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Intellectual Property

Contact: Adam M. Cohen

"We bring a real world, practical approach to complex intellectual property issues, focusing on the client’s business goals in developing IP strategies to meet those goals."

The Kane Kessler Intellectual Property practice group works closely with clients to identify and protect intellectual property assets; structure and monetize intellectual property portfolios; clear products and services to avoid IP claims of third parties; and assert, enforce and defend intellectual property claims in a variety of domestic and international forums.  

We have expertise in a broad spectrum of intellectual property services, including in the following areas: 

IP Transactional

  • Negotiating and preparing license, joint venture, co-existence and strategic alliance agreements
  • Negotiating and preparing distribution, supply, co-branding and other industry specific agreements
  • Negotiating and effecting the conveyance of intellectual property assets in all forms on a global basis
  • Franchising
  • Due diligence in the context of corporate transactions and procurement of IP assets

Intellectual Property Litigation and Pre-Litigation

  • Trademark, trade secret and copyright litigation in federal and state trial and appellate courts and alternative dispute forums
  • Patent litigation in federal trial and appellate courts and alternative dispute forums (e.g., arbitration and mediation)
  • Patent re-examination proceedings before the United States Patent and Trademark office
  • Inter partes proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office
  • False advertising and unfair competition litigation
  • Preparation of and response to cease and desist letters
  • Pre-trial controversies, including negotiations of pre-suit settlements
  • Domain name dispute proceedings prosecuted under the ICANN dispute resolution procedure

Patent Prosecution and Counseling

  • Patent drafting and prosecution in diverse areas of technology
  • Preparing freedom to operate/non-infringement and invalidity opinions
  • Conducting searches and studies relating to patentability, design around, validity, enforceability and infringement issues
  • Management of global patent portfolios
  • Guidance on strategic patenting of products

Trademark Prosecution and Counseling

  • Trademark searching and freedom to use analyses
  • Trademark application filing and prosecution
  • Prosecution and defense of inter partes opposition and cancellation proceedings
  • Design and implementation of global and domestic trademark portfolio management

Anti-Counterfeiting, Piracy and Gray Market

  • Design and implementation of global and domestic anti-counterfeiting and anti-piracy strategies
  • Strategies to contain gray market issues
  • Internet monitoring
  • Investigation of counterfeiting activities

 Trade Secrets 

  • Design and implementation of trade secret protection programs
  • Preparation of confidentiality and secrecy agreements

Copyright

  • Counseling
  • Licensing
  • Preparation and filing of applications for copyright registration

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Representative engagements include:

  • Represented prominent athletic footwear brand in an inter partes opposition proceeding before the Trademark Trial and Appeal Board.
  • Represented major apparel retail chain in negotiating resolution of patent claims asserted against it.
  • Represented fishing equipment manufacturer in false patent marking case.
  • Represented law enforcement and security equipment manufacturer in false patent marking case.
  • Represented lifestyle apparel brand in multiple inter partes opposition proceedings before the Trademark Trial and Appeal Board to protect key brands.
  • Prosecuted a series of strategic patents on behalf of a military products suppier.
  • Represented prominent footwear brand in successful resolution of a design patent infringement suit. 
  • Represented retail chain in connection with business method patent claims asserted against it.
  • Represented pet products manufacturer in sale of domain names.
  • Represented United Kingdom based apparel and retail company in asserting copyright claims against infringers in the United States.
  • Represented prominent authors in negotiations with major publishers over electronic book rights.
  • Represented consumer products company in asserting patent, copyright and trademark claims against infringers relating to world famous branded products.
  • Outside general counsel to prominent contemporary art gallery in connection with which involved in rendering advice and counseling with respect to multitudes of art transactions.
  • Represent publicly-traded multi-billion-dollar consumer-products company in IP aspects of merger and acquisition and debt transactions.  Manage and coordinate IP due diligence review team.Represent internationally famed multi-million-dollar luxury goods company in trademark and copyright licensing matters.
  • Lead counsel for multi-million-dollar brand licensing company’s ground-up development of girls’ and juniors’ lifestyle apparel and accessories brand, including trademark development, clearance and prosecution, trademark licensing, and resolving disputes with licensee
Representative speaking engagements include:
  •  Adam Cohen, Panelist, "Trademark Trolls" 2012 International Trademark Association Annual Conference, Washington, D.C.
  • Adam Cohen Panelist ColumbiaLaw SchoolEntertainment, Arts and Sports Law Society” annual event (2011).
  • Adam Cohen Moderator “Lawyers on the Clock. The 12 legal issues you need to know”  Association of Independent Commercial Producers Annual Meeting (2010).
  • Adam Cohen Roundtable Leader “Gray Markets: Brand Strategy and Emerging MarketsInternational Trademark Association Annual Conference (2010)