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REPRESENTATIVE EXPERIENCE

IP Procurement and Portfolio Management

Advising Belkin International, Inc. on global IP management and enforcement in connection with the BELKIN, LINKSYS, and WEMO brands and a portfolio of over 2,000 marks and designs. We act as sole global counsel on all global trademarks, designs, copyrights, advertising, consumer laws, and related matters. We manage the company’s extensive global IP portfolio, brand protection and enforcement strategy, oppositions, market monitoring, and anti-counterfeiting and litigation projects.

Handling virtually all of Baxter Healthcare’s U.S. non-litigation patent work, including prosecution of thousands of patents and applications for well over a decade. We also advise Baxter on strategic patent counseling, patent licensing and negotiations, and freedom-to-operate and enforcement matters. Additionally, we provide EPO and Australian counseling (post-grant and strategic enforcement work). 

Manage Thomas Pink's entire global IP portfolio of trademarks and designs, advising on enforcement, litigation and licensing issues, and being primary outside counsel on marketing and advertising issues, e-commerce, contracts, collaborations, and other day-to-day legal matters.  We recently advised on the company’s global brand re-launch which was announced in November 2018 under the PINK SHIRTMAKER brand as well as a number of domain name disputes in the US and EU.

Represent Proteus Digital Health for over a decade and have developed a valuable global patent portfolio to protect their technology. During development of the global patent portfolio, we regularly advise Proteus on which technical aspects of the ingestible sensor platform are suitable for patent protection or trade secret protection.We also advise on selecting the optimum global patent strategies, including selecting in which jurisdiction each patent application should be filed and maintained.

Advising BMI Group on their global IP management, involving over 80 countries. We advise on strategy, clearance and trade mark prosecution for the BMI brand, and various new product and service brands, and continue to handle the worldwide filings for over 250 pending trade mark applications. We also advised on a number of actions related to the re-branding, including cancellation actions at the EUIPO and UKIPO in relation to marks held by third parties, on the grounds of non-use.

Provided patent counseling including patent procurement and portfolio management services for Japan Display Inc. based in Tokyo and in support of their leading global manufacturing business of advanced small and medium sized display panels, which provide high resolution, low-power consumption, and thin displays for smartphones, tablets, automotive electronics, digital cameras, medical equipment, and other electronic devices. This has included managing/handling a large scale US patent portfolio of over a thousand US patents directed to display technology for about ten years to date.

Advising General Mills on international IP matters.  We advise on the expansion of its Yoplait business in numerous international markets through IP licensing and franchising arrangements.  

Represent the Massachusetts Institute of Technology in a variety of intellectual property matters, including patent procurement and general IP counselling. We have filed and prosecuted numerous patent applications, both domestically and internationally, and have provided additional patent and other intellectual property-related legal advice on various occasions. We also have represented venture creations and commercial entities that originate at MIT and/or are the beneficiaries of technologies invented by MIT’s prestigious faculty. 

Assisting a group specializing in the manufacture of small and large series of pieces of jewelery established in the prestigious Place Vendôme in the deployment of their international operations - the establishment of commercial agent, trademark registrations and dress patents in 40 countries.

Assisting a French startup specialized in interior design catering to the Chinese market, including the creation of the corporate structure, the protection of the intangible assets of the client, including trademark protection in Europe and China as well as the implementation of the contractual relationships with suppliers and customers, through non-disclosure agreement, service provision and IP right assignments on a day-to-day basis.

Assisted a leading highway infrastructure operator on large range of issues related to new mobility trends, including day-to-day assistance on transactional aspects of highly innovative projects pertaining to electric vehicles, connected car and driverless transportation, research and development, consortiums with public and private stakeholders of the transportation sectors, within various European initiatives (C-ROADS, SCOOP, CINC) as well as the drafting and negotiation of a partnership agreement with a car manufacturer in order to experiment in real traffic conditions autonomous driving, including the crossing of toll booth and management of roadworks and accidents.

Advising Renzo Piano Building Workshop (RPBW), the Paris-based architecture firm of the iconic Italian architect Mr. Renzo Piano, on global IP strategy, portfolio management, and licensing. 

Counsel for Tateossian globally. We manage the company’s entire global IP portfolio of trademarks and designs, advising on enforcement, litigation and licensing issues, and being primary outside counsel on marketing and advertising issues, e-commerce, contracts, collaborations, and other day-to-day legal matters.

Manage the trademarks with an eye toward ensuring the safety of patients and brand awareness around the world. We manage the global trademark portfolio of more than 1200 trademarks; manages watch program and enforcement efforts globally; and manages domain names. 

Represented Qatar Foundation in advising on joint ownership and enforcement of IP.

Advising on Gambro’s nonlitigation patent work, including prosecution of hundreds of patents and applications involving various health care-related technologies, including medical devices and methods of treatment.

Represent LSIS in their US IP prosecution as well as European IP prosecution work. 

Counsel Zillow Group on a variety of IP issues ranging from agreements to trade secret matters.
Act as the primary U.S. trademark and copyright counsel for the Abercrombie & Fitch and Hollister brands. We provide daily clearance and counseling relating to use and registration of new marks, phrases, and designs to be used by the brands.
Advising Image Metrics on a groundbreaking project with L’Oréal to digitally transform the cosmetics and make-up product offerings, including the development and launch of Makeup Genius, the world’s first virtual makeup app which enabled users to try on various “looks” and products in virtual reality.

Advised on the purchase of night vision business and Due Diligence for purchase of Harris night vision business.

Advising several Australian sporting Teams by handling numerous domain names and online issues. Our team has advised on various trademark registrations and ongoing brand portfolio management, including advising on protection of trademarks and playing uniform designs associated with Australian Football League. Cricket Australia, National Basketball League, FIFA, City Football, and Australian Grand Prix. We also work with the newly formed national women’s league, AFLW, and new short game format, AFLX.

Advising Carnegie Mellon University on Patent enforcement litigation, worldwide patent prosecution, and strategic licensing and counseling, for almost two decades.

Advised Coty on their global collaboration and licensing project for the upcoming Kingsman film.  Our work included trademark clearance and risks management issues in over 50 countries and advising on the license and marketing agreements with Marv Films and acclaimed film director Matthew Vaughn.

Manage the international IP portfolio of Cricket Australia, which includes trademarks relating to the men's and women's Australian national test cricket teams, the Ashes test series, the men's and women's professional domestic Twenty20 leagues, Big Bash League (“BBL”), and Women's Big Bash League (“WBBL”), respectively, the names and logos of BBL clubs and Cricket Australia's various new media, social media, and children's education programs. 

Manage the large trademark portfolio for Cynosure, a manufacturer and distributor of best-in-class energy-based aesthetic and medical treatment systems, including a diverse range of leading treatment applications for hair removal, skin revitalization, scar reduction, gynecological health, and body contouring products and services provided worldwide.

Handling all of D5ai’s patent work, including prosecution of its worldwide patent portfolio since its inception. We also advise D5ai on strategic patent counseling and patent licensing. Additionally, we provide EPO patent procurement work.  

Advised DiaSys Diagnostic Systems GmbH, a specialist in the development and manufacturing of diagnostic system solutions, on development, cooperation and licensing agreements.

Managing virtually all of E.T. Browne Drug Co., inc. intellectual property, including manage 1,000 global trademarks including its leading PALMER’S® COCOA BUTTER FORMULA® brand, global trademark clearance and enforcement, and advise on its major agreements and licenses.

Advise  iconic Italian fashion accessories house on international brand and design protection and clearance matters.  We are the only IP firm that advises this client on the full clearance of all new products and initiatives, and have secured our role advising them over the last 4 years ahead of leading firms in Italy and Europe, notwithstanding the client’s location in Milan. We advise on clearance and IP strategy for new product collections and acquisition of IP rights for limited edition products, collaborations and licensing projects.  We have also assisted the client with design infringement actions against a number of high street retailers in the UK, as well as defending claims received by third parties in the UK, Europe, Japan, China and Australia.

Handling all of Koss Corporation’s patent work, including prosecution of its worldwide patent portfolio, infringement work, and licensing, for over a decade.  

Manage the worldwide trademark portfolio and enforcement efforts of Kudelski Group, its affiliates and its subsidiaries. Our work includes clearance, prosecution, maintenance and enforcement work across six continents.

Preferred provider of patent procurement, patent portfolio management, and patent counseling services for Murata.

Provide patent counseling including patent procurement and portfolio management services for Murata Manufacturing Co., Ltd. based in Kyoto and in support of their leading global business in the design, manufacture, and supply of advanced electronic materials, electronic components, and multifunctional, high-density modules, having wide-ranging applications including mobile phones, home, automotive, energy management, and health care.  This has included managing/handling a large-scale US patent portfolio of hundreds of US patents directed to battery technology for over five years.

Counsel for Nestlé’ for U.S. patent matters. This has included filing and prosecuting thousands of U.S. patent applications on behalf of Nestlé. In addition, the firm assists Nestlé on strategic patent counseling, including providing assistance with respect to acquisitions.

Working with Norwich University Applied Research Institutes in various IP counseling and licensing matters, as well as the preparation and handling of trademarks.  

Provided patent counseling including patent procurement and portfolio management services for Japan Display Inc. based in Tokyo and in support of their leading global manufacturing business of advanced small and medium sized display panels, which provide high resolution, low-power consumption, and thin displays for smartphones, tablets, automotive electronics, digital cameras, medical equipment, and other electronic devices. This has included managing/handling a large scale US patent portfolio of over a thousand US patents directed to display technology for about ten years to date.

Advise Sanrio on IP clearance and pre-publication issues for the iconic Mr Men and Little Miss franchise, as well as other Sanrio assets globally including Hello Kitty. We have advised the client on IP clearance issues in relation to a number of new projects including collaborations. We also advise on review and clearance of new publications, promotions and product releases, including clearing third party rights.

Represent Sony for almost 20 years. Our Sony representation has included a wide range of patent counseling services, including handling large-scale patent portfolios from early developmental R&D stage to product launch and ongoing developmental efforts.

Provide strategic IP counseling to St. Jude Medical relating to cardiac health technologies with a focus on diagnostic imaging and intravascular data collection.  Develop patent portfolio relating to intravascular imaging and diagnostic techniques.  Provide guidance relating to product development and all aspects of product roadmap.  Relationship with client and work has been active over last 14 years.

Manage the substantial global trademark portfolio for Valve Corporation. We have managed the evolution of the Valve product and service mix toward more gaming hardware, including the hardware and software used in virtual reality application.

Advise the businesses of the late Dame Zaha Hadid on IP strategy, licensing and related matters. We have been appointed to advise on a range of cross-border IP issues in connection with complex IP ownership, licensing and IP structuring issues, including the ownership and protection of the iconic ZAHA HADID brand.

Provide trademark and copyright counseling for Zulily and manage their global portfolio of Zulily-related marks.  In addition to clearance and prosecution work, we represent Zulily in both offensive and defensive disputes relating to trademarks and counsel the company regarding fair use.

Manage all of the trademarks owned by TripAdvisor and its various subsidiaries, including Smarter Travel, FlipKey, and The Independent Traveller. Our work includes clearance, prosecution, maintenance, and enforcement around the world.

Manage ASTRO’s trademark portfolio; we assist them with a wide variety of commercial contracts and licensing; and we also police and enforce their trademarks in the marketplace.

Advised DKB, a German online bank, in relation to the management of their trademark portfolio.

Assisted MAGI, the exclusive licensee of Kookai in Australia, in its acquisition in the summer 2017 of the Kookai business from previous French owner, Vivarte. Our assistance included IP due diligence and negotiation of the IP assets clearance, and drafting of a licensing agreement between French and Australian entities. Since the acquisition, we have also been retained to manage the global portfolio of Kookai IP assets, including the registration of new clothing models and trademarks, as well as their enforcement, in particular through the implementation of customs surveillance across Europe (EU-wide and locally at the member states levels), and coordinating with the new management team appointed by MAGI in France.

Manage the trademark, copyright and patent portfolios for Stratus Technologies, the manufacturer and distributor of advanced fault-tolerant computers and control systems, especially for mission critical industries such as banks and other financial institutions, emergency response centres, police and fire departments, hospitals, government agencies, stock exchanges, and Internet providers

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