Intellectual Property

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, and JMBM has the broad-based experience needed to deliver results.

JMBM's Intellectual Property Group represents entrepreneurs, family-owned businesses, middle-market companies, startups, universities and the FORTUNE 500. JMBM is a 2014 Go-To Law Firm® for the top 500 companies in the United States in the area of Intellectual Property Litigation, as determined by American Lawyer Media’s (ALM) annual survey of in-house counsel at FORTUNE 500® companies. Our approach is aggressive and efficient, and we keep a keen focus on helping clients achieve their goals.

Our IP lawyers handle patents, trademarks, copyrights, domain names, trade dress, trade secrets, and related licensing and litigation. We have significant experience handling unfair competition matters as well as the full range of IP issues that surround the internet. Our representation spans 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.

The Group's attorneys are well-versed in a wide variety of technologies and processes, including: chemistry/chemical engineering, biotechnology, materials science, computer science, medical and dental devices, electronics, mechanical engineering, business methods, e-commerce and many others. Moreover, the Group's attorneys can draw on the expertise of other JMBM attorneys and paralegals throughout the Firm's Corporate and Litigation practices, and also have skills in a variety of languages including Chinese, Spanish, French, Russian, Hungarian, Persian, Hebrew, Portuguese and Vietnamese.

JMBM has represented clients in a wide range of intellectual property matters, including:
  •  Litigating patent, trademark, copyright right of publicity and trade secret cases, including State and Federal court trials, arbitrations, mediations and appeals
  • Litigating re-examinations including ex parte and inter partes
  • Litigating post-grant patent proceedings
  • 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 freedom to operate 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
  • 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
  • Negotiating asset purchase agreements involving intellectual property assets
  • Advising Boards of Directors relating to intellectual property policy issues
  • Advising and counseling on advertising internet and fair use issues

Recognized for their expertise by their peers and the media, our IP lawyers have been designated as Best Lawyers in America™ and Southern California Super Lawyers™, have been included on lists of the "30 Top Intellectual Property Attorneys in California" and "Top 75 Intellectual Property Litigators" in the Daily Journal, and the "Top 100 Attorneys in Los Angeles" and  "Who's Who in LA Law: Angelenos to Know in Intellectual Property Law" by the Los Angeles Business Journal.  The media frequently calls on us to explain the significance of court decisions, and we have been quoted by Forbes, Wall Street Journal, Financial Times, Bloomberg BusinessWeek, New York Times, Los Angeles Times, Thompson Reuters, American Lawyer, National Law Journal, ABA Journal, Los Angeles Daily Journal and other publications.

As a resource to entrepreneurs, companies and universities that own patents, we analyze the latest developments in patent litigation on our Patent Law Blog.

JMBM's Intellectual Property Group draws on decades of experience to provide the Firm's clients with creative, bottom-line solutions. We share our clients' sense of urgency, and take a deep interest in their business issues -- regardless of the size or scope. Please call on us to discuss how we can help.

Successes

  • Investment in Amonix, Inc. Jeffer Mangels Butler & Mitchell LLP (JMBM), one of California's prominent full-service law firms, announced that its Corporate, Tax and Intellectual Property lawyers assisted its client in an investment in Amonix, Inc., a privately held commercial solar panel manufacturer. The JMBM legal team was led by Joel J. Berman. About JMBM's Corporate Group JMBM's Corporate […]
  • Representative Copyright and Trademark Issues Litigated The following is a sampling of some of the copyright and trademark issues that Jeff Goldman has litigated: Whether a successful copyright defendant is eligible for an award of attorneys' fees as a "prevailing party" following a dismissal without prejudice. Kernel Records Oy v. Mosley, 2013 WL 3762452 (S.D. Fla. 2013). The enforceability of a copyright […]
  • JMBM Represents Team-One Employment Specialists in Reclaiming Domain Names JMBM successfully represented its client Team-One Employment Specialists, LLC in a recent domain name proceeding and reclaiming several of its domain names which were improperly registered by a competitor. Rod S. Berman and Jessica Bromall Sparkman of JMBM's Intellectual Property Group acted as counsel for Team-One in the contested proceeding.
  • For Night Optics USA: JMBM serves as transaction counsel in sale to Bushnell, Inc. Jeffer Mangels Butler & Mitchell LLP (JMBM) served as transaction counsel for Night Optics USA, Inc. and its shareholders in the sale of their company to Bushnell, Inc. Bushnell, with international sales of sports optics, premium eyewear and outdoor accessories, is owned by MidOcean Partners, a nationally recognized middle-market private equity fund. The transaction closed […]
  • For NAXOS Capital Partners: Series C Financing of Renewable Sciences Company For NAXOS Capital Partners: Series C Financing of Renewable Sciences Company Jeffer Mangels Butler & Mitchell LLP (JMBM) represented the lead investor, NAXOS Capital Partners, in the recent $100 million Series C financing of Elevance Renewable Sciences Inc. NAXOS Capital Partners is a Luxembourg-based private equity group focused on acquiring and developing businesses with unique […]
  • California Court rules for JMBM Client in Fabric Design Copyright Case Jeffer Mangels Butler & Mitchell, LLP announced that a California Federal Court granted client Forever 21, Inc.'s motion to dismiss a copyright infringement claim brought by Los Angeles Printex Industries, Inc. Fabric design company LA Printex filed a law suit in May, 2009, claiming that a print having a repetitive anchor design was covered by […]
  • Writ of Certiorari denied – Cosmos Jewelry Ltd. Prevails in Trade Dress Infringement Case The U.S. Supreme Court denied the Petition for Writ of Certiorari filed by Alan Hon and Po Sun Hon following the Ninth Circuit's denial of their appeal in the Cosmos Jewelry Ltd. Trade Dress Infringement case. Cosmos Jewelry Ltd., represented by Rod Berman and Stanley Gibson, prevailed in a trial in the U.S. District Court […]
  • Federal Court Rules in Favor of JMBM Client, Manley Toys, in 'Wham-O' Trademark Cancellation Case The U.S. District Court for the Central District of California ruled in favor of JMBM client Manley Toys, allowing its trademark cancellation case to move forward. In Wham-O Inc. v. Manley Toys, Rod Berman, Chair of JMBM's Intellectual Property Group — with the assistance of associate Jessica Bromall Sparkman — successfully argued that Wham-O did […]
  • JMBM Regains Domain Name for Client The Missouri Association of RV Parks and Campgrounds successfully regained rights to the domain name "campinmissouri.com" through a strongly contested arbitration with Sugar Mountaindesign Company. The Association, represented by Rod S. Berman, Jessica Bromall Sparkman and Manali Dighe of the JMBM Intellectual Property Group, claimed that it owned the domain name as a trademark and […]
  • Appellate Court affirms $2.3 million judgment for JMBM client Cosmos Jewelry Ltd. in trade dress infringement case Cosmos Jewelry Ltd. Prevails in Trade Dress Infringement Case Appellate Court Affirms $2.3 Million Judgment Jeffer Mangels Butler & Marmaro LLP announced that its client, Cosmos Jewelry Ltd. — known as Denny Wong Designs — prevailed before the U.S. Court of Appeals for the 9th Circuit in a challenge against the $2.3 million award in […]
  • Federal Circuit affirmed decision granting JMBM's client a preliminary injunction enjoining patent infringement In Welcome Co. v. Harriett Carter Gifts Inc., 50 U.S.P.Q.2d 1132 (D.C. Cal. 1998), aff'd per curiam (Fed. Cir. 1999), the United States Court of Appeals for the Federal Circuit affirmed the district judge's grant of a preliminary injunction involving a consumer product and means plus function claims.
  • For Grammy award-winning duo Gnarls Barkley, JMBM Won a Disputed Domain Name For Grammy award-winning duo Gnarls Barkley, JMBM won a disputed domain name proceeding before a three member panel of the National Arbitration Forum. JMBM's Intellectual Property Chair Rod Berman and JMBM associate Jessica Bromall Sparkman represented the client; they were supported by paralegal Sharon Duncan.
  • JMBM Obtains a Summary Judgment Trademark Infringement Case LOS ANGELES – Jeffer, Mangels, Butler & Marmaro LLP (JMBM), one of California's foremost full-service law firms, is pleased to announce that it obtained a summary judgment ruling from the United States District Court in Los Angeles on behalf of its client Evan Townsley, owner of International Growers, Hydroasis and Deau Passe, in connection with […]
  • JMBM Wins a Major Patent Infringement Trial: Jury verdict of $570 million Los Angeles orthopedic surgeon Dr. Gary K. Michelson, who revolutionized spinal fusion surgery with the invention of spinal fusion implant technology, and his company, obtained a jury trial verdict against Medtronic Sofamor Danek, Inc. in litigation involving contract claims and patent rights. In a three-month long jury trial, Dr. Michelson's legal team secured a total […]
  • 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 […]