What is Intellectual Property Law?
Intellectual Property, commonly referred to as "IP," refers to a body of law that offers authors, inventors, individuals and companies the rights to use certain types of intangible property they have created and to exclude others from use of that same property. There are four major types of IP, each having different rights and requirements for protection of those rights: copyrights, trademarks, trade secrets, and patents.
A copyright is a set of rights afforded to an author of an original work, fixed in a tangible form, including but not limited to books and periodicals, computer software, audiovisual works, and visual art such as photographs, paintings and sculptures. A copyright owner has several exclusive rights, including the right to reproduce the work, distribute the work, prepare adaptations called "derivative works," perform the work publicly, and display the work publicly. While copyright registration is not required, registration is a prerequisite for instituting an infringement action against a third party infringer. Copyright protection generally lasts throughout the lifetime of the author plus an additional 70 years, offering, among other things, protection against unauthorized use, display, and reproduction of the work by other parties without the author's permission.
A trademark is any word, name, symbol, or other designation that is used to identify the source of a party's goods or services. A trademark is a symbol used with a party's goods, while a service mark is a symbol used with a party's services. In practice, the term "trademark" is used broadly in reference to both types of marks. A trademark owner may protect its mark against infringement by another party's confusingly similar mark on similar goods or services and against dilution by another party's use of a similar mark on dissimilar goods and services. In the United States, federal trademark protection is available as long as the mark is used in interstate commerce. Registration is not a prerequisite for instituting an infringement action in the United States against a third party; any distinctive trademark or trade dress that is used in commerce may be protected under common law. However, registration provides the owner with additional benefits above and beyond those afforded to owners of common law trademarks. The owner of a registered mark may prevent registration of another party's mark that it believes that registration of the mark will damage the owner's business. An opposition proceeding before the Trademark Trial and Appeal Board is available if the mark has not yet been registered but has been published for opposition. A cancellation proceeding may be initiated against a mark that has already been registered. Trademarks and certain forms of trade dress can be registered with the various states, the federal government, and the governments of most countries.
In its simplest form, a trade secret is any type of information that gives a business a competitive advantage by virtue of the information being kept secret. Trade secrets may include information such as manufacturing methods and processes, formulas, marketing data, and other proprietary data. Unlike other IP, such as copyrights and patents, a trade secret is not an exclusive right to use the information. Indeed, another party may independently develop the same information while the first party is able to indefinitely protect its trade secrets. Generally, trade secrets are maintained through the use of confidentiality agreements and other security measures. Unlike the other forms of IP, trade secrets are generally not protected under federal law, but rather state law.
A patent is a right granted to an inventor who invents or significantly improves any new and useful process, machine, article of manufacture, or composition of matter. A patent owner has the exclusive right to use the patent, and the owner also has the right to prevent others from making, using, selling, or offering to sell its invention. Patent protection is generally available for 20 years from the time of filing an application with the U.S. Patent and Trademark Office.
Practice Area Descriptions
Advertising, Marketing, and Promotions Law
N&M attorneys provide assistance to clients with legal issues relating to contests, promotions, marketing agreements, commercial transactions, advertising copy review, and claim substantiation. We have represented major advertisers and sports and entertainment celebrities in drafting and negotiating marketing contracts. We have also represented our clients' interests before the National Advertising Division and the National Advertising Review Board. Our attorneys have represented clients in numerous advertising disputes involving claims of unfair competition, violations of various unfair business practices statutes, and acts of trademark infringement.
N&M attorneys counsel clients on, and negotiate and draft, a wide variety of commercial contracts, including product sales and vendor agreements, manufacturing agreements, outsourcing agreements, and supply chain and logistics agreements.
Copyright Protection and Litigation
N&M attorneys counsel clients on a variety of copyright issues, including the registration of copyrights with the U.S. Copyright Office. Our attorneys have expertise in the Copyright Office's new electronic filing system, as well as the traditional paper application process. We have represented various types of creators, including authors, photographers, software developers and programmers. We have also represented various corporate entities for counseling with works made for hire. Our attorneys have counseled our clients on licensing and assignment issues related to copyrights. We have also represented copyright owners claiming infringement and those defending against claims of infringement in federal courts and in connection with the Digital Millennium Copyright Act.
Internet and Social Media Law
N&M attorneys have extensive experience protecting and litigating against the unauthorized registration and use of domain names that infringe or dilute our clients' intellectual property rights. We counsel clients on the filing of complaints under the ICANN Uniform Domain Name Dispute Resolution Policy with the World Intellectual Property Organization (WIPO) for cybersquatting, misappropriation, and infringement. Our attorneys also have experience in protecting our clients' rights against unauthorized use of their trademarks as user names or other uses on social media and online auction service provider websites, as well as protecting against the unauthorized use of copyright-protected works on user-generated video content websites.
N&M attorneys provide counseling and negotiation expertise to our clients for transactions in a broad range of technology sectors, including licensing of software and intellectual property and web development. Our attorneys negotiate and draft technology development agreements and intellectual property licenses and transfers, provide strategic guidance on structuring IP and technology transactions, including sales and acquisitions of technology businesses, and negotiate and draft various e-commerce agreements such as website terms and conditions, end-user agreements, and privacy policies. In addition, we act as general counsel for a technology industry standards-setting association.
Trademark Counseling and Prosecution
N&M attorneys counsel clients on a variety of trademark issues, including searching, clearance, registration, prosecution, protection, and licensing of trademarks domestically and throughout the world. We manage trademark portfolios for various types of companies and in a wide array of industries. We regularly conduct and supervise trademark searches and render opinions regarding the scope and validity of potential trademarks. Our attorneys also negotiate and draft agreements in relation to the intellectual property rights of third parties, including licenses, assignments, and consent agreements. Our attorneys have extensive experience prosecuting applications through the U.S. Patent and Trademark Office. We also work closely with our foreign associates to secure protection of our clients' valuable trademark rights in various countries.
N&M attorneys have actively enforced our clients' trademark rights in litigation matters in federal and state court proceedings and before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board for trademark oppositions and cancellations. We have also defended our clients' trademarks rights in litigation before these same tribunals. Our attorneys regularly assist clients in monitoring, policing and bringing the necessary actions to preserve and strengthen clients' trademark rights. Likewise, we defend our clients when their trademark applications or registrations receive objections from third parties by way of Examiner Office Actions, opposition proceedings or cancellation proceedings. Additionally, we have vast experience stopping would-be infringers' misuse of our clients' marks in domain name proceedings with WIPO, pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy. Our attorneys also work with foreign associates to protect our clients' valuable trademark rights abroad.
Trade Secret Protection and Litigation
N&M attorneys have counseled clients regarding the protection of their valuable proprietary information by preventing the unauthorized disclosure and use of trade secrets, the implementation of confidentiality measures through employment agreements and policy manuals, and the acquisition of trade secrets through licenses and assignments. We have helped our clients identify their legitimate rights in trade secrets and provided opinions on the scope and validity of those rights. Our attorneys have negotiated licenses, assignments, franchise and distribution agreements, non-competition and confidentiality agreements. We have also enforced our clients' valuable trade secret rights via litigation, applying various bodies of trade secret law.
Unfair Competition and False Advertising
N&M attorneys have enforced our clients' rights against acts of unfair competition and false advertising. Unfair competition actions, such as passing off, false designations of origin, and deceptive practices, are often alleged concurrently with acts of trademark or trade dress infringement and dilution under state and federal law in various forms of litigation. Our attorneys have a wealth of experience pursuing actions involving acts of unfair competition and false advertising in federal courts and before the National Advertising Division of the Council of Better Business Bureaus.