Practice Group Chair
Jeffrey Gersh

Our firm attorneys have more than 30 years of experience in counseling clients on the creation of brand identification, registration and procurement of brands and creative content, as well as the litigation of disputed matters involving trademarks, copyrights, unfair competition, domain names, websites, rights of publicity and related claims.

Brand Development

Our firm attorneys are uniquely positioned to assist clients in the development of their brand strategies – from start-ups to established marketers. Our attorneys have worked in non-legal positions, such as product brand management, sales, and advertising, and work with clients in the development of business plans for the establishment, marketing and growth of their intellectual property assets. Our attorneys and the support staff are prepared to conduct strategic audits of existing brands as a precursor to any IP asset acquisition or transfer. In addition, we work closely with outside experts in the areas of valuation as well as tax-driven structuring on a domestic and international basis.

Content Protection

For those in the “Creative Community” content has always been viewed as king. Copyright protection is a right provided for in the U.S. Constitution. Our attorneys and support staff will work with clients at various stages of the creative process to insure that their creative output is protected. We work with a diverse community from advertisers, video producers, and photographers to musicians, actors, writers, and fine artists. In addition, we work closely with our clients to “vet” creative works to determine that they do not infringe upon the work of others. The Internet has created an enormous marketplace for content and for those pirates who would seek to infringe upon the rights of the creators. We develop protection programs including monitoring of the Internet, notice and take-down programs to try to control the amount of content piracy that our clients find on the Internet. The practice group also represents the full range of clients in copyright litigation matters in the federal courts.

Litigation

Our firm represents clients in the courts throughout California and across the United States. Our attorneys have years of experience in all aspects of intellectual property litigation from development of litigation strategy, discovery planning, creation of pleadings through to the conducting of trials. Our litigation clients have represented diverse economic and creative interests from Fortune 500 companies to individual artists. Litigation matters have included claims of trademark infringement, copyright infringement, counterfeiting and piracy, trade dress infringement, unfair competition,  violations of rights of publicity and privacy, licensing and merchandising disputes, domain name infringement, web site infringement and other Internet-related matters, breach of contract, commercial disputes, business disparagement, business torts, idea submission, and libel and slander claims.

Registration

Our firm provides its clients with a complete range of registration services for the protection of their trademarks in the United States and around the world. Our practice involves not only the development of clearance strategies, but legal opinions with regard to availability of trademarks for purposes of registration and use. Our lawyers and trademark paralegals work with our clients to file appropriate applications for trademark protection at the United States Patent & Trademark Office as well as registrations in countries throughout the world.  We also work with our clients to register their creative works with the U.S. Copyright Office as well as with various guilds and other government agencies where appropriate. With respect to patent registrations, our firm works with several patent firms who have the expertise in the particular fields of invention, from mechanical to bio-tech, to be certain that our clients’ novel works are protected.

Among the services offered by Stubbs Alderton & Markiles, LLP are:

  • Counseling with respect to the selection and clearance of trademarks, including assignments of potentially conflicting trademarks.  For example, our attorneys worked with a major cable television channel in the selection of the name for its new fashion and home-lifestyle cable channel.
  • Counseling with respect to appropriate searching strategies.  For example, often clients will select a number of possible marks for use in connection with their business. We often assist clients in determining the most cost-effective way of searching for conflicts and clearing the marks whether it be for several new film and entertainment companies or an air cargo carrier. We utilize both in-house generated on-line searches as a quick preliminary screening mechanism as well as outside professional vendors for more comprehensive searches.
  • Preparing and filing applications to register trademarks with the United States Patent & Trademark Office, as well as state authorities, where appropriate.  For example, our attorneys and trained trademark paralegals will engage in the filing of a variety of trademarks, design marks and logos for goods in services in more than 45 International Classifications before the United States Patent and Trademark Office. Our firm also tracks the applications through the registration and beyond through the use of an in-house trademark database.
  • Directing a network of Stubbs Alderton’s foreign associates in preparing and filing applications to register trademarks worldwide.  Our seasoned attorneys have developed working relationships with hundreds of foreign trademark lawyers who assist our clients in obtaining protection in hundreds of countries and territories. As global trademark registration programs require substantial resources to establish, we work with our clients to prioritize those foreign jurisdictions with respect to business activity, future market growth, and likelihood of infringing activity.

Representing clients in inter-partes proceedings before the United States Trademark Trial and Appeal Board. Our attorneys have extensive experience representing clients whose registrations are being opposed or who are opposing other applications for trademarks likely to cause confusion to the consuming public. We also represent both Petitioners and Registrants in cancellation proceedings before the same federal body.

Enforcement

Our attorneys have been leaders in conceiving and implementing programs to protect client intellectual property rights. They are nationally recognized for their particular efforts in battling counterfeiting and piracy in the United States and overseas. We have implemented these important enforcement programs, domestically, internationally, and online for a wide variety of clients and with respect to numerous properties-from movies and sports teams and trade associations, to luxury goods from the world’s most famous designers, to consumer and personal care products from manufacturers around the world. Our attorneys work closely with our clients to develop strategic plans, including budgeting, specifically tailored to protect our clients’ rights in their valuable intellectual property. Among our enforcement activities are:

  • Obtaining and executing nationwide ex parte seizure orders; and other unique remedies such as renewable orders, asset-freezing orders, and civil contempt orders.
  • Obtaining and executing ex parte seizure orders simultaneously at numerous locations.
  • For “events” such as the release of blockbuster films or television shows, music concerts, and major sporting events (e.g. the Rose Bowl game, the Major League Baseball All-Star Game and playoff games), combating infringement through nationwide street sweeps by investigators, criminal enforcement, U.S. Customs enforcement, nationwide ex parte seizure orders, and voluntary relinquishments.
  • Maintaining programs which address infringement by numerous individuals and companies throughout the United States and worldwide.
  • Litigating against non-cooperative infringers.
  • Providing training and working with law enforcement agencies such as the local police or U.S. Customs to combat counterfeiting and piracy.
  • Working with law enforcement agencies and U.S. Customs to combat criminal infringement and illegal importation of infringing items.
  • Protecting our clients’ rights with respect to venue owners where infringing and counterfeit products are sold.
  • Employing and supervising investigators worldwide who uncover and report intellectual property infringements and who gather vital information necessary to combat this infringement.
  • Obtaining voluntary relinquishment of infringing products.
  • Maintaining a detailed database of infringers.
  • Assisting our clients in developing public relations and advertising campaigns aimed at educating consumers regarding intellectual property rights.
  • Implementing hotlines for consumers to report intellectual property infringement.

 

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