Licensing, Intellectual Property & Technology
The attorneys of Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP use their unique and extensive experience, problem-solving skills, and relationships to assist clients involved in all facets of the licensing and merchandising industry to build and grow their businesses. As “business lawyers for the licensing industry,” we provide full service outside general counsel services, ranging from corporate and transactional matters, to the mediation, arbitration and litigation of disputes.
WHAT KINDS OF CLIENTS DO WE REPRESENT?
- Intellectual Property Owners
- Celebrities and Celebrity Estates
- Celebrity Stylists and Fashion Companies
- Social Media Influencers
- Licensing Agencies and Consultants
WHAT DO WE DO?
- Negotiate and draft endorsement, product development, trademark, intellectual property, advertising, character licensing agreements, and Name Image and Likeness agreements
- Advise and structure businesses, including joint ventures, and negotiate transactions such as sales and acquisitions, debt financing and equity investments
- Trademark applications, registration, and enforcement
- Coordinate, prosecute, and defend royalty accounting claims
- Litigate all of the above and right of publicity, trademark infringement, breach of contract, and intellectual property claims
INTELLECTUAL PROPERTY & TECHNOLOGY
Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP attorneys recognize that perhaps the most valuable asset of any business, large or small, is its intellectual property. We also understand that the technology industry is constantly changing and evolving, and we strive to always be one step ahead of the curve in order to protect and maximize these assets.
Our team of highly educated and experienced attorneys routinely assist clients before federal and state courts and the U.S. Patent and Trademark Office, as well as in arbitration proceedings in the United States and abroad, in all facets of business negotiations involving intellectual property, intellectual property enforcement, copyright, and trademark prosecution and clearance, and negotiating and structuring licensing and technology transfers. We work with local counsel and foreign jurisdictions to protect the global intellectual property rights of our clients. We also advise clients regarding issues relating to the Internet, e-mail, and communication retention policies.
- Patent Litigation
- Copyright Litigation
- Patent Procurement
- Trademark Litigation
- Trade Dress Litigation
- Trade Secret Litigation
- Licensing – Transactional / Litigation
- Trademark and Copyright Prosecution
- Successfully represented a US mezcal brand owner in litigation over the hijacking of their Mexican trademark by a Oaxacan factory
- Advised a fast-growing restaurant group on brand protection and creating a private label spirits brand to be produced by one of the leading distilling families.
- Counseled a Mexican actor and his entity in the restructuring of the manufacturing, importation, and distribution of his liquor brand
- Secured a motion to dismiss in favor of a tequila manufacturer after a competitor alleged trade dress infringement over the design and shape of a spirits bottle
- Successfully represented one of the largest wineries in Europe and its U.S. subsidiary in a dispute over the termination fee and rights brought by a U.S. importer, and conversion of the domain name of the winery’s subsidiary; obtained the turnover of the domain name
- Successfully defended a Latin American sports apparel manufacturer in an opposition proceeding at the Trademark Trial and Appeal Board (TTAB) brought by a well-known competitor
- Successfully argued case of first impression at the Federal Circuit setting, the U.S. standard for patent prosecution bars in protective orders
- Obtained full defense victory for multiple shopping mall operators with patent invalidation on 35 USC § 101/Alice motions to dismiss
- Successfully obtained cancellation of registered marks in multiple TTAB litigation against owners of marks
- Successfully defended a “lead gen” technology company in trade secret, unfair competition and breach of contract action with patent issues resulting in confidential settlement
- Obtained dismissal of patent infringement case on a TC Heartland motion to dismiss
- Successfully defended a client in a design patent and trade dress misappropriation case covering military-grade hangers
- Successfully defended a concierge moving services company in patent infringement action asserting product recommendation engine patents
- Negotiated a celebrity licensing agreement on behalf of our client for the launch of black Irish liqueur