the subject of a design and/or utility patent. Obtaining such protection can enable a client to keep infringing goods out of the country for as long as the trademark registration is maintained. This can effectively extend patent-like protection for the product well beyond the end of any available patent term.

Our trademark lawyers have been practicing for more than years and have been involved in a wide variety of oppositions, cancellations, negotiation and settlement agreements, transactions involving the sale or purchase and assignment of trademarks and the attendant goodwill, trademark audits, and infringement determinations and actions ranging from simple cease and desist letters to litigation. In addition, collectively, Miles and Stockbridge lawyers have prepared filed and prosecuted thousands of trademark/service mark applications and prosecuted and defended hundreds of oppositions and cancellations for clients. Consequently, they are very familiar with the current Trademark Trial and Appeal Board Rules and Procedures.

We strive to provide trademark-related services that support and complement the client’s overall business goals and strategies.  Toward this end, our trademark lawyers and paralegals work closely with the client’s marketing personnel, technical and legal specialists, and corporate counsel to fully understand the client’s business with a goal of protecting the client’s competitive advantage.  As a result, our trademark lawyers and paralegals fully understand the client’s marking strategies and products/services and are able to tailor our advice and the protections obtained to achieve maximum value for the client.  Because of this, just like our patent lawyers and agents, our trademark lawyers and paralegals become trusted advisors and counselors to our clients.  

We match each required project/task with an appropriate-level trademark lawyer and/or paralegal based on the necessary experience level needed to complete the task.  Where possible, work is produced using our personnel who will provide the most economically efficient combination of billing rate and experience level.  We are project focused with minimal layers of supervision being required and used to produce a consistently superior work product.  For example, our trademark lawyers and paralegals are particularly well acquainted with the process and procedures in place in the United States Trademark Office.  In addition, we are very familiar with the requirements and procedures for filing foreign registration applications via the Madrid Protocol, as well as directly in the Community Trademark and most of the countries around the world.  In fact, we have long standing relationships with foreign associates in almost every country in the world.

Miles & Stockbridge’s expertise and capabilities related to our renewals practice are briefly described above.  To support our renewals work, we have a docketing department staffed with dedicated docketing personnel to maintain and use a state of the art docketing system to track and notify the trademark attorneys and paralegals of impending renewal deadlines.   We use the docketing system to track both U.S. and foreign registrations renewal deadlines.  Upon receiving notice from docketing of an upcoming renewal deadline, our trademark paralegal and/or support staff prepare a reminder letter tailored to each registration that is sent to the owner of the registration.  The letter explains that the deadline to file the renewal application under Section 9 at each 10-year anniversary is approaching and exactly what types of specimens will be acceptable, based on the goods and/or services listed in the registration.  Likewise, a similar letter is sent to our clients shortly before the end of the 5th year after the registration was issued and that explains that the deadline to file a Declaration of Use under Section 8 alone or a combined Declaration of Use & Incontestability under Sections 8 & 15 is approaching and exactly what types of specimens will be acceptable, based on the goods and/or services listed in the registration.

Regarding foreign renewals, we monitor any approaching deadlines, and similar to above, we notify the client of the deadline and specimen requirements.  However, unlike in the U.S., we cannot directly file the renewal applications.  Instead, we must use the services of either a foreign associate licensed to practice law in the specific foreign country or a renewal service, such as, Computer Patent Annuities (CPA).  Consequently, we work closely with our foreign associates to make sure all of the required documents are signed and acceptable specimens of use are provided.

As a result of our years of client service experience, we offer additional services to aid in streamlining the renewals process and to ensure our clients are using their and third-party trademarks appropriately.  

Domain Names

Miles & Stockbridge also offers comprehensive trademark and domain name enforcement representation by our trademark lawyers and paralegals.  Our trademark lawyers and paralegals have extensive experience monitoring and enforcing trademark and domain name rights both domestically and around the world.  For example, depending on the client’s desires and budget constraints, we monitor our clients’ trademarks, service marks and domain names directly and also using third-party monitoring service providers (e.g., Thomson & Thomson, etc.).  We have the flexibility and capabilities to tailor the frequency and extent of the monitoring service to each client’s budget and the importance of the mark and/or domain name to the client.  Because of this, we are able to provide our clients with up-front, realistic cost estimates and alternatives for performing the monitoring in both the U.S. and countries around the world.  

If enforcement actions become necessary, we have the experience and capability to send and follow-up on initial cease and desist letters to infringers and/or cyber-squatters, as well as to pursue administrative (e.g., ICANN Uniform Domain-Name Dispute Resolution Policy (UDRP)) and/or court proceedings in whichever jurisdiction is required.  Alternatively, we can file suit in the appropriate jurisdiction to stop the trademark infringement and/or cancel or reclaim a domain name registration, use the Anti-Cybersquatting Piracy Act (ACPA) in the Lanham Act §43(d), 15 U.S.C. §1125(d), and/or negotiate to purchase the trademark and/or domain name, either directly or through a third-party anonymous buying service, for example, Marksmen.  

As discussed above, we are mindful of costs and expenses to help clients manage and control the costs associated with monitoring and enforcing trademark and domain name rights.  As previously described, we strive to provide trademark and domain name enforcement services that support and complement the client’s overall business goals and strategies.  Toward this end, our trademark lawyers and paralegals work closely with the client’s business unit and/or enforcement personnel and corporate counsel to fully understand the client’s business and the nature of the threats from potential infringers with a goal of protecting the client’s competitive advantage.  As a result, our trademark lawyers and paralegals fully understand the client’s business and how infringers operate and are able to tailor our monitoring and enforcement efforts to achieve maximum results.  Further because of this, our trademark lawyers and paralegals are able to become even more trusted advisors and counselors to our clients.