Copyright and Trademark Counseling and Prosecution

Copyright

We offer comprehensive copyright advice in counseling, legislative, and prosecution matters, and have unusual depth and experience in internet anti-piracy and DMCA liability issues, which allows us to advise copyright holders on their broader anti-piracy programs as well as more targeted enforcement efforts, working in conjunction with our own in-house internet monitoring team.

Internet Investigations, Enforcement, and Litigation

Covington’s internet investigations team, consisting of highly skilled internet investigators and industry leading lawyers with decades-long experience, designs and executes customized online and offline anti-piracy and brand protection programs for clients. We support organizations in the software, publishing, eLearning, sports, media, branded goods and pharmaceutical industries, among others. We offer:

• Customized programs adapted to suit the needs of each client, from one-off projects to global notice and takedown campaigns.
• Up-to-the-minute online reporting, including analysis of results and trends.
• Custom built, market-leading crawler systems and online forensic tools.
• Ability to handle law enforcement referrals, UDRP complaints and litigation.
• Presence in three continents and global network of experienced counsel and contacts.
• Global “notice and take-down” programs with a compliance rate of over 90%.

Piracy, Counterfeiting & Gray Market

We pioneered the concept of a coordinated global approach to protecting our clients’ intellectual property rights almost 20 years ago. We have implemented programs for the enforcement and enhancement of IP rights in some 60 countries worldwide, and have built an extensive international network of local counsel, investigators and government contacts to accomplish our clients’ goals.

Global Internet enforcement is a centerpiece of Covington’s anti-piracy practice. Our Internet enforcement group, comprised of in-house investigators, seasoned attorneys and state-of-the-art software tools, monitors the web daily to identify illicit activity in all parts of the world and across all protocols; conducts global, high-volume notice and take-down programs with an impressive rate of success; and coordinates civil and criminal actions against online infringers.

Trademark

Our dynamic, global trademark practice has over sixty years of experience, and has designed and supervised worldwide registration, maintenance, opposition, cancellation, and policing programs for our clients in foreign countries all over the world, with assistance from our network of foreign trademark counsel in over 175 countries. We provide clients with advice on a wide variety of trademark issues, litigate trademark cases in courts throughout the country, prosecute applications through the United States Patent and Trademark Office, and represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

We have advised clients, and represented them in litigation, concerning many of the cutting-edge issues spawned by the Internet, including cybersquatting, domain name monetization, phishing, pharming, keyword use of trademarks to trigger banner and pop-up- advertising, counterfeiting, and abusive use of trademarks in metatags. We have extensive experience with the trademark aspects of corporate transactions and agreements, including due diligence review of IP portfolios, perfecting security interests in trademarks, and negotiating and drafting trademark licenses, assignments and coexistence agreements.

Trademark Portfolio Management

We have prosecuted thousands of trademark applications for registration in the United States and in foreign countries. We inform clients promptly of all developments regarding an application and prepare detailed monthly, quarterly, or as-needed trademark status reports, which we generate electronically from our computerized trademark database and customize to meet our client’s needs. These status reports are a useful and cost-effective tool for monitoring developments in each trademark portfolio. We also conduct periodic strategic reviews of our clients’ trademark portfolios to ensure that the portfolio's depth and breadth is consistent with the client's brand strategy and business plans.

Although we tailor each trademark management program to meet our client’s specific needs, a comprehensive management strategy typically entails:

• a global inventory of trademark registrations and applications;
• an assessment of potential gaps or weaknesses in the portfolio;
• negotiation and execution of assignments and licenses, in consultation with Covington’s tax experts; and
• creation of a centralized trademark database to maintain and track all information associated with the trademark portfolio, including important deadlines.

Over the years, Covington has built a global network of trusted local trademark experts, who assist us in researching national trademark registries, registering foreign marks and recording assignments. Our trademark management database is specifically structured to track and manage all filing, registration, renewal, and other deadlines. To reduce the client’s overall costs, Covington employs specialist trademark paralegals to perform much of the day-to-day work associated with trademark maintenance.

Trademark Transaction Experience

Our trademark lawyers have extensive experience in negotiating and drafting trademark licenses, assignments, coexistence and consent agreements and other complex commercial IP agreements for numerous clients, including AstraZeneca, Boehringer Ingelheim, Bacardi, Borgata, Dunlap Slazenger, Goodyear, King Pharmaceutical, Major League Baseball, NASCAR, National Geographic Society, the National Football League, the National Hockey League, Public Broadcasting Service, UCB and Verizon. As needed, we provide factual and legal analyses of relevant business considerations, including potential liability claims against the licensor, antitrust implications, and the like.

Our trademark lawyers also have been integrally involved in domestic and international corporate transactions involving trademarks and other intellectual property assets, including corporate acquisitions and restructurings. We are frequently called upon to conduct due diligence review of intellectual property portfolios, to perfect security interests in trademarks, and to prepare, supervise and record trademark assignments throughout the world. Our US, European and China offices have worked seamlessly together on complex international acquisitions with significant trademark elements.