Jennings Strouss & Salmon has one of the leading intellectual property practices in Arizona. Our firm represents clients concerning a full range of intellectual property matters, including the protection and use of copyrights, trademarks and trade secrets, licensing, joint technology development and litigation. We assist our clients concerning the acquisition, protection, and exploitation of some of their most valuable assets (such as their brands, creative works, and technology) that are often at the core of the client's worth. Our clients include private sector companies, universities and research institutes.
Our intellectual property services include the domestic and international aspects of the following:
- the creation and protection of intellectual property rights, including registration of trademarks and copyrights
- the development and maintenance of those intellectual property rights
- exploitation of those rights through licensing, joint venture, sponsored research, collaboration, technology transfer and other agreements
- enforcement and defense of these rights through intellectual property litigation
Our attorneys routinely conduct intellectual property audits of their clients to assess a client's intellectual property assets, provide counseling on strategically developing and managing its intellectual property portfolio, as well as proactively advising clients on how to help protect themselves from potential third party objections or infringement actions. Further, as a result of our extensive experience handling international intellectual property matters, we have developed a worldwide network of the best trademark, patent, and corporate lawyers in foreign jurisdictions, who regularly assist us in all aspects of intellectual property work, as well as in related corporate matters.
In transactional matters, we have extensive experience representing both private companies as well as universities/research institutes. Our familiarity with both sides of these transactions enables our attorneys to understand the cultural nuances involved with transactions and allows us to more efficiently and effectively find the appropriate legal solutions.
IP - Detailed Practice Areas
Trademarks
Our attorneys have extensive experience in the selection, adoption and protection of trademarks and corporate names, and in the management of large trademark portfolios, both in the U.S. and worldwide. Our attorneys evaluate potential trademarks and advise on registerability and protectability. Our attorneys file and prosecute domestic and treaty-based trademark applications, and work with foreign counsel to prosecute national applications and maintain registrations in over one hundred countries around the world. In addition, our attorneys also have considerable expertise in the areas of trademark licensing and merchandising, as well as the legal issues involved with advertising, branding and marketing.
Copyrights
Our attorneys assist clients in the filing of applications for copyright registration across the entire spectrum of copyrightable works. We also help clients with the procurement, transfer and license of copyright works and guide them in the complicated ownership issues that arise when employees, independent contractors, and joint venturers contribute to the creation of copyright-protected materials.
When necessary, we have litigated claims of copyright infringement in the federal courts, including claims related to the unauthorized use of software, Internet content, music, news articles, sculptural works, and other media. We also help our clients ascertain the permissible quantity and quality of material that may be used without the permission of the copyright owner under the "fair use" doctrine.
Internet & Domain Name Issues
Conducting business on the Internet puts new light on familiar legal issues and raises a whole new series of legal challenges that can change as fast as the technology itself. Our attorneys have experience in the areas of web site development agreements; click-wrap agreements; co-branding agreements; computer hardware and software development and licensing agreements; copyright notices under the Digital Millennium Copyright Act; domain name selection, registration and disputes; electronic document retention and litigation hold policies; online sweepstakes, promotions and advertising; outsourcing agreements; and Web site terms of use, privacy policies, and message board rules and regulations.
Intellectual Property Litigation
Jennings Strouss has a proven track record in handling all forms of intellectual property disputes, both in the US and abroad. Our lawyers have represented clients in a wide range of trademark, copyright and trade secret enforcement and infringement matters, including litigation in state and federal courts, and proceedings before the Trademark Trial and Appeal Board.
We have considerable arbitration, mediation and trial experience at Jennings Strouss, which often makes a big difference in the resolution of disputes. We have successfully obtained injunctive relief against parties who have violated the intellectual property rights of our clients, and have also fought off third party attempts to obtain such relief against our clients.
We also represent clients in international trademark and copyright matters, including directing multi-country litigation. Cases in the United States are handled directly, while international cases are handled through a network of foreign counsel, selected by us, whom we oversee and direct in various administrative proceedings and in litigation.
Representative Experience
Jennings Strouss has an exceptionally well balanced and experienced intellectual property practice. Jennings Strouss has both senior lawyers who can do higher level work and supervise younger lawyers, and talented associates with experience in intellectual property. The following are some representative engagements of our attorneys:
Trademarks and Copyrights
- Represented many of Arizona’s leading companies in international trademark and copyright matters, including multi-country litigation.
- Trademark protection of famous financial and business marks.
- Trademark protection of high-profile entertainment properties. Representation includes responsibility for the licensing agreements and other legal issues pertaining to the merchandising of most of the marks.
- Representation of the trademark and merchandising needs of world famous celebrities, both living and deceased.
Intellectual Property Litigation
- Numerous representations of clients who needed to respond to and negotiate with various copyright rights organizations (such as the Business Software Alliance, ASCAP and BMI, among others), who had alleged that our clients had infringed intellectual property rights of members in those organizations.
- Representation of numerous clients before the Trademark Trial and Appeal Board in opposition and cancellation proceedings.
- Successfully obtained injunctive relief against trademark and copyright infringers in Federal Court in numerous cases, and have often fought off third- party attempts to obtain such relief.
- Representation of major commercial and residential developers and architectural firms in various copyright infringement and trademark infringement matters.
- Defending a well-known commercial real estate developer in a trademark infringement action involving its principal mark.
We offer multifaceted resources focused on maximizing the value of intellectual property to our client’s business and strive for effective productivity by training client personnel to assume responsibility for asset management. Where needed, we can call on the skills of our practitioners in corporate, securities, real estate, finance, employment and tax law to achieve business goals.
