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SISUN LAW   ·   79 MADISON AVENUE, FLOOR 2, NEW YORK, NY 10016   ·    347-913-7800   ·   © 2017 SISUN LAW

Trademark

Branding

Advertising 

Led by a former U.S.P.T.O. Trademark Examining Attorney

We offer practical and value-driven advice based on your brand protection, business and monetization goals.  Our trademark and branding law services include managing large and small portfolios, clearance, maintenance, enforcement, defense, litigation, and licensing of trademarks, domain names and brands in the U.S. and abroad.  Led by a former U.S.P.T.O Trademark Examining Attorney, we have a unique understanding of the ins-and-outs of the Trademark Office from USPTO filing to the TTAB.  We also advise and counsel on advertising, marketing and promotion matters in various areas including clearance, agreements, litigation and litigation avoidance.  Some of the domestic and international services we offer our clients include:

 

TRADEMARK, TRADE DRESS AND BRAND STRATEGY - PORTFOLIO MANAGEMENT, REGISTRATION, PROSECUTION AND CLEARANCE
  • Preparation, filing and prosecution of trademark applications before the United States Patent and Trademark Office, state trademark offices, and international trademark offices

  • Manage and maintain large and small U.S. and foreign trademark prosecution and litigation dockets

  • Availability searches and guidance, including cost-effective direct-hit, preliminary and comprehensive clearance

  • Targeted branding strategies based on an assessment of clearance, third-party investigations, and USPTO and marketplace considerations

  • Education of key personnel on proper use of marks and spotting third-party infringement

  • Assist internal marketing departments with development of brand and marketing strategies

 

ENFORCEMENT, TTAB, LITIGATION, LITIGATION PREVENTION
  • Prepare and respond to cease-and-desist letters and threats of infringement

  • Trademark litigation from initial complaint through appeal, including trademark infringement, trade dress infringement, false advertising, unfair competition, anti-counterfeiting, rights of publicity, trade secret misappropriation, domain name disputes, and related state law claims

  • USPTO TTAB disputes, including ex-parte appeals, and inter partes trademark oppositions and cancellations

  • Conduct social media, domain name, bricks-and-mortar and digital trademark infringement monitoring to identify prohibited activities

 

AGREEMENTS, LICENSING AND ACQUISITION
  • Trademark licensing and merchandising agreements

  • Portfolio diligence and audit

  • Intellectual property asset management and brand management advice

  • Drafting and negotiating agreements related to confidential information, non-disclosure, contractual restrictions, trade secrets, consent, co-existence, assignment and settlement

 
ADVERTISING, PROMOTION AND MARKETING
  • Clearance of advertising copy and claims-substantiation review

  • Comparative advertising advice.

  • Counsel on product labeling

  • Sponsorships, endorsement and co-branding agreements

  • Sweepstakes and contests advice

 
 
 
 

Technology

Domain Name

Social Media

Software, technology, domain names, mobile applications, social media, and the Internet create opportunities for monetization, protection, enforcement and licensing.  We understand the interplay with other areas of the law, including intellectual property, licensing, and corporate law, to help our clients protect, enforce, license, develop and sell their properties.  We also work closely with our clients to ensure seamless introduction of their technology, social media projects and mobile apps to the marketplace.  Some of the services we offer include:

  • Advising and implementing legal strategies to help our clients achieve their new media and technology goals

  • Working with our clients to procure, protect, license, develop and sell valuable technologies

  • Negotiating and drafting domain name purchase and transfer agreements

  • Protecting, enforcing and defending rights in domain names by way of monitoring, cease-and-desist, settlement agreements and bringing or defending UDRP actions (Uniform Domain-Name Dispute-Resolution Policy)

  • Enforcing and defending website content claims under the Trademark Act, Copyright Act, Anti-Cybersquatting Prevention Act, and advise and implementing proper practice on complying with the Digital Millennium Copyright Act (DMCA), including filing and responding to take-down notices, establishing online enforcement strategies and policies, and takedowns of protected subject matter

  • Drafting and negotiating terms of service, and privacy policies, end-user license agreements, and e-commerce agreements to ensure protection and compliance

  • Negotiating and structuring master services agreements, development agreements, cloud computing agreements, software and mobile application and platform agreements

Business 

Start-Up

We counsel entrepreneurs, small businesses, executives, and established companies to help create, manage and run businesses.  As part of our services, we provide agreement work, start-up formation, and day-to-day business counsel.  Some examples of the services we offer our clients include:

• Entity formation advice targeted specifically to your business needs

• Drafting of bylaws, shareholder, LLC, joint venture and partnership agreements

• Operating agreement drafting and consulting

• Preparation and consulting of letters of intent

• Equity/debt raising consultation

• Investor agreements and fundraising consulting

• Vesting schedule advice

• Founder's equity arrangements consulting

• Sales, acquisitions, mergers and joint venture concerns

• Franchise agreements

• Consulting on compensation plans for executives and other key figures

• Commercial transaction advice, negotiation, drafting and structuring.

• Commercial litigation/litigation prevention

• Confidentiality, non-disclosure and non-compete agreements

Patent 

Design Patent*

*Patent Services Provided by Our Experienced Network of Patent Prosecution and Litigation Attorneys

  • File U.S. and PCT patent applications 

  • Negotiate, draft and structure patent licenses and assignments

  • Litigate, enforce, protect and defend patent rights 

  • Understand the client, the invention and its technical aspects

  • Counsel on identifying patentable inventions and identifying suitable foreign jurisdictions to file the patent applications

  • Patent prior art novelty searches and review same for patentability

  • Patent examiner interviews

  • Prepare patent applications in compliance with foreign directives

  • Perform corporate patent due diligence

  • Assist in the preparation of invalidity, freedom to operate and right to use opinions

  • Prosecute and defend patent infringement disputes

  • Provide international patent protection through a trusted network of local patent counsel

  • Advise on patent positions for venture-funded clients to assist with raising funds, buy-out or IPO

  • All aspects of design patent

  • Prepare and file reissue applications and reexamination requests

  • Manage and maintain U.S. and foreign patent prosecution dockets

Litigation 

Enforcement T.T.A.B

U.D.R.P 

Our litigation services span from commercial litigation to trademark, patent, copyright and domain name enforcement, defense and recovery.  Some of our litigation services include: 

• Commercial litigation

• Advise on whether to litigate or resolve early

• Patent litigation through trusted of-counsel patent attorneys

• PTAB proceedings through trusted of-counsel patent attorneys

• Trademark litigation

• TTAB proceedings, including ex-parte appeals, and inter partes trademark oppositions and cancellations

• Copyright litigation

• Domain name and social media handle enforcement and recovery, including U.D.R.P.

• litigation prevention through settlement, negotiated co-existence arrangements, and retroactive licensing, among others

• Prepare and respond to cease-and-desist letters and threats of infringement

• Conduct social media, domain name, bricks-and-mortar and digital trademark infringement monitoring to identify prohibited activities

• Enforcing and defending website content claims

 

Copyright

Fashion

Design

We assist clients with a variety of copyright law matters, including registration, enforcement, litigation, monetization, publishing, licensing and related transactions.  We handle complex copyright matters for fashion companies, architects, musicians, photographers, designers, authors, programmers, entrepreneurs, corporations and non-profit entities, among others.  We also advise our clients on fair use defenses and defense of infringement claims, idea submission, work-for-hire and employment issues, termination, and international concerns.  Some examples of the services we offer our clients include:

• Assist clients in securing global copyright rights and ownership of copyright assets

• Enforce and protect copyrights and defend copyright claims in federal court litigation and appeals, and coordinate with foreign attorneys to enforce rights and defend claims internationally

• Prepare and respond to cease-and-desist letters and threats of infringement.

• Licensing copyrighted works, entertainment properties and software, and addressing open source concerns

• Due diligence reviews and counseling for acquisitions of copyrighted works or entertainment properties

• Review and counseling of online and social media content

• Advise, negotiate and draft work for hire, freelance, contractor and employment agreements

• Idea submission consulting

• User generated content advice

• Record rights with U.S. and foreign customs offices

• Advise on reducing the risks of dispute by addressing issues before they happen

• Copyright releases

• Image enforcement and defense consulting

• Copyright assignment agreements

• Authorship and joint authorship consulting

• Identify copyright issues to avoid litigation

• Advise and handle section 203 and 304 copyright terminations

• Consult on fashion strategies, including pattern protection, photography, and licensing