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REPRESENTATIVE EXPERIENCE

IP Procurement and Portfolio Management

Advised Belkin International on global brand protection, portfolio management, anti-counterfeiting, enforcement, and compliance projects.

Handled virtually all of Baxter Healthcare’s U.S. nonlitigation patent work, including prosecution of thousands of patents and applications for well over a decade. Advised Baxter on strategic patent counseling, patent licensing and negotiations, and freedom-to-operate and enforcement matters. Provided European Patent Office and Australian counseling (post-grant and strategic enforcement work).

Managed Thomas Pink’s entire global IP portfolio of trademarks and designs. Advised on enforcement, litigation, and licensing issues. Served as primary outside counsel on marketing and advertising issues, e-commerce, contracts, collaborations, and other day-to-day legal matters. Advised on the company’s global brand relaunch, which was announced in November 2018 under the PINK SHIRTMAKER brand, as well as a number of domain name disputes in the United States and European Union.

Developed a valuable global patent portfolio to protect Proteus Digital Health’s technology. Regularly advised Proteus on which technical aspects of the ingestible sensor platform are suitable for patent protection or trade secret protection during development of the global patent portfolio. Advised on the selection of the optimum global patent strategies, including selecting which jurisdiction each patent application should be filed and maintained.

Advised BMI Group on their global IP management, involving over 80 countries. Advised on strategy, clearance, and trademark prosecution for the BMI brand and various new product and service brands. Handled the worldwide filings for over 250 pending trademark applications. Advised on a number of actions related to the rebranding, including cancellation actions at the European Union Intellectual Property Office and the UK Intellectual Property Office in relation to marks held by third parties on the grounds of nonuse.

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

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

Assisted a group specializing in the manufacture of a series of small and large pieces of jewelry 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. 

Assisted a French startup specializing in interior design catering to the Chinese market, including the creation of the corporate structure and the protection of the intangible assets of the client. Advised on trademark protection in China and Europea, as well as the implementation of the contractual relationships with suppliers and customers, through nondisclosure agreements, service provisions, and IP rights assignments on a day-to-day basis.

Assisted a leading highway infrastructure operator on a 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, and consortiums with public and private stakeholders of the transportation sectors within various European initiatives (C-ROADS, SCOOP, CINC). Drafted and negotiated a partnership agreement with a car manufacturer in order to test autonomous driving in real traffic conditions, including the crossing of toll booths and management of roadwork and accidents.

Advised Renzo Piano Building Workshop on its intellectual property licensing and protection programs for various international projects, including the Whitney Museum of American Art, the Shard, the Academy Museum of Motion Pictures, Centre Pompidou, Centro Botìn, the Paris Courthouse, and the Pathé Paris Cineplex.

Managed Tateossian’s entire global IP portfolio of trademarks and designs. Advised on enforcement, litigation, and licensing issues, as well as served as primary outside counsel on marketing and advertising issues, e-commerce, contracts, collaborations, and other day-to-day legal matters.

Managed trademarks with an eye toward ensuring the safety of patients and brand awareness around the world. Managed the global trademark portfolio of more than 1,200 trademarks, watch programs and enforcement efforts globally, and domain names.

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

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

Represented LSIS in their European and U.S. IP prosecution work.
Counseled Zillow Group on a variety of IP issues ranging from agreements to trade secret matters.
Acted as the primary U.S. trademark and copyright counsel for the Abercrombie & Fitch and Hollister brands. Provided daily clearance and counseling relating to use and registration of new marks, phrases, and designs that the brands were going to use.
Advised Image Metrics on a groundbreaking project with L’Oréal to digitally transform the cosmetics and makeup product offerings, including the development and launch of Makeup Genius, the world’s first virtual makeup app, which enables users to try on various “looks” and products in virtual reality.

Advised on the purchase of a night vision business and performed due diligence for the purchase of a Harris night vision business.

Advised several Australian sports teams by handling numerous domain names and online issues. Advised on various trademark registrations and brand portfolio management, including protection of trademarks and playing uniform designs associated with the Australian Football League, Cricket Australia, the National Basketball League, FIFA, City Football, Australian Grand Prix, the newly formed national women’s league, AFLW, and new short-game format, AFLX.

Advised Carnegie Mellon University on patent enforcement litigation, worldwide patent prosecution, and strategic licensing and counseling.

Advised Coty on their global collaboration and licensing project for the “Kingsman” film, which included trademark clearance and risk management issues in over 50 countries. Advised on the license and marketing agreements with Marv Films and acclaimed film director Matthew Vaughn. 

Managed 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), Women’s Big Bash League, as well as the names and logos of BBL clubs and Cricket Australia’s various new media, social media, and children’s education programs.

Managed 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.

Handled all of D5ai’s patent work, including prosecution of its worldwide patent portfolio since its inception. Advised D5ai on strategic patent counseling and patent licensing and provided European Patent Office 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.

Managed virtually all of E.T. Browne Drug Co., Inc.’s IP, including 1,000 global trademarks, the leading PALMER’S® COCOA BUTTER FORMULA® brand, global trademark clearance and enforcement, and major agreements and licenses.

Advised iconic Italian fashion accessories house on international brand and design protection and clearance matters. Secured our role as the only law IP firm advising them, ahead of leading firms in Europe and Italy, notwithstanding the client’s location in Milan. Advised on clearance and IP strategy for new product collections and acquisition of IP rights for limited-edition products, collaborations, and licensing projects. Assisted the client with design infringement actions against a number of high-street retailers in the United Kingdom, as well as defending claims received by third parties in Australia, China, Europe, Japan, and the United Kingdom.

Handled all of Koss Corporation’s patent work, including prosecution of its worldwide patent portfolio, infringement work, and licensing.

Managed the worldwide trademark portfolio and enforcement efforts of Kudelski Group, its affiliates, and its subsidiaries, includes clearance, prosecution, maintenance, and enforcement work across six continents. 
Preferred provider of patent procurement, patent portfolio management, and patent counseling services for Murata.

Provided patent counseling, including patent procurement and portfolio management services, for Murata Manufacturing Co., Ltd. based in Kyoto in support of their leading global business in the design, manufacture, and supply of advanced electronic materials, electronic components, and multifunctional, high-density modules that have wide-ranging applications, including mobile phones, home, automotive, energy management, and health care. Managed and handled a large-scale U.S. patent portfolio of hundreds of U.S. patents directed to battery technology.

Filed and prosecuted thousands of U.S. patent applications on behalf of Nestlé. Assisted with strategic patent counseling, including providing assistance with respect to acquisitions.

Worked 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 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 included managing and handling a large-scale U.S. patent portfolio of over a thousand U.S. patents directed to display technology.

Advised 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. Advised the client on IP clearance issues in relation to a number of new projects and collaborations. Advised on review and clearance of new publications, promotions, and product releases, including clearing third-party rights.

Represented Sony on 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.

Provided strategic IP counseling to St. Jude Medical relating to cardiac health technologies, with a focus on diagnostic imaging and intravascular data collection. Developed patent portfolios relating to intravascular imaging and diagnostic techniques. Provided guidance relating to product development and all aspects of a product road map.

Managed the substantial global trademark portfolio for Valve Corporation. Helped assist the evolution of the Valve product and service mix toward more gaming hardware, including the hardware and software used in virtual reality applications.

Advised the businesses of the late Dame Zaha Hadid on IP strategy, licensing, and related matters. 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.

Provided trademark and copyright counseling for Zulily and managed their global portfolio of Zulily-related marks. Represented Zulily in both offensive and defensive disputes relating to trademarks and counseled the company regarding fair use.

Managed all of the trademarks owned by TripAdvisor and its various subsidiaries, including Smarter Travel, FlipKey, and The Independent Traveller, providing advice on clearance, prosecution, maintenance, and enforcement around the world. 

Managed ASTRO’s trademark portfolio, assisting with a wide variety of commercial contracts and licensing, as well as policing and enforcing their trademarks in the marketplace.

Advised DKB, a German online bank, on the management of their trademark portfolio.

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

Managed 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 centers, police and fire departments, hospitals, government agencies, stock exchanges, and Internet providers.

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