Intellectual property is often a company’s most valuable asset. We focus on protecting the intellectual property rights of our clients, from large, global corporations to start-ups and small, regional businesses, through advice, IP audits, transactional work, dispute resolution, and litigation. Our goals are to understand your long-term business objectives, to solve your immediate legal issues, and to help you achieve your business objectives efficiently and in a cost-effective manner.

We Understand Your Business

Our IP Clients include:

  • Manufacturers: semiconductor, computer hardware, software, industrial fabrication, petroleum products, food & wine processing, agriculture, medical devices, cosmetics
  • Wholesalers & Distributors: concrete, tools & supplies, automotive, paper products, medical instruments, cosmetics, software
  • Retailers: grocery, convenience stores, gasoline, automotive, clothing, cosmetics
  • Communications: ISP providers, data centers, e-commerce companies, telecommunications, television & radio broadcasters, print & web publishers, writers, software developers
  • Professional & Financial Services: CPAs, engineers, architects, physicians, dentists, attorneys, medical groups, hospitals, mortgage bankers, real estate brokerages, national bank holding companies
  • Nonprofit Agencies: providing support in the areas of social services, counseling, education, health care, vocational training, museums, and significant foundations
  • Sports, Entertainment, Hospitality: professional sports teams, restaurants, hotels, wineries, golf courses

The Specifics of our Practice

Strategic Planning.

We provide invaluable advice and counsel to clients who are looking to develop effective business strategies for identifying, managing, monetizing, leveraging, and protecting their valuable IP assets. For start-ups and entrepreneurs, this “ground up” strategic planning can include a full risk analysis, including review of existing company policies and form documents, ensuring compliance with state, federal, and foreign jurisdiction regulations, and legal guidance on business best practices.

Patent Disputes, Licensing, and Counseling.

Our clients appreciate our ability to provide both business solutions and resolutions short of litigation, when that can be avoided. Services include:

  • Patent disputes: In pre-litigation correspondence, in federal court or before the Patent Trials and Appeals Board.
  • Enforcing patents against infringers, address patent validity issues in post-grant proceedings and defend clients accused of patent infringement.
  • Helping clients protect their valuable inventions from unauthorized use.
  • Assist with getting maximum value from patents, software, trademarks, copyrights, trade secrets, and other proprietary material by negotiating and drafting licensing agreements and contracts.
  • Licensing: We have extensive experience in all aspects of software and patent licensing. We regularly draft and negotiate licenses and contracts for value-added resellers, original-equipment manufacturers, and software developers, distributors, and duplicators – including independent contractors hired to develop customized IP.

We also assist clients with IP due diligence (identifying and evaluating the assets at issue), provide options as to the value of a business’s intellectual property assets in connection with a merger or acquisition, and to negotiate and draft M&A agreements. This advice can significantly impact their negotiation position in a business transaction.

Trademark Protection & Infringement.

We provide a full range of service in the area of trademark and service mark registration and protection. We undertake international and domestic pre-registration research to ensure your intended mark is not already registered or in use. We analyze your proposed mark, evaluate its market and legal strengths and weaknesses, and advise you as to potential consequences of using it. After registering your mark in the U.S., we coordinate with international trademark counsel or agents to properly register your mark abroad. Once your mark is active in the marketplace, we provide a monitoring service to detect when others use it or attempt to register a similar mark. We also coordinate with U.S. Customs Service to prevent products which bear your mark without your permission from entering the country. Finally, we advocate on your behalf in domain name disputes and matters dealing with cybersquatters.

If a conflict arises over your pending registration, or another party attempts to register a mark similar to yours, we will defend against or initiate a trademark opposition before the United States Patent & Trademark Office. If a dispute arises after a trademark has been registered, we will challenge on your behalf or defend you against challenges by others who claim to own a similar mark. If a company attempts to profit from your reputation by copying your trademarks or goods, we can respond immediately with cease and desist letters and, if the activities persist, we will litigate to protect your reputation and market position.

Copyright Registration & Infringement.

We help our clients protect their proprietary work against infringement by properly registering their copyrights and renewing the registrations. We counsel our software clients about the pros and cons of patent vs. copyright protection for their work, and we help them select and implement the method that best suits their needs. They rely on us to understand the various registration options, including the procedures to protect confidential portions of software source code, and the procedures for registering multimedia material.

In the event someone else lays claim to your copyrighted material, or attempts to use your work without your consent, we will advocate on your behalf to confirm your ownership. Conversely, should you be accused of infringing upon another’s copyright, we will aggressively defend your position to disprove the claim.

Trade Secrets & Unfair Business Practices.

Not all intellectual property disputes arise strictly out of patents, copyrights, or trademarks. We understand that trade secrets are a major component of your business’s competitive edge, contributing substantially to your market position and profitability. We have expertise in all aspects of trade secrets and the complicated laws governing business practices, from helping our clients establish their trade secret protection plans and policies, to prosecuting and defending against alleged theft of trade secrets, to prosecuting and defending against claims of anti-trust, unfair trade practices, and unfair competition.

If there is a dispute, we work with you at the outset to find the most expeditious and cost-effective means of successfully resolving it. We provide a realistic evaluation of the merits of the claim and recommend the appropriate strategy and staffing to maximize the chance for success. We encourage alternate dispute resolution whenever possible.

When litigation becomes inevitable, our clients rely on our 50+ years of trial experience and our professional reputation. We enjoy the recognition of both the courts and the legal community as lawyers who know how to prepare and try a case, if necessary, or to otherwise bring it to a reasonable conclusion. Perhaps the best testament to our success is the fact that we receive many referrals from judges and other attorneys.

Mackrell International California Minority Counsel Program Bay Area Green Business