Brendan Witherell is an associate in the Intellectual Property and Technology Group. He regularly counsels both public and privately held clients across multiple sectors in the areas of intellectual property, information technology, and advertising/marketing.
Mr. Witherell has experience drafting a wide range of complex commercial agreements. In particular, he regularly drafts technology license and implementation agreements in the health care sector; agreements for the development, protection, and monetization of intellectual property portfolios; software license agreements (including end user and enterprise license agreements using traditional, web-based download, software as a service (SaaS), and cloud computing licensing models); and service-level agreements for outsourcing, SaaS, and cloud computing license agreements. Mr. Witherell also has extensive experience representing clients in connection with financings and mergers and acquisitions, including conducting due diligence on intellectual property and material agreements and negotiating transactional and ancillary agreements and disclosure schedules.
Mr. Witherell also regularly counsels clients on their advertising and marketing activities. His work includes the review of print, television, radio, Internet, mobile, and new media advertising; sweepstakes/contests; trademarks; rights of publicity/privacy; and data protection/privacy. He also counsels clients on federal and state regulatory compliance issues, including the Federal Food, Drug and Cosmetic Act's labeling requirements and Federal Trade Commission regulations.
While in law school, Mr. Witherell was a member of the Executive Committee of the Western New England Law Review and a member of the International Space Law Moot Court team.
Mr. Witherell's 2007 publication "The Extraterritorial Application of the Lanham Act: The First Circuit Cuts the Fact from the Vanity Fair Test" received multiple honors and awards, including the Ladas Memorial Award from the International Trademark Association and selection as the winner of the Boston Patent Bar Association's annual writing competition.
Prior to joining the firm, Mr. Witherell served as a law clerk for the Honorable Joseph H. Pellegrino and the Honorable Socrates H. Mihalakos of the Connecticut Appellate Court.
Professional Associations
- American Bar Association
- Connecticut Bar Association
- International Trademark Association
Community Involvement
- Judy Dworin Performance Project, Board Member, March 2010
- ServCorps, Board Member, June 2010
Honors and Awards
- Finalist in the 2007 Robert C. Watson Writing Competition
- Winner of 2007 Boston Patent Bar Association writing competition
- International Trademark Association's 2007 Ladas Memorial Award
Experience
- Representation of Bain Capital Ventures in connection with its Series B Preferred Stock investment in Dynamics, Inc., a producer of next-generation interactive payment cards.
- Representation of Symphony Marketing Solutions, Inc., a company providing analytics and data management services in the retail, pharmaceutical, and consumer packaged goods industries, concerning acquisition by Genpact International, Inc., a business processes management company.
- Provided advice to a licensing company regarding compliance by third-party licensees with licensing terms and conditions applicable to their use of certain trademarks and intellectual property on food and beverage products.
- Drafted licensing agreements related to the use of valuable trademarks and intellectual property by a food and beverage industry company with over $75 million in annual sales.
Publications & Presentations
Articles
- "The Basics of Drug and Medical Device Naming," coauthored with Jacqueline P. Scheib (9/1/2011), published in INTA Bulletin
- "The Extraterritorial Application of the Lanham Act in an Expanding Global Economy" (2007), published in The Trademark Reporter, vol. 97, no. 5
- "HIPAA - A Guide to Health Care Privacy and Security Law Supplement #5" (11/2006), contributing author
- "The Extraterritorial Application of the Lanham Act: The First Circuit Cuts the Fat from the Vanity Fair Test" (2006), published in Western New England Law Review, vol. 29, issue 1
- "Honorable Herbert P. Wilkins Annual Appellate Year-in-Review, 2004-2005" (Winter 2005), contributing author
- "What you should know about open source software," coauthored with Jacqueline Scheib (11/2009), published in New England In-House
Presentations
- "The Expanding Scope of Trademarks" (12/2006) presented at the Western New England Law Review 2006 Student Note Presentations
News
9.19.11, Article by IP and Technology Attorneys Published in International Trademark Association Journal
5.06.10, Robinson & Cole Attorney Elected to Board of ServCorps
2.10.10, Robinson & Cole Attorneys Publish Article on Open Source Software in New England In-House