Trademark Experience

At Jackson Kelly, we have a wealth of experience in trademark law, covering all aspects of searching, registering, enforcing, and licensing trademarks and service marks. We have helped clients across various industries secure and protect their brand identity by filing trademark applications and renewals with the U.S. Patent and Trademark Office (USPTO), conducting trademark clearance searches and opinions, negotiating trademark licenses and assignments, and litigating trademark infringement cases.

Whether you need assistance with selecting, registering, maintaining, or defending your trademarks, we have the expertise and resources to handle your trademark matters efficiently and effectively.

• Trademark Registration and Portfolio Management: Jackson Kelly successfully managed the trademark portfolio for a rapidly expanding craft brewery. Our team handled the registration of new trademarks, ensuring comprehensive protection as the client introduced innovative products to the market. Our ongoing portfolio management included monitoring for potential infringements and advising on strategic brand expansion.

• Trademark Litigation: We represented a well-known snack food company in a significant trademark infringement lawsuit. The case involved complex issues around similar branding by a competitor. Our litigation strategy was rooted in deep legal analysis and resulted in a favorable outcome that reinforced our client’s market position and protected their brand identity.

• Opposition and Cancellation Proceedings: Our attorneys successfully led opposition proceedings for a rapidly expanding craft brewery company before the Trademark Trial and Appeal Board (TTAB). The proceedings were against a registration that could potentially dilute our client’s well-established brand. Our persuasive arguments and thorough preparation resulted in a decision favoring our client, preventing the registration of the conflicting trademark.

• Trademark Licensing and Agreements: Jackson Kelly facilitated a significant licensing agreement for a well-known artist, enabling the use of their trademarked designs by a major retail chain. Our negotiation skills and understanding of both parties’ needs led to an agreement that was beneficial for our client and respected their artistic integrity.

• Trademark Enforcement and Brand Protection: We developed and implemented a comprehensive enforcement strategy for a multinational corporation to protect against counterfeit goods.

• Internet and Domain Name Disputes: Our team resolved a high-stakes domain name dispute for a financial services company. The dispute involved trademark infringement and a cybersquatting issue. Through effective legal action and negotiation, we secured the transfer of the domain name, safeguarding our client’s online presence and brand.

Copyright Experience

Jackson Kelly can assist with protecting and registering copyrighted works, provide counsel regarding the scope of rights in the U.S. and internationally, and represent clients in the enforcement of copyright rights or infringement claims.

Representative Copyright Experience

• Copyright Infringement Litigation: We successfully represented a well-known photographer in a high-profile copyright infringement case against a large advertising agency. The agency used the photographer’s work without permission in a national campaign. Our vigorous litigation efforts led to a substantial settlement for our client, acknowledging the unauthorized use and value of their creative work.

• Defense in Copyright Claims: Jackson Kelly defended a regional publisher against claims of copyright infringement regarding the use of an image from a freelance photographer. Our team’s thorough legal analysis and strategic defense resulted in the dismissal of the case, affirming the lawful use of the material under fair use principles.

• Copyright Registration and Protection: We have managed the copyright registration process for independent musicians, ensuring all aspects of their productions, including soundtracks and artwork, are fully protected under copyright law. This comprehensive approach helps prevent infringement and streamlines enforcement if violations occur.

• Negotiating Publishing Agreements: Our attorneys negotiated a complex publishing agreement on behalf of an author for their debut novel with a major publishing house. The agreement not only ensured fair compensation but also protected the author’s rights in adaptations and future works, setting a solid foundation for their career.

• Resolving Digital Copyright Issues: We addressed and resolved a digital copyright dispute for a software company over the use of proprietary code in open-source projects. Our expertise in both copyright and technology law was crucial in navigating the nuances of this case, securing our client’s rights while respecting the collaborative nature of open-source environments.

• Advising on Copyright Policy and Compliance: Jackson Kelly provided comprehensive advisory services to a university on copyright policy and compliance. This involved auditing existing practices, developing robust policies for the use of copyrighted materials in educational settings, and conducting training sessions for faculty and staff.

Licensing Agreements

At Jackson Kelly, we understand that licensing is a critical tool for leveraging intellectual property (IP) and expanding business opportunities. Our licensing practice combines legal expertise with a deep understanding of various industries to create tailored, effective agreements. We assist clients in both negotiating and drafting licensing agreements that align with their strategic goals, ensuring their IP assets are utilized to their full potential while safeguarding their rights.

These experiences underscore Jackson Kelly’s prowess in crafting and managing licensing agreements that not only protect our clients’ intellectual property but also foster growth, collaboration, and innovation. Our approach is always client-focused, ensuring that each licensing agreement we craft is as unique as the intellectual property it protects and the business it serves.

Representative Licensing Agreements

• Technology Licensing: We facilitated a licensing deal for an energy technology company, granting a multinational corporation access to a proprietary technology. This complex agreement not only brought substantial revenue to our client but also included provisions to protect their ongoing innovation and development rights.

• Entertainment and Media Licensing: Our firm represented a film production company in negotiating distribution and licensing rights with a major streaming service. The deal not only expanded the reach of our client’s work but also ensured fair compensation and protection of their creative control.

• Software Licensing and Compliance: Jackson Kelly advised a software developer on a suite of end-user license agreements (EULAs) and compliance issues. Our proactive approach helped the client navigate the complexities of software licensing, including aspects related to open-source software and intellectual property rights.

• Franchise Licensing and Expansion: We assisted a fast-growing restaurant chain in developing and implementing a franchise licensing system. This strategic move allowed our client to expand their brand nationwide while maintaining quality and operational standards.