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Trademarks & Copyrights

At LeClairRyan, we realize that in today's global business environment, intellectual property can be among the most critical assets of a successful business, no matter the size of that business. We also realize the importance of maximizing the value of those assets and protecting them from misuse, misappropriation and infringement.

LeClairRyan's intellectual property clients are both large and small, span all stages of product and company development, and include both producers and consumers of intellectual property. We learn our clients' businesses and work to maximize the contribution of intellectual property to those businesses and our clients' growth.

The Firm's intellectual property attorneys have an unusually strong grasp of this ever evolving and difficult area of law, representing clients in protection of their rights in trade names, trademarks, trade dress, good will, domain names, trade secrets, manufacturing processes, know-how, and other confidential information and copyrights. We strive to fashion strategies and solutions that are innovative, practical, attuned to our clients' business objectives (as well as the competitive environment in which they operate), and sensitive to the antitrust, franchise, tax and other issues that affect the handling of intangible assets.

LeClairRyan provides intellectual property counseling and advice to pharmaceutical and biotechnology companies, medical device manufacturers, financial institutions and investors, telecommunications firms, consumer and professional products companies of many types, retail and other service providers, national and international franchisors, distributors, trade associations, educational entities, software and hardware vendors, database service providers, Internet service and content providers, e-commerce companies, developers and systems integrators, and other technology service organizations.

OUR PRACTICE INCLUDES:

  • Devising and implementing strategies to develop, market, manage and protect clients’ know-how, patent, copyright, trademark and other intellectual property assets.
  • Helping clients secure their intellectual property, for uses now and in the future, through agreements with employees, subcontractors, vendors, and other business partners.
  • Conducting intellectual property audits and Web site and Internet practices reviews.
  • Developing internal intellectual property management programs and procedures.
  • Copyright and trademark clearance and development.
  • Registering and protecting copyrights and trademarks in the U.S. and overseas.
  • Helping clients manage the risk of acquiring and using intellectual property-based assets in their business, for example, in negotiating complex intellectual property purchases and licenses, development agreements, systems integration projects, enterprise systems management, and ASP and outsourcing relationships.
  • Assisting clients design and implement a wide range of strategies for commercializing their intellectual property, whether through direct development, sales and marketing, strategic alliances and joint ventures, distribution, reseller, VAR, franchise, or licensing and cross-licensing arrangements.
  • Advertising and labeling review and advice.
  • Negotiating and drafting Web-based, technology and software related agreements.
  • Counseling and negotiation in intellectual property disputes.
  • Web portal site development 
  • Multi-media, software, hardware, and database development
  • Licensing of trademarks and copyrights, including software and content, in all media and formats
  • Licensing of regulatory approvals, patents, and trade secrets
  • Joint venture arrangements, including financing, risk allocation, and intellectual property ownership structure
  • Transfer of technology from research institutions 

REPRESENTATIVE ENGAGEMENTS INCLUDE:

TRADEMARKS, FRANCHISES AND ADVERTISING

  • Trademark clearance, prosecution, maintenance, licensing, protection, counseling and dispute resolution for numerous businesses, including a Fortune 500 retail company, a publicly-traded financial services company, a national trade association, a large winery, a nationally known art products business, a food products business, an agricultural products business and a medical device and diagnostic products manufacturer.
  • Counseling franchisors in various lines of business in the protection of intellectual property in the context of a franchise relationship, including protection of trademarks, copyrights, and trade dress.
  • Domain name dispute resolution for a financial services business and a publisher.
  • Counseling businesses and non-profits on advertising matters and promotions.
  • Negotiating co-marketing agreements with Fortune 100 pharmaceutical companies for a Virginia developer of connectivity solutions for point-of-care test results.
  • Prosecuting and defending applications for injunctive relief and/or damages for infringement, false advertising, false designation of origin, trademark counterfeiting (including Court Ordered ex parte seizures of goods bearing counterfeit trademarks), and unfair competition claims, under the Lanham Act, the Copyright Act, the related Digital Millennium Act, State statutes protecting IP, as well as common law

COPYRIGHTS, PATENTS, TECHNOLOGY AND LICENSING

  • Copyright registration and counseling for technology companies and authors of creative works.
  • Negotiating and preparing research and development agreements, and software, database, hardware, technology, copyright and patent licenses, procurement, use and sales contracts for numerous businesses, organizations and technology companies.
  • Advising on international software distribution and sales representative agreements.
  • Representing businesses in copyright, patent, licensing, and contractual IP disputes, for example a large government contractor in a dispute over the termination of a software/hardware development contract, and a subcontractor’s tortious interference and performance issues, and a software company in alleged breach of contract allegations surrounding development of software security product.
  • Acting as outside general counsel to privately held technology and services companies.
  • Negotiating joint development/supply agreements, for example for a supplier of precision drives and controls.
  • Assisting numerous businesses in the development of various forms of strategic alliance arrangements and related intellectual property ownership issues.
  • Counseling a technology commercialization business on intellectual property issues arising in the context of a development services agreement with a publicly-traded systems development and manufacturing company.
  • Representing numerous individuals and businesses in technology and IP transfers, such as an engineering software developer in the sale of certain engineering software tools, a plastics company in an asset sale to a large national global plastics company, and a software developer in the purchase of a pharmaceutical consulting firm and related intellectual property.
  • Counseling individuals and businesses on IP matters in a university context, for example, advising on the outlicensing of university-developed technology, and on the rights of state university faculty members in connection with disclosure obligations and intellectual property ownership issues.
  • Advising “America’s first research university” on commercializing medical research.
  • Counseling advertising agencies on avoiding copyright infringement.
  • Advising architectural firms on copyrights, copyright infringement and other issues.
  • Counseling businesses on matters related to the protection of intellectual property rights over the Internet.
  • Negotiating and advising upon Web site development, hosting and design agreements.

IP MANAGEMENT

  • Counseling businesses on IP and trade secrets management and best practices procedures.
  • Managing IP portfolios of Fortune 500 Companies.
  • Assisting businesses with non-disclosure, non-solicitation, employment, non-compete and independent contractor agreements.
  • Advising on IP transfers and other arrangements between employee and employer and independent contractor and client.
  • Representing businesses in association with disputes arising from the hiring or termination of employees and independent contractors subject to contracts limiting use of proprietary information and intellectual property. 
  • Acting as co-counsel in government contract disputes involving contracts for procurement of technology services and development.

Contact

  • 415.913.4911
  • 804.916.7160