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JMBM Intellectual Property Practice

Delivering results and adding value through broad-based representation

Intellectual property has spurred business development while simultaneously creating a potential minefield of legal battles and entanglements. The multifaceted process of identifying, protecting, defending, maximizing and enforcing intellectual property rights requires a multidisciplinary approach.

JMBM's Intellectual Property Group handles patents, trademarks, copyrights, domain names, trade dress, trade secrets and related licensing and litigation. The attorneys in JMBM’s IP Group have extensive experience spanning the industrial spectrum with issues such as individual name and likeness and products ranging from apparel, games and cosmetics to medical devices, pharmaceuticals and digital media content.

Getting Results – Winning a dispute over complex technology

We represented one of the two largest manufacturers of telescopes in a dispute with its main competitor. The controversy involved complex software technology patents for telescope operation, and our client was the defendant in a patent infringement action.

JMBM defeated the plaintiff’s request for a preliminary injunction and obtained summary judgment for our client. We subsequently mediated and finalized a settlement on our client’s behalf that favorably settled all remaining IP issues.

The Group's attorneys are well-versed in a wide variety of technologies and processes, including: chemistry/chemical engineering, biotechnology, computer science, medical devices, electronics, mechanical engineering and many others. Moreover, the Group's attorneys can draw on the expertise of other JMBM attorneys throughout the Firm's Corporate and Litigation practices, and also have skills in a variety of languages including Chinese, Spanish, French, Hebrew, Portuguese and Vietnamese.
Getting Results – First the trademark, then the infringement win

The JMBM partner who secured a trademark on a unique jewelry design used that insight to win a multi-million dollar court victory against an infringer. Our client, Hawaii-based Denny Wong Designs, is a small family-run business that makes the distinctive Tropical Memories® Plumeria flower jewelry.

We originally obtained a federal trademark registration for the three-dimensional appearance of the jewelry design. Having structured the protection for the design, our lawyer secured damages, a permanent injunction and an award of attorneys’ fees against a Los Angeles company and its owner for trade dress infringement and unfair competition.

JMBM has represented clients in a wide range of intellectual property matters, including: 

  • Litigating patent, trademark and copyright cases, including State and Federal court trials, arbitrations, mediations and appeals 
  • Trademark development, registration and protection 
  • Performing and managing U.S. and international trademark, copyright and patent searches, filings, prosecution and oppositions 
  • Consulting on domestic and international trademark usage, marketing, licensing and franchising 
  • Rendering patentability, validity and infringement opinions 
  • Implementing domestic and international enforcement and anti-counterfeiting programs 
  • Negotiating, preparing and enforcing license agreements 
  • Analyzing ownership and chain-of-title issues relating to works protected by copyright 
  • Negotiating, preparing and enforcing confidentiality and nondisclosure agreements, and trade secret licenses 
  • Negotiating, preparing and enforcing joint development agreements 
  • Managing domestic and international trademark portfolios 
  • Managing and documenting the purchase and sale of intellectual property assets domestically and internationally 
  • Advising and counseling on advertising internet and fair use issues
Getting Results – Procuring and enforcing patents
We represented a consumer products company in procuring patents for a commercially successful electrical bag sealing device and enforcing those patents. In one case, we obtained a preliminary injunction enjoining the distribution of infringing products. We also argued the case before the Federal Circuit Court of Appeals which affirmed the grant of the injunction.
Getting Results – Working with law enforcement to get counterfeit products off the market
We represented a food products company in connection with ongoing counterfeiting of its brand. As a result of working with a local law enforcement agency in a raid, we were able to obtain significant judgments against the counterfeiters and settlements with import brokers. In addition, one of the persons arrested in connection with the raid ended up serving time.

JMBM's Intellectual Property Group draws on decades of experience to provide the Firm's clients with creative, bottom-line solutions. Our attorneys share their clients' sense of urgency, and take a deep interest in their business issues--regardless of the size or scope.

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