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I bring nearly 20 years of experience in the nuances of business and intellectual property law to your issues. Here is a sample of the results I have achieved for clients since starting my practice in 1993: TRADEMARK PORTFOLIOSINGLE-MEMBER LLCSDATABASE LICENSINGSUCCESSION PLANNINGTRADEMARK INFRINGEMENTSOFTWARE AS A SERVICE |
TRADEMARK PORTFOLIO MANAGEMENTWhen a national franchisor decided to expand its product line, I worked with its marketing professionals to clear and register each new mark in a crowded, high competition industry where product differentiation is essential. SINGLE-MEMBER LLCSI represent a recycling business that has expanded to multiple locations using single-member limited liability companies as wholly-owned subsidiaries of the main operating company at each location and a separate multi-member LLC to own the real estate at each location and another to own and operate the trucks involved in shipping the recycled materials. Using these separate entities helps to compartmentalize the different risks associated with different parts of the business while keeping the pass-through taxation benefits for the owners. DATABASE LICENSINGAfter being asked to review a vendor agreement from an international consumer package goods manufacturer that my client was asked to sign in order to provide space management product image and dimension content, I advised my client that signing the agreement would result in losing ownership of its copyrights. I replaced the proposed sale of goods contract with a license agreement that maintained ownership, tightly controlled uses and required full advance payment in place of monthly fees. SUCCESSION PLANNINGWorking with the estate planning attorney for the founder of a industrial parts reseller, I represented his corporation in devising and implementing a plan to effectively pass ownership to his adult children, who actively run the business, creating an income stream through retirement, maintaining his position as chief executive officer and defining how and when shares owned by the children would be redeemed with life insurance funds. TRADEMARK INFRINGEMENT DEFENSEAfter receiving a cease and desist letter from one of the Big Three car companies alleging infringing use of its auto body shapes and certain vehicle marks, I advised a concerned after-market parts manufacturer how to alter his website so that all references to those vehicles and photos of them fell under the evolving nominative fair use defense to trademark infringement. The matter was resolved without litigation in less than two months. SOFTWARE AS A SERVICEA successful sales and marketing executive proposed a simple but highly effective software combination of open source programs for cold calling prospects. She recognized its utility in other industries and asked me to help her develop and license it. Instead of offering the program as a downloadable product with cumbersome disclosure requirements, I advised her to license the use of the program from her servers as a service (referred to as “SaaS”) over the Internet on a monthly per user basis. That SaaS offering eliminates the risk of users infringing the unique code created to link the programs and provides automatic monthly credit card payments from licensees, eliminating collection issues. |
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