Intellectual Property

RCCB's Intellectual Property Group represents local, regional, national, and international clients in all aspects of strategic counseling, prosecution, licensing, brand protection and litigation for copyrights, trademarks, trade secrets, and other intellectual property rights. We represent clients in a wide range of industries, including food & beverage, consumer goods, software & technology, manufacturing and distribution, hospitality, cannabis, the financial sector, and healthcare, from start-ups to mid-market to well-established recognizable brands. Our attorneys are strategic and pragmatic in achieving our clients’ goals in protecting, enforcing, and defending their valuable intellectual property rights throughout the country.

Intellectual Property Counseling & Licensing

• Review and development of programs for identifying and protecting intellectual property
• Draft and negotiate license and development agreements in a broad array of industries
• Provide critical advice to management on day-to-day intellectual property matters
• Conduct and oversee intellectual property audits
• Review and preparation of intellectual property status reports to enable key decisions
• Review of competitors' patents, trademarks and copyrights to assess the market
• Draft and negotiate development agreements, consulting and service agreements, and other intellectual property-related contracts
• Assist companies in bringing new products to market, including clearance reviews
• Development and maintenance of databases related to specific technologies
• Review and payment of U.S. and international patent and trademark maintenance fees
• Development of trade secret protection programs and policies

Intellectual Property Litigation

We guide our clients from the preliminary injunction phase through trial and beyond.  

• Trademark infringement

• Copyright infringement

• Misappropriation of trade secrets

• False advertising

• Licensing and other contract disputes

• Trade dress claims

Trademarks & Brands

We have deep experience in trademark and brand management in a variety of industries, such as food and beverages, furniture and textiles, computer software and hardware, SaaS, internet and eCommerce, social media, airlines and other transportation companies, logistics, fashion, consumer goods, footwear, pharmaceuticals and medical devices, financial services, manufacturing and hospitality.

CLEARANCE

• Preliminary searching

• Review of comprehensive searches

• Opinions and recommendations regarding adoption, use and registration

PROSECUTION

• Domestic filings and maintenance

• Global registration strategies

• Global filings and maintenance through our worldwide network of trademark lawyers

PROTECTION

• Educate client’s employees on the correct way to use trademarks

• Review watch reports of third party activity and provide recommendations

• Filing and prosecution of applications
• Maintenance of Registrations

COUNSELING

• Provide thoughtful and practical strategies for selection, adoption, enforcement and registration

ENFORCEMENT

• Draft and respond to cease and desist letters

• File and respond to UDRP proceedings relating to domain names

• File and respond to Letters of Protest, Cancellations and Oppositions

• Prosecute and defend trademark and copyright litigation in Federal Court

TRANSACTIONS

• Draft and advise on trademark and copyright licenses throughout the world

• Draft and advise on trademark assignments

• Assist in corporate due diligence relating to intellectual property

Copyrights

• Copyright registration
• Copyright infringement searches and opinions
• Recordal of assignments and name changes
• Licensing
• Client counseling

Trade Secrets and Non-Competes

• Investigation of intellectual property theft
• Trade secret protection audits
• Confidentiality policies and agreements
• Non-competes and other post-employment restrictive covenants
• Computer forensic analysis
• Work-for-hire and employment issues
• Halting fraud and deceptive trade practices

Licensing

• Drafting and negotiating license, development, referral and reseller agreements
• Preparation of U.S. and international patent licenses, assignments and technology transfer agreements.
• Preparation of U.S. and international trademark licenses and assignments
• Preparation of copyright licenses and assignments

Mergers and Acquisitions

• Procurement of patent, trademark, copyright and/or trade secret assets
• Due diligence to identify intellectual property assets worldwide
• Perfection of security interest in intellectual property
• Preparation and recordal of US intellectual property assignments
• Managing international counsel further to preparing and recording intellectual property assignments worldwide.

EXPERIENCE

• Advise on and handle anti-counterfeiting matters, including strategic protection and litigation
• Cross-Border Infringement cases
• Uniform Dispute Resolution proceedings
• Complex trademark Infringement cases
• Negotiation of business resolutions of infringement cases
• Strategic resolution of trademark disputes relating to cannabis
• Advising businesses, from start-ups to multi-billion dollar public companies, in drafting and negotiating complex commercial licenses of intellectual property and related service 
• Advising clients on how to update and streamline their contracting and sales processes.
• Representation of musicians relating to trademarks, copyrights and termination under the Copyright Act
• Complex analysis of intellectual property rights in connection with NFTs
• Prosecution of claims under the Defend Trade Secrets Act, Pennsylvania Uniform Trade Secrets Act, Delaware Trade Secrets Act, and related claims
• Development and implementation of comprehensive trade secret valuation and protection programs

Representative Matters

Lead counsel in aspects of the presentation of a plaintiff in a counterfeiting lawsuit. We were successful in obtaining an injunction, an award, and an admission of liability. The matter was important in the protection of the client’s marks as part of a nationwide campaign to stem counterfeiting which was costing the client millions of dollars of damages. For this reason, obtaining the injunction and admission of liability were critical components.

Local counsel the representation of a social media giant in a case of first impression involving Section 230 rights. We successfully obtained a motion to dismiss on allegations made by a well-known TV news anchor. The plaintiff has appealed and the matter is now pending in the United States Court of Appeals for the Third Circuit.  

In a cross-border matter, RCCB acted as lead counsel in all aspects in the representation of defendants in a trademark infringement matter involving software companies. We were successful in creating an opportunity to settle upon favorable terms while saving the clients further litigations. 

Local counsel in the filing of claims against large domain name registrar on claims of third-party domain name registrations. 

Lead counsel in all aspects in the representation of our plaintiff in a trademark infringement, copyright infringement and unfair competition against competitors that stole our client's intellectual property  We were successful in resolving all matters through a favorable corporate transaction.

MORE

Lead counsel in all aspects in the representation of a plaintiff who owned state TM registrations for cannabis products. The matter was important given the restrictions on cannabis and their inability to litigate in Federal Court. 

RCCB advises dozens of businesses, from start-ups to multi-billion dollar public companies, in drafting and negotiating complex commercial licenses of intellectual property and related services, as well as advising clients on how to update and streamline their contracting and sales processes. 

Lead counsel in the representation of the founder of a punk rock band and involved in all aspects of enforcing trademark rights against former band members as well as various third-party infringers, in addition to trademark prosecution and counseling.

Lead counsel in the representation of the estate of a lead singer in one of the most influential punk rock bands in the US and involved in all aspects of enforcing trademark rights as well as trademark prosecution and counseling and various business disputes.

Lead counsel in the representation of the estate of a famous mid-century modern designer and involved in all aspects of enforcing trademark rights against a large and well-known furniture company as well as trademark prosecution and counseling.

Lead counsel in all aspects of the representation of a defendant against allegations of collective works that were fraudulently obtained. The matter involves the construction of the scope of rights of the collective and joint works. 

Lead counsel in prosecuted claims under the Defend Trade Secrets Act, Pennsylvania Uniform Trade Secrets Act, Delaware Trade Secrets Act, and related claims on behalf of nationwide payroll services, tax, and human resources services provider where the former employee had taken trade secrets and intellectual property, including pricing formulas, materials related to the proprietary software service platform, and client and customer specifications, to a competitor. Prosecution involved specifically defining trade secrets according to statutory definitions and applicable law while maintaining the client's confidentiality and security. 

Lead counsel in the representation of a worldwide industrial components manufacturer in the development of a comprehensive program to locate, secure, and protect intellectual property (including inventions) and trade secrets. The program involves the formation of protective employment, confidentiality, and intellectual property agreements, implementation of employee training, audits of current intellectual property security practices, and formation of policy documents designed to ensure maximum protection of company assets.