Trademarks/Copyrights

The Ulmer & Berne LLP intellectual property (IP) and technology group assists and advises clients to acquire, protect, license and commercialize trademark assets and rights. Our attorneys have substantial experience in:

  • Preparing and prosecuting federal, state and international trademark registrations;
  • Managing foreign agents in connection with international trademark preparation and prosecution under the Madrid Protocol or otherwise;
  • Handling extensive due diligence investigations with regard to trademark and counterfeiting claims;
  • Structuring and documenting transactions for the commercialization of trademarks and related assets and rights;
  • Protecting trademarks and related assets and rights, including the support of trademark-related litigation and dispute resolution; and
  • Reviewing branding programs and preparing branding manuals and procedures.

Members of the IP and technology group manage or assist with domestic and foreign trademark dockets of some of the world’s largest corporations and have the technology and infrastructure necessary to manage the trademark portfolios of clients regardless of size.  In addition, the IP and technology group assists and advises clients to acquire, protect, license and commercialize copyrighted works and related assets and rights. These include creative works (including graphical, video, audio and electronic works), software, Internet-related works, engineering designs and many others.  Ulmer & Berne's IP attorneys have substantial experience in:

  • Preparing and prosecuting federal copyright registrations;
  • Licensing copyrighted works, including software and related assets;
  • Preparing copyright assignment and “work made for hire” agreements;
  • Handling of extensive due diligence investigations with respect to copyright ownership issues;
  • Structuring and documenting transactions for the commercialization of copyrighted works and related assets and rights; and
  • Protecting copyrighted works and related assets and rights including the support of copyright-related litigation and dispute resolution.
Attorneys
Robert E. Chudakoff
Charles A. Crehore
Prentiss W. Hallenbeck
Gordon D. Kinder
Clayton L. Kuhnell
Michael A. Marrero
Donald J. Mooney, Jr.
Stanley D. Prybe
Eric M. Robbins
Kari C. Samuels
Wayne M. Serra
Michael D. Stovsky
Stephanie E. Trudeau
Seth A. Voit
Elizabeth M. Widman

 

Clients

 

Representative Experience

Representing an electronic stun gun manufacturer in trademark prosecution and application matters. 

Representing a Cleveland-based greeting card manufacturer in intellectual property matters and technology contracts related to the divestiture of one of its divisions.

Representing a Cleveland-based global adhesives manufacturer in the negotiation of a software license dispute. 

Representing one of the leading international manufacturers of tires with trademarks, copyright and technology-related matters.

Representing several Cleveland-based companies, privately held and publicly traded, in connection with software licensing, ERP implementation and other technology transfers.

Representing a Cleveland-based provider of Voice Over IP services as general outside corporate counsel, technology counsel and intellectual property counsel.

Representing a Cleveland-based developer of spinal implants as general outside counsel and technology counsel.

Representing a New Jersey-based privately held dietary-supplement manufacturer and marketer on intellectual property and general corporate matters. 

Representing a Tennessee distributor of medical supplies on intellectual property and general corporate matters. 

Representing a Cleveland-based teaching hospital system in the negotiation of technology contracts. 

Representing an Ohio holding company in a source code escrow transaction.

Representing a local community college in the negotiation and preparation of system development and system maintenance and technical support agreements in connection with a new wireless employee work order system being implemented at the college. 

Representing an Ohio limited liability company in numerous intellectual property matters including:           

  • Advising on and negotiating several technology and data licensing agreements and joint marketing agreements.
  • Negotiating a license agreement with an international sourcing company.
  • Advising on a teaming agreement and joint venture with a software developer and designer.
  • Negotiating a licensing/consulting agreement with a vision care, pharmaceutical and surgical manufacturer and distributor. 
  • Negotiating a consulting agreement with a home improvement warehouse retailer. 
  • Negotiating a joint venture with an international provider of information management solutions. 

Representing a rapidly growing international emerging pharmaceutical company in a $150 million license agreement for a new attention deficit disorder drug.  
      
Representing a bio-technology company in negotiating a manufacturing license agreement to produce a new FDA-approved product for wound healing. 
   

 

Related Practice Areas
Litigation
Intellectual Property

Business
Corporate Finance     
Intellectual Property & Technology
International
Mergers & Acquisitions
Private Equity/Venture Capital

Technology
eBusiness
Intellectual Property/Licensing
Intellectual Property/Litigation
Patents
Technology Transactions

 

Case Studies

 

Publications

 

News