Additional Legal Services

Trademarks, Copyrights, Rights of Publicity, and Domain Names.

Among the services offered by KeatsGatien are:

  • Consultations with respect to the selection and clearance of trademarks, including acquisitions and assignments of potentially conflicting trademarks. For example, we worked with a major cable television channel in the selection of the name of its new fashion and  home-lifestyle cable channel.
  • Consultations with respect to appropriate searching strategies. For example, often clients will select a number of possible marks for use in connection with their business. We often assist clients in determining the most cost-effective way of searching for conflicts and clearing the marks whether it be for several new film and entertainment companies, a winery, or an air cargo carrier. We utilize both in-house generated on-line searches as a quick preliminary screening mechanism as well as outside professional vendors for more comprehensive searches.
  • Directing a network of KeatsGatien foreign associates in preparing and filing applications to register trademarks and in certain instances, copyrights, throughout the world.
  • Representing clients in administrative proceedings before the United States Trademark Trial and Appeal Board.  Our attorneys have extensive experience representing clients whose registrations are being opposed or who are opposing other applications for trademarks likely to cause confusion to the consuming public.  We also represent both Petitioners and  Registrants in cancellation proceedings before the same federal body.  Our attorneys have represented clients in oppositions and cancellation proceedings for marks related to everything from software and fitness equipment to on-line music sites and aircraft leasing services.

IP Enforcement

Among our enforcement activities are:

  • Obtaining and executing nationwide ex parte seizure orders and other case specific equitable remedies such as renewable orders, asset-freezing orders, and civil contempt orders.
  • Obtaining and executing ex pare seizure orders simultaneously at numerous locations.
  • For “events” such as the release of blockbuster films or television shows  (e.g. Jurassic Park, Batman Returns, Batman Forever, Batman & Robin, Casper, Mighty Morphin Power Rangers, Star Wars Prequels, Lord of the Rings ) music concerts, and major sporting events (e.g. The Rose Bowl Tournament of Roses, Major League Baseball World Series, All-Star Game,The U.S. Olympic Committee Summer Trials, combating infringements through nationwide street sweeps by investigators, criminal enforcement, U.S. Customs enforcement, nationwide ex parte seizure orders, and cease and desist requests for voluntary relinquishments.
  • Locating and shutting-down Chinese factory source of on-line counterfeits shipped and sold in the United States.
  • Developing and implementing on-going programs which address infringement by numerous individuals and companies throughout the United States and the worldwide.
  • Litigating against non-cooperative infringements.
  • Providing training and working with law enforcement agencies such as local police or Homeland Security to combat counterfeiting and piracy,criminal infringement and illegal importation of infringing merchandise.
  • Based on our work in the case of Fonovisa v. The Cherry Auction, protecting our clients’ rights through proceedings against landlords and venue owners, in addition to the direct infringers themselves.
  • Working with investigators worldwide who uncover and report intellectual property infringements and who gather vital information necessary to combat this infringement
  • Obtaining voluntary relinquishments of infrnging products.
  • Assisting our clients in developing public relations and advertising campaigns aimed at educating consumers regarding intellectual property rights.

Brand Development

Our attorneys are uniquely positioned to assist clients during the development of their brand strategies-from start-ups to established marketers.

One of the partners worked as a brand manager for a Fortune 500  consumer product company and has experience in sales, marketing research, and advertising. Our attorneys are prepared to conduct strategic audits of existing brands as a precursor to any IP asset acquisition or transfer. In addition, we work closely with outside experts in the areas of valuation as well as tax-driven structuring.


Licensing

Revenue from the licensing of intellectual property is now one of the largest contributors to the United States’ gross national product.  From software to celebrity personas to famous works of fiction, KeatsGatien assists its clients through counseling and representation in their licensing negotiations and in crafting innovative intellectual property licenses to help them achieve their strategic objectives.  Our attorneys have worked on some of the larges licensing programs in entertainment history and have also been active in auditing and enforcing the terms of such agreements.

For example, we have worked with a financial services publishing and education company reviewing and creating licensing agreements with various international brokerage houses and insurance companies. Our attorneys have been asked to re view and provide counseling to apparel and luxury goods manufacturers when our clients found themselves in disputes over rights in a license agreement with respect to a contractor or distributor.


Counseling

We counsel our clients on all areas of trademark, copyright, branding, and internet law.  Because we have spent our entire legal careers focused on Intellectual Property issues we are in a unique position to advise our clients.  Moreover, we were among the first attorneys applying intellectual property law to the internet and therefore have a basis of knowledge with which to advise our clients with respect to internet branding and marketing issues.

Our attorneys work with start-ups and established businesses to develop strategic plans with respect to utilizing their intellectual property assets.  Typically for an established business the development of a strategic plan would also include an intellectual property audit.  The audit includes a review of all of the existing and proposed IP assets which range from trademarks to product designs and trade secrets.  We further review the assets to determine their likelihood of acquiring protection, the method of protection, and/or the continuation of existing protection.  The plan also looks at realistic levels of protection based on client priorities and resources.

Some of the specific counseling efforts include:

  • Reviewing client materials (such as scripts, books, titles, web sites, logos, trade names, product and service names) to clear these items for publication and to prevent any legal difficulties arising from copyright, trademark, right of publicity or other protection concerns.

    For example, our attorneys have worked with clients from toy companies and motorcycle manufacturers to recording companies in reviewing their products for proper legal legends involving copyrights and trademarks as well as pharmaceutical companies to be certain their labeling and written instructions are in compliance with FDA and FTC regulations. Our attorneys are involved in tracing and securing rights for various works of performing or fine art on a global basis.

  • Developing agreements, practices and procedures necessary to ensure that our clients’ intellectual property rights are secure, including work-for-hire agreements, copyright and trademark assignments, and other intellectual property ownership agreements.

    For example, we have worked with new entertainment companies to be sure that they have  comprehensive intellectual property guidelines for their productions. We have worked with toy clients to develop design standards and other practices to ensure that intellectual property assets are used consistently.  We have also worked with film and television production companies to ensure that their script and ide submission procedures and employee and independent contractor agreements are up to date.

  • Developing and securing our client’s online presence, including domain name registration and recovery programs.

    For example, we have been working with businesses as well as individual entertainers and artists to secure, and often times recover their valuable brand or personal names whose value has expanded with the expansion of the internet.


Alternative Dispute Resolution

Alternative Dispute Resolution (“ADR”) has increasingly become an integral part of the pre-litigation and  litigation process. Our firm includes a trained mediator who serves not only on a court-appointed panel for intellectual property matters but also as a mediator for the International Trademark Association (INTA) and the World Intellectual Property Organization (WIPO).

As a result of their expertise in connection with ADR, the firm’s attorneys can also play a vital role in counseling and representing clients as parties engage in ADR to resolve important litigation matters. ADR can play an effective role in reducing the time spent by executives and company employees as well as the litigation and administrative costs of litigation.

Mediation and arbitration has been used successfully in the following types of intellectual property and related commercial disputes:

  • Commercial Product Distribution disputes;
  • Copyright and trademark infringement disputes;
  • Copyright and trademark licensing disputes;
  • Internet domain name disputes;
  • Trade Dress (product/package design) disputes; and
  • Unfair Competition and false advertising disputes.