Intellectual Property Counseling

Overview

Our Intellectual Property practice is a multi-disciplinary team of attorneys. Life science, biotech, pharmaceutical, medical device, dietary supplement, software, hardware, telecommunications, and high technology manufacturing companies need an experienced team capable of meeting their unique needs in today’s competitive marketplace. We approach IP from a strategic business standpoint, counseling clients not only in the creation, development and protection of IP resources, but also on how best to utilize those assets to advance business interests and to enforce their rights. Our attorneys and professionals offer full-service representation in patent, trademark, copyright, trade secret, and unfair competition law, providing fundamental services related to each, including patent preparation and prosecution, litigation, licensing, transactions, opinions, and policy issues.

Additional Specialties

  • AGG assists clients with public policy issues involving intellectual property rights. Attorneys from its Washington office have been consulted by clients, members of Congress and their staff on issues relating to patent legislation, including bills on patent eligibility. We also closely monitor and advise on changes to PTO rules and procedures. In addition, we counsel IP clients on how actions taken by other agencies, such as the Federal Trade Commission, Food and Drug Administration, International Trade Commission, and Customs and Border Protection, can impact their business.
  • We understand that a “brand” is the essence of any business - a name, logo, tagline, term, sign, symbol, color or design that identifies a company and the products and services it offers. We help businesses of all sizes develop successful brand strategies and management built around a strong portfolio of intellectual property, because that is the key to unlocking the value of a brand. We also help to enforce and protect our clients' brands through brand monitoring of trademarks, domain names, marketing and advertising, and draft cease and desists letters, prosecute opposition and cancellation proceedings, and litigate IP disputes before state and federal courts, when necessary.
  • Our attorneys provide due diligence review, audits, and investigations of intellectual property assets in alignment with each client’s overall strategy and vision. We provide due diligence services to companies in a variety of industries, including pharmaceuticals, food service, telecommunications and medical products, among others.
  • Our social media attorneys help clients with the numerous legal issues relating to the rapid proliferation of social media platforms and their use. We help clients with social media brand management, monitoring and enforcement of intellectual property across an array of social media platforms, labor and employment concerns, and social media issues arising in litigation.

Experience

  • Represented the management of a division of a multi-national public company in successfully acquiring the assets of the division in a “Stalking Horse” Bid in the US Bankruptcy Court in Delaware. After acquiring all of the assets, he represented the company for more than ten years in various corporate matters until he assisted the client in a stock sale of the company to a large public company.

  • Advised and assisted e-Commerce company with self-correction under the Internal Revenue Service’s Employee Plans Compliance Resolution System (EPCRS) of an operational failure of its 401(k) plan.

  • Obtained plaintiff’s verdict on claims of misappropriation of trade secrets and breach of contract following two-week jury trial and recovered client’s property against former partner of highly specialized biotechnology company.

  • Led trademark enforcement action for client in pool care products space against direct competitor. Quickly obtained favorable settlement for client, requiring competitor to cease sales of infringing goods, repackage existing inventory, recall infringing goods from marketplace, and agree to pay liquidated damages for any future infringement.

  • Responsible for leading negotiation of multi-million dollar technology agreements against Fortune 100 companies for global software and cloud services vendor.

  • Represented pharmacy health information provider in successfully defeating emergency TRO proceedings brought by competitor in federal court for alleged trade secret misappropriation, which result was followed by prompt dismissal of all claims in suit.

  • Represented largest producer of Vidalia Onions in reviewing labeling and packaging artwork for client’s full line of food products.

  • Represented Israel-based provider of personal care medical products in revising social media, website and  product labeling in accordance with FDA and FTC requirements. Helped client revise clinical protocol for study to support performance claims for skincare product.

  • Successfully represented biomedical company in connection with a contentious, multi-million dispute arising from an exclusive distribution agreement, which included claims for breach of contract, breach of the implied duty of good faith and fair dealing, fraud, RICO, misappropriation of trade secrets, libel, tortious interference with business relations, and the Georgia deceptive trade practices act.

  • Assisted clients with preparation of regulatory opinion for IPO filings.

  • Represented U.S. manufacturer in federal trademark infringement action against a former distributor. Obtained summary judgment on manufacturer’s trademark infringement claim, which included an award of treble damages and attorney’s fees. Successfully defeated distributor’s appeal of the district court’s summary judgment order in the United States Court of Appeals for the Eleventh Circuit and petition for writ of certiorari to the United States Supreme Court.

  • Serving as general copyright, intellectual property, licensing and contract counsel to a multi-Grammy Award-winning independent record label.

  • Performed copyright clearance work for nationwide quick-service restaurant chain, for use of musical works at seminars, in marketing and advertising materials, in training materials, and in special events. The clearance work included, but was not limited to, negotiation of license agreements with major public performance organizations, as well as drafting and negotiation of licenses for specific works with rights owners.

  • Counseled client in the television industry regarding trademarks, copyrights, and brand protection.

  • Acted as intellectual property counsel to the host of an AM radio show.  The representation included drafting and review of a radio talent and studio use agreement, providing intellectual property advice on the development of content for the radio show, prosecution of trademark and copyright applications covering content created for the show, and drafting model and photograph releases for use with third parties appearing on the radio show.

  • Successfully defended medical device manufacturer in federal court bench trial against a claim for more than $10 million based on an alleged breach of license. Unlike a typical breach of contract claim, the issues in this case required proving patent non-infringement and tendering expert testimony in a niche area of x-ray technology. Anuj also handled and successfully defeated an appeal of the judgment before the Eleventh Circuit and Florida Supreme Court.

  • Represented a consumer products company in a suit against a competitor for trademark infringement and violations of Georgia’s Deceptive Trade Practices Act and the federal Anticybersquatting Consumer Protection Act.  The United States Court of Appeals for the Eleventh Circuit affirmed an order granting summary judgment to our client.

  • Supported successful settlement of claims of trade dress infringement and unfair competition under the Lanham Act brought against a pharmaceutical company by a competitor. This case involved the unique and rarely litigated issue of whether the appearance of pharmaceutical pills and capsules are protectable as trade dress.

  • Represented U.S. manufacturer of boating equipment in federal false advertising litigation against a competitor. Obtained a preliminary injunction on behalf of client requiring the competitor to cease distribution of promotional materials, remove pages from its website, issue retraction letters to customers, and undertake corrective advertising. Negotiated a favorable settlement on behalf of client prior to trial.

  • Supported the representation of Element K Corporation in an asset purchase valued at more than $110M. Acted as intellectual property counsel for the deal, which involved conducting due diligence on more than 1,400 copyright registrations owned by the client, and  clearing title in and to these registrations in preparation for assignment to the new owner as part of the transaction.

  • Assisted client Network Services Company, Inc., a multi-national network of suppliers and distributors who provide top-quality, name-brand products to customers worldwide, with a major rebranding effort. The representation included assessment of Network’s entire trademark portfolio, the prosecution of a number of new applications to register trademarks domestically, as well as the creation and execution of monitoring and enforcement programs for the protection of Network’s intellectual property.

  • Counseled American Breast Care LP, a worldwide manufacturer of post-mastectomy breast care products,  on the international protection of its intellectual property. The representation included the prosecution of applications to register trademarks in twelve foreign countries, as well as the creation and execution of monitoring and enforcement programs for the protection of intellectual property domestically and abroad.

  • Represented Atlanta-based puppet theatre, Center for Puppetry Arts, in clearing rights in and to copyright-protected musical works for use in various original puppet shows created by and performed at the theatre.

  • Successfully litigated a trade secrets misappropriation case against a large, well-known food manufacturing and distribution company after that company stole a valuable biscuit recipe used by our client to manufacture and supply the large manufacturer with frozen biscuit products. The case was settled favorably on behalf our client, who sold the recipe to the manufacturing company and maintained distribution rights for the products.

  • Obtained favorable settlement for a consumer products company in its trademark and copyright infringement lawsuit against an international counterfeiter. Conducted an ex parte seizure of counterfeit goods stored at a warehouse with the assistance of U.S. Marshals.

  • Obtained favorable settlement for a marine products company in its Lanham Act lawsuit against a competitor using website Meta tags and Google AdWords infringing the company’s trademarks.

  • Successfully defended an international retailer against charges of misappropriation of trade secrets and alleged Lanham Act violations on Motion for Summary Judgment in the United States District Court for the Northern District of Georgia; Affirmed in the 11th Circuit Court of Appeals.

  • Successfully defended Rich Products Corporation against charges of predatory pricing in violation of the Sherman Act and Robinson Patman Act in a four-week bench trial in the United States District Court for the Western District of New York.

  • Advised academic medical center in the development of intellectual property policies and procedures.

  • Represented growing, family-owned regional retail business with multiple locations.  Several financing; real estate acquisitions; trade mark litigation; non-family ownership and family intergenerational issues.

Recognition

World Trademark Review’s WTR 1000, the only standalone publication to recommend individual lawyers worldwide who work in the trademark field, recognizes Tucker Barr and Anuj Desai as leaders in this area of law.

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