Trademark Registration, Clearance & Protection
KSTechLaw assists digital technology companies with trademark registration, clearance, maintenance, and protection. To claim a trademark, the company must use it in commerce and does not have to register it, but federal (and international) registration provides significant advantages to trademark owners, including a legal presumption of ownership and the accompanying federal registration symbol ®.
Trademarks are key to companies’ commercialization, as they link a company to its unique products or services in the marketplace. A business’s goodwill often depends on well-chosen and protected trademarks, and the more distinctive a trademark is, the stronger it is and the broader scope of protection it gets.
We offer a comprehensive analysis of trademarks’ validity and registrability; then our IP lawyers apply for and facilitate registration of the trademarks in International Classes of goods/services pertinent to the specific technology and allowing the broadest scope of protection.
While prior use of your trademark in commerce should do the magic, an application for U.S. trademark registration may be based on a good faith intention to use the mark in the future or a prior foreign registration.
Copyright Registration, Licensing and Protection
U.S. law offers protection to the creators of “original works of authorship” fixed in any tangible medium of expression, including software code and databases. Like a trademark, copyrighted material does not require a federal registration to be protected in the U.S. However, federal registration may provide invaluable advantages, such as protection from infringements in federal courts, presumption of validity, availability of statutory damages, and import protections.
Some of our clients employ blockchain to store and protect copyrighted works in the digital realm, some create innovative technological products, digital assets, and private blockchains, and others write and publish about blockchain and other innovations. Also, companies usually hire interns and employees who may create original material, the companies presume to be their property. Copyright issues arise in each case.
Registering and Protecting Your Copyright
Whether you are a company, software engineer or a writer, our IP attorneys will guide and advise you on all the necessary steps to register and protect your copyrights in the FinTech, PropTech, BioTech, telemedicine, gaming and blockchain space, including:
- performing copyrightability analysis;
- preparing application for copyright registration with the U.S. Copyright Office;
- obtaining copyright registration certificate from the U.S. Copyright Office;
- recording copyright transfers with the U.S. Copyright Office;
- ensuring contractual protection and enforcement of work-for-hire copyrights;
- advising on copyright licensing and fair use issues.
Patent Searches, Applications, Registration, and Enforcement
Our patent attorneys are well-versed in blockchain, fintech, and other digital technologies, and the transformative solutions they offer to improve business practices, including data processing, distribution, security, trust and control.
We advise clients on (1) patentability of their inventions or improvements, as opposed to the mere application of the open-source technology and other criteria, which may prevent patent eligibility; (2) developing a comprehensive patent and overall IP strategy; and (3) obtaining end enforcing patents, based on our expert analysis and research.
Obtaining a patent can be a long and burdensome journey, particularly in emerging fields like decentralized finance (DeFi), blockchain, and other new technologies, for which you should be well-equipped.
Our experienced IP attorneys will develop a viable patent strategy and work proactively with the client and the U.S. Patent & Trademark Office (USPTO) to maximize patentability chances and minimize prosecution risks throughout the process.
Intellectual Property Due Diligence
On our clients’ behalf, we conduct intellectual property due diligence in all types of transactions involving IP rights in FinTech, PropTech, BioTech, telemedicine, gaming, crypto, and blockchain technologies. We work with companies with developed intellectual property (IP) portfolios, as well as startups, in assessing their and their counterparties’ IP assets and related risks.
IP ownership and related issues, such as data privacy and security, play an integral role in a technological company’s sustainable operation and growth. IP due diligence is essential for proper valuation of the company’s IP assets, as well as understanding of the scope, validity, and enforceability of the IP rights.
Our team of IP lawyers will define the due diligence scope based on the client’s role, goals, nature of business and specifics of technology. Depending on the goals and priorities, we will examine trademarks, copyrights, patents, trade secrets, domains, databases, data privacy, and security issues.
Intellectual Property Agreements
Our firm assists technology companies in protecting and commercializing their IP by entering into licensing and various other agreements involving IP. Our attorneys have broad and exciting experience working on business transactions at the intersection of IP, blockchain, FinTech, PropTech, BioTech, healthcare, cryptocurrencies, gaming, digital storage, real estate, and other industries.
Our knowledge of business, IP, and technology facilitate the effective review, issue-spotting, drafting and negotiating agreements with an IP component, whether it is patent, trademark or copyright that is developed, transferred, disclosed, acquired, licensed.
Our IP attorneys guide clients through a variety of IP transactions and agreements and address client’s specific issues vis-à-vis all the material terms of the IP agreements, e.g., territory and jurisdiction; exclusivity; perpetuity; scope of permitted use; non-compete and other restrictive covenants; grantback licenses or assignments of improvements; royalties, sales milestones and other financial terms; most favored nation provisions; IP-related rights of first refusal, rights of first offer of option rights; renewal and termination; change of control and assignment.
Depending on the nature of the transaction and the client’s goals, our IP attorneys will carefully tailor the client’s IP rights and embody them in a proper formal agreement, such as:
- licensing agreement, asset purchase, and license agreement;
- non-disclosure agreement, data transmission, and access agreement;
- application development agreement, joint development agreement, development and commercialization agreement, research and development agreement;
- collaboration, strategic partnership or joint venture agreement, co-marketing agreement, consulting agreement;
- manufacturing, supply, or distribution agreement;
- employment agreement;
- IP dispute settlement agreement and other agreements with covenants not to sue or not to compete;