For many companies, intellectual property is their greatest asset — sometimes the cornerstone of a brand’s goodwill, sometimes the technical specifications that comprise a product’s competitive advantage. At Bell Nunnally, we work closely with clients to help them identify, realize, monetize and protect these valuable resources through informed counseling and strategic enforcement and litigation.

Working closely with companies to protect their intellectual property (IP), whether it takes the form of patents, trademarks, copyrights or trade secrets, our attorneys prosecute IP applications with the United States Patent and Trademark Office (USPTO), as well as other domestic and foreign registries, including the World Intellectual Property Organization (WIPO). In matters ranging from securing a trade name and logo to helping a company manage a global portfolio, we have worked with all sizes of companies across a multitude of industries helping to protect technologies that include telecommunications, computer hardware, software, manufacturing, electronics, e-commerce, trade secrets and medical devices.

Bell Nunnally’s experienced intellectual property transactional attorneys ably help clients safeguard their intellectual assets and rights of fair competition, frequently drafting and enforcing agreements designed to secure their intellectual capital, such as joint development, co-existence, outsourcing, licensing, technology transfer, employment, confidentiality, trade secrets and nonsolicitation agreements, as well as covenants not to compete. We frequently assist clients with IP issues in the context of commercial contracts, mergers and acquisitions, (M&A) and financing transactions.

In addition, our attorneys are involved in protecting client brands through policing efforts, not only through demand letters to brick-and-mortar infringers, but also in cyberspace, including stopping internet scams and frauds, terminating unauthorized online auctions, counseling on First Amendment and fair use issues, and participating in domain name proceedings against cybersquatters pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). Our attorneys are also well versed in counseling on licensing and franchising issues.

Patents

With experience in the prosecution, licensing, acquisition and litigation aspects of protecting patents, we craft and implement overall strategies for protecting and exploiting new technologies. In the areas of patent prosecution and transactional activity, our services include:

  • Analyzing the patentability of new technology
  • Filing and prosecuting U.S. and foreign patent applications
  • Drafting and negotiating license agreements
  • Drafting and negotiating asset purchase and technology transfer agreements
  • Representing patent owners and third-party requestors in reexamination proceedings
  • Managing, developing and auditing patent portfolios
  • Due diligence and Freedom to Operate (FTO) opinions
  • Preparing and negotiating manufacturing research and development agreements

Our attorneys have extensive experience preparing and prosecuting patent applications involving complex, technical subject matters of all types.

Trademarks

Bell Nunnally attorneys regularly handle the registration of trademarks and service marks for our clients. We represent clients in trademark proceedings in the USPTO, such as oppositions, cancellations and appeals. We also assist clients with portfolios of marks overseas and routinely deal with trademark registrations in the European community and a host of other foreign jurisdictions.

Helping clients navigate each step in the process, we take a creative, problem-solving approach, from trademark selection through registration and renewal. Our attorneys assist with searching and clearing marks for adoption and use by our clients, filing and prosecuting applications before the USPTO and WIPO, and arguing appeals before the Trademark Trial and Appeals Board (TTAB).

In addition to trademark prosecution, we also counsel clients on strategies to maintain the validity and strength of their marks, advising in areas including infringement risks, combating infringement and dilution, supporting domain name registration and counseling clients regarding use of trademarks on the internet and in the metaverse. We have also represented a number of sports and entertainment industry clients in matters including, Name, Image & Likeness (NIL) deals; publishing contracts; copyrighting works and portfolios; licensing and branding agreements; and various other intellectual property transactions and disputes.

When an individual or company threatens a client’s intellectual property rights, we are experienced protecting and enforcing our clients’ rights against infringers, whether in courts across the country or in opposition and cancellation proceedings before the TTAB. We represent clients in matters including:

  • Trademark infringement
  • False advertising
  • Unfair competition
  • Dilution
  • Cybersquatting
  • Trade dress infringement

Copyrights

Bell Nunnally attorneys help clients protect and defend their copyrights through counseling, licensing and, if necessary, litigation. We help clients build upon and protect their copyright portfolios by identifying copyrightable material, such as software, training manuals and website content, and helping to secure their registration rights through applications filed with the U.S. Copyright Office. We offer advice in a variety of copyright-related areas, including:

  • Qualifying for copyright protection
  • Copyright infringement
  • Fair use
  • Obtaining permission to use a copyrighted work
  • Use and protection of copyrighted works in a variety of media

In addition, we vigorously protect our clients’ copyrights by preventing websites from making unauthorized use of copyrights through the Digital Millennium Copyright Act (DMCA) or initiating litigation for infringement in federal court.

Intellectual Property Litigation

When a client’s intellectual property rights are infringed or otherwise challenged, it can cause great harm to the value of the business or the rights of the individual. Some of these matters are bet-the-company disputes and others can damage a brand or market position.

We represent clients’ interests in government proceedings, such as trademark and service mark opposition and cancellation proceedings before the TTAB, and regularly advise clients on how to protect trademarks, copyrights and domain names from infringers, as well as how to avoid infringing the intellectual property rights of others.

Bell Nunnally’s intellectual property trial and appeal team vigorously defends our clients’ interest across a broad spectrum of disputes regarding:

  • Licensing
  • Patent infringement involving complex technologies
  • Copyright infringement
  • Gray market and counterfeit products, e-commerce and online marketplace takedowns, Digital Millennium Copyright Act (DMCA) actions
  • Misappropriation of trade secrets
  • False claims
  • Lanham Act claims
  • Unfair competition and business practices
  • Internet claims
  • Domain name disputes (domestic and international), including Uniform Dispute Resolution Proceedings (UDRP)
  • Cybersquatting
  • Internet security and website “hacker” issues,
  • Posting violations and liability issues related to chat rooms, bulletin boards, linking, framing and metatags
  • Data privacy and information rights
  • Trademark and trade dress infringement
  • Trademark dilution
  • Technology agreements
  • Trade secret misappropriation
  • Noncompetition agreements

Representative Experience

  • Represented the estate of a multi-platinum songwriter and performer in the multimillion-dollar sale of his music publishing catalog.
  • Represented international toy retailers with all intellectual property and corporate matters, including trademark estate management, license negotiations, co-promotion and co-branding agreements.
  • Counseled organizations and college athletes in Name, Image & Likeness (NIL) deals and related matters.
  • Represented a professional hockey team in a federal lawsuit against the owners of the team’s arena, in a case involving infringement of the team’s trademarks and image.
  • Represented national and international alcohol, food and beverage companies in advertising clearance, copyright and trademark management and licensing, promotions, sponsorships, endorsements and product placement matters.
  • Successfully represented a startup oilfield services company in a complex trade secrets and noncompete case brought by a competitor.
  • Represented an innovative virtual payment technology company in a series of lawsuits in multiple jurisdictions involving trade secrets, patent infringement, and Computer Fraud and Abuse Act (CFAA) claims.
  • Obtained summary judgment of non-infringement on behalf of an inmate telecommunications provider in litigation involving telephone equipment patents and upheld the summary judgment at the Federal Circuit.
  • Negotiated settlement on behalf of an inmate telecommunications provider following a five-week jury trial in a case involving client’s alleged wrongful termination of a patent license agreement involving 15 telecommunications equipment and software patents.
  • Negotiated settlement for a design patent holder against a multinational oil company in a declaratory judgment action brought to invalidate patents.
  • Obtained settlement after obtaining a temporary injunction preventing interference with customer contracts based on alleged infringement of identification verification software copyrights.
  • Secured an injunction requiring return of company domain name in ongoing litigation.
  • Obtained conveyance of a trademarked domain name and the trademark for national print media company.
  • Successfully defended a client in a jury trial in the Eastern District of Texas, obtaining a non-infringement verdict.
  • Obtained a no-fee dismissal with prejudice for a defendant in a trademark cancellation proceeding at the USPTO.
  • Secured the early dismissal of a patent infringement case filed against a shopping mall regarding a patent deemed to cover an ineligible subject matter relating to features on the mall’s website.
  • Negotiated a client’s co-existence agreement with a Major League Baseball team.
  • Negotiated multiple IT services contracts for a Fortune 100 company.
  • Won an arbitration award against a Fortune 500 company in a dispute over a patent license agreement.
  • Oversaw open-source software license compliance as part of several mergers and acquisitions, including in a client’s acquisition by a Fortune 10 company.
  • Assisted dozens of property management companies, including four of the largest in the U.S., with their music licenses.
  • Obtained no-fee dismissals in several copyright infringement suits filed against apartment communities.

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