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Intellectual Property

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Baker Donelson's Intellectual Property Group is responsible for the protection of inventions and other forms of intellectual property for clients ranging from start-ups to Fortune 500 companies.

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Protecting What Makes Your Wine Special – Legally! April 5, 2016

Featured Experience

Negotiated acquisition of intellectual property ownership rights for biotechnology materials to be developed and commercialized by Fortune 500 life sciences company.

Assisted both seller and buyer in intellectual property aspects of acquisition of $200 million OTC pharmaceutical company by $600 million OTC pharmaceutical and household brand products company. Continue to represent combined intellectual property portfolio.

Global intellectual property counsel for Prestige Brands Holdings, Inc., marketer of famous brands including Allerest®, Clear Eyes®, Chloraseptic®, Luden's® and Monistat®.

Practice Overview

Overview

The Intellectual Property Group is responsible for the protection of inventions and other forms of intellectual property for clients ranging from start-ups to Fortune 500 companies. We obtain, defend and enforce patents, trademarks and copyrights in the United States and throughout the world. The Firm has developed relationships with intellectual property lawyers in many major foreign countries, and has facilitated applications for patents and registration of trademarks in more than 80 foreign jurisdictions.

Our attorneys have a reputation for a practical, common sense business approach to client concerns, coupled with sophistication in a wide range of technical areas. As an IP boutique housed in a full-service business law firm, we manage your assets in the context of your comprehensive business and competition strategy. We offer strategy for resolving difficult freedom-to-operate obstacles, negotiating licensing and material transfer agreements, and utilizing effectively existing intellectual property portfolios to strengthen clients' competitive positions.

Representative Matters
  • Assisted a large pharmaceutical company in combating extensive, targeted international registrations of the client's trademarks by a foreign corporation, successfully opposing and/or obtaining assignments of all of the pirate marks, totaling roughly 100.

  • Acts as outside intellectual property counsel to and has extensive experience advising clients in the garment, fashion and wearable technology industries.

  • Manage and enforce large international trademark portfolios for celebrities and clients in the fashion industry.

  • Advised recording artists and songwriters regarding entertainment/music industry agreements and protection of intellectual property, including negotiation of publishing agreements, 360 deals, drafting and negotiating synchronization licenses for use of songs in films, drafting recording agreements for Grammy® Award winning artists and counseling artists on obtaining commercial success.

  • Patent counsel to international machinery and replacement parts manufacturer.

  • Patent counsel to independent engineering firm designing trusses for space-based applications.

  • Outside IP counsel for multiple consumer good manufacturers and resellers.

  • Outside intellectual property and technology counsel to software providers in the diagnostic and orthopedic industries.

  • Negotiated acquisition of intellectual property ownership rights for biotechnology materials to be developed and commercialized by Fortune 500 life sciences company.

  • Assisted both seller and buyer in intellectual property aspects of acquisition of $200 million OTC pharmaceutical company by $600 million OTC pharmaceutical and household brand products company. Continue to represent combined intellectual property portfolio.

  • Represented a software company in a breach of contract dispute with a state agency, resolving intellectual property issues arising from the contract.

  • Global intellectual property counsel for Prestige Brands Holdings, Inc., marketer of famous brands including Allerest®, Clear Eyes®, Chloraseptic®, Luden's® and Monistat®.

  • Regularly enforces copyrights through the Digital Millennium Copyright Act (DMCA) for numerous clients.

  • Outside intellectual property counsel to several microbreweries in Memphis.

  • IP counsel for the enforcement of large international trademark portfolios for multiple clients in the fashion and athletic wear industries.

  • Represented petitioner in Covered Business Method (CBM) proceeding before PTAB.

  • Secured the transfer of numerous domain names to a well-known television network, a provider of travel information services and a well-known chain of restaurants under the Uniform Domain Name Dispute Resolution Policy (UDRP)

  • Negotiated copyright licenses in the contexts of book publishing, music sampling and software

  • Represented a commercial and residential renewable energy company in trademark, copyright, contract and collection matters.

  • Patent counsel to national financial services company.

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