Trademarks, Copyrights, Trade Secrets, Internet and E-Commerce Law
Practice Group Contact: Emily E. Campbell 405-607-8600
During the course of an average day, a consumer is exposed to thousands of brands. Generic and brand name products are thrown together in a sea of endless goods and services. In this environment, strong marks and brands are necessary to ensure you stand out and develop a competitive advantage. We partner with clients to help them get to the ultimate yes—a steady stream of sales—by thinking smarter.
Through a creative partnership, we help determine which trademarks, slogans, logos and designs to protect, and together design a strategy that avoids unnecessarily depleting your budget. We understand the interplay of creativity and reputation inherent in all copyright and trademark issues, and we work with you to determine what to protect, when to protect it, and ultimately, why. Our holistic approach brings the legal mind to the creative process, aligns the legal priorities with the business priorities, and helps you move from Mess to Yes™.
We help our clients brand and protect their reputations—both online and in the “real world”—through the use of trademark, copyright and right of publicity activities. Especially with respect to trademark protection, we counsel our clients to focus early on marks and brands that are lasting, that are memorable and that clearly define their position within the market. We have a communications and marketing professional on staff who works with our clients to navigate both the creative and legal challenges of brand identity and protection—another example of our integrated team approach.
Our trademark and branding work for clients includes training, guidance and collaborative counseling on the selection and registration of the strongest possible marks, clearance searches and infringement analysis, and the creation of proactive strategies to protect existing marks. We conduct global trademark audits to review, manage and fully exploit the value of existing and potential trademarks. We manage international and U.S. trademark portfolios and prepare internal guidelines, branding manuals (and education materials) and style sheets regarding creating and correctly using trademarks.
Dunlap Codding’s Trademark and Copyright Practice Group litigated one of the first trademark infringement cases involving the issues of genericism and the scope of trademark protection afforded to generic product configurations and trade dress.
Our recent work has included conducting global audit for the market leader in aerial photography and in another the negotiation and acquisition of several domain names on behalf of a national insurance company. We also currently represent a client in a groundbreaking Freedom of Information Act (FOIA) proceeding of first impression calling into question certain of the company’s trade secrets, copyrighted images, and copyrighted software used in its business.
- Collaborative Counseling on Selection and Registration of Trademarks
- Trademark Availability Searches
- Trademark Clearance Searches and Infringement Analysis (U.S. and International)
- State, Federal and International Trademark Registration
- Trademark Maintenance and Portfolio Management
- Licensing and Assignment Agreements
- Trademark Oppositions and Cancellations
- Monitoring, Management, and Protection of International and U.S. Trademark Portfolios
- Global Trademark Audits and Opinions
- Creating Proactive Strategies to Protect Existing Marks from Trademark Infringers
- Defending against Infringement Claims Protection From Cybersquatting
- Cease and Desist Counseling and Settlement Negotiation Practice
- Litigation in State and Federal Courts
- Opposition and Cancellation Proceedings at the U.S. Trademark Office
- Education, Presentations and Guidance on Essential Trademark Concepts
- Internal Guidelines and Branding Manuals
- Style Sheets Regarding the Creation and Proper Use of Trademarks
- Advertising and Promotion Clearance
- Slogans, Company and Product Names—Word Marks
- Trade Dress
- Product Designs—Configuration Trademarks
- Logos—Design Marks
- Non-Traditional Trademarks (Sounds, Colors, Product Packaging, Scents, Shapes)
Our copyright practice similarly includes educating and counseling clients and their employees (especially university and research institute employees), federal and international copyright registration, preparation and due diligence for licensing agreements (of all types), and litigation in state and federal courts. Additionally, we have counseled clients in the preparation of web and software development agreements, terms of service, confidentiality policies, employee and third-party use agreements, and privacy policies, for example.
- Education and counseling on copyright fundamentals and protection
- Federal and International copyright registration
- Literary works
- Musical works
- Dramatic works
- Pictorial, graphic and sculptural works
- Audiovisual works
- Architectural works
- Computer software
- Web sites
- Licenses and agreements, including work for hire agreements, assignments, and transfers
- Complex copyright filing strategies for group registrations of musical compositions and sound recordings for a record company, as well as works of the visual arts, including mass photograph filing strategy and recommendations for a national aerial imagery company
- Litigation in state and federal courts
Licensing of Trademark & Copyright Assets
Our licensing practice includes counseling clients on strategic alliances and joint ventures, on franchise and distribution agreements, and the effective management of goodwill through comprehensive licensing agreements. When litigation is necessary in the case of breach of contract, we are there for our clients.
- Counseling and development of confidentiality non-compete, and nondisclosure agreements
- Strategic alliances and joint ventures
- Franchise and distribution agreements
- Breach of contract litigation
- Effective management of goodwill through comprehensive licensing agreements
- Synchronization rights and master use agreements
- Identification of necessary assignment and work for hire agreements
- Drafting of key intellectual property agreements including right of publicity, license agreements, assignments, consent agreements, non-disclosure agreements, employment and termination agreements, terms of service, privacy policies and work for hire agreements
Though the Internet is an essential and commonplace part of our daily lives, behind the scenes a Wild West atmosphere still prevails. We protect our clients from "outlaws" and make sure they stay within the law themselves, including offering counsel to individuals who have been the target of copyright trolls or have been accused of infringement on the web.
We help clients with website development agreements, terms of service, use agreements and privacy policies. We advise on software development and licensing, and on open source and user-generated content issues. We counsel clients on issues regarding the Children’s Online Privacy Protection Act (COPPA). Clients turn to us for help in matters regarding defamation, gripe sites, parody, cybersmear campaigns, and adverse publicity.
Our experience includes:
- Enforcement of trademark rights through the Anti-Cybersquatting Consumer Protection Act
- Software, derivative works, and ownership issues
- Counseling clients in the preparation of web and software development agreements, terms of service, confidentiality policies, employee and third-party use agreements, and privacy policies
- Work-for-hire analysis and agreement drafting
- Illegal downloading actions, including copyright troll subpoenas and lawsuits
- Privacy policies
- Fair Use counseling and analysis
- Cease and Desist practice
- Uniform Domain Name Dispute Resolution (UDRP)
- Social media and domain name monitoring and watch services
Internet Domain Name Acquisition and Protection
Our work on behalf of clients includes registering, acquiring, and protecting domain names and mediating domain name disputes through the UDRP (Uniform Domain-Name Dispute-Resolution Policy). We have created proactive strategies to protect our clients’ trademarks from infringement on the internet, including cybersquatting and typosquatting. We negotiate with potential infringers to transfer domain name rights and thus avoid litigation, and when appropriate, we litigate in state, federal, and international courts. We are experienced with World Intellectual Property Organization (WIPO) and National Arbitration Forum (NAF) domain name dispute proceedings.
We advise clients on the contractual protection of trade secrets and represent them in trade secret misappropriation litigation. We guide clients in the preparation of policies, procedures, and guidelines relating to trade secrets, and counsel them in the development of confidentiality, non-compete, and nondisclosure agreements.