Intellectual Property & Technology

Messerli Kramer’s Intellectual Property & Technology attorneys assist clients in their pursuit of success by identifying, protecting and helping to commercialize their intellectual property including trademarks, copyrights, trade secrets, domain names and technologies. Our services are broad-based—from securing trademarks and copyrights, to advising on complex licensing and technology agreements. Our attorneys know these intangible assets are every bit as important as traditional assets such and are quite often the “secret sauce” to a competitive advantage in today’s modern technological environment.

Intellectual Property Services

• Cease and Desist Demands and Infringements

• Confidentiality and Non-Disclosure Agreements

• Copyright Registrations

• Co-Existence Agreements

• Cybersquatting and other Domain Name Infringements

• Domain Names

• Independent Contractor and Work-for-Hire Agreements

• Invention Assignment Agreements

• Trademark and Copyright Assignments and Transfer of Rights

• Trademark Clearance, Applications, Registrations, Maintenance, and Protection

• Trademark Opposition, Cancellation and Concurrent Use Proceedings

Technology Services

• Consulting Services Agreements

• Data Privacy and Data Security

• Distribution, OEM, and Supply Agreements

• End-User License Agreements

• Hardware Agreements

• Internet and E-commerce Agreements

• IP Due diligence for Acquisitions, Sales and Investments

• IP Mergers and Acquisitions

• IP Security Agreements

• Product Evaluation Agreements

• Professional Services Agreements

• Reseller Agreements

• Software and Technology Development Agreements

• Software and Technology Licenses

• Software as a Service (SaaS) Agreements

• Source Code Escrows

• Statements of Work (SOWs), Service Level Agreement (SLAs) and Support Services

• Website and Mobile App Privacy Policies

• Website and Mobile App Terms of Use

Representative Experience

• Represented a publicly-held software provider in numerous software as a service (Saas), end user license, reseller, professional service and other related agreements for meeting room management and time and attendance software products.

• Represented a licensor of wearable technology in evaluation and development agreements with a premiere cable, telecommunication and home automation company for a wearable in-home personal emergency response product.

• Represented a licensor of a virtual care platform in license agreements with a premiere cellular company and several healthcare providers.

• Represented a copyright owner in the exclusive license with a publisher to publish and distribute copyrighted works of educational products.

• Represented the prosecution of approximately 500 trademark applications at the United States Patent and Trademark Office.

• Represented the handling of approximately 50 opposition, cancellation and/or concurrent use proceedings at the Trademark Trial and Appeal Board and numerous trademark settlement or co-existence agreements.

• Represented an international client in its due diligence of a target’s trademark portfolio for a proposed acquisition.

• Performed due diligence of numerous IP portfolios of target companies in connection with a publicly-held company’s multi-million dollar acquisition transactions.

• Created privacy policies and terms of use for a wide range of client websites and mobile applications in various industries.

• Represented borrowers owning IP assets in multi-million dollar loan and financing transactions including auditing title, negotiating representations and warranties and security agreements.

Professionals

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