Always consult a qualified IP attorney immediately when served with a lawsuit involving Intellectual Property. There are immediate steps that should be taken, and even more importantly, there are things which you should refrain from doing or saying to the other party or their attorneys, and things you should not memorialize in writing, such as emails, which can be discoverable in a lawsuit and which can destroy your chances of success.
We are always happy to offer a free initial consultation for any new Intellectual Property matter, and we will be sure that you are aware of these important initial considerations as part of that consultation. We can often perform some preliminary research for no charge that may uncover significant facts that can lead to immediate, positive results in determining the shape of the controversy, perhaps leading to an early resolution for a small cost.
What sets Feldman Law Group apart from other law firms is our approach to defense in a litigation. Right at the outset, we exhaustively research the plaintiff’s IP rights, seeking flaws which can be used to invalidate their rights. Just the threat of our launching a cancellation or invalidation action will usually motivate the plaintiff to drop their suit or negotiate a favorable settlement, because having their rights challenged in court, for any reason, is very risky – it is very difficult or impossible to evaluate the chances of success in such a proceeding, and most companies will seek to safeguard their IP rights above all other considerations, if the threat has any chance of causing them to lose their valuable patent, trademark or copyright. Examples are as follows:
Patent – Finding prior art that was not cited in the prosecution history where they obtained the patent, or procedural errors in prosecution.
Trademark – Finding similar marks which were in use before theirs, or which have acquired a distinctiveness in the market, which may weaken or even serve as a basis for invalidation of their trademark, or finding procedural errors in the prosecution history of obtaining their trademark, or discovery improper use of their trademark, either in their use of the trademark or abandonment of use of their trademark in connection with classes of goods listed in their mark.
Copyright – Finding procedural error in their copyright application, for example, an improper publication date, or ambiguity in the chain of title of ownership. More often, we have been successful in find older designs that are similar enough to the plaintiff’s design so as to threaten to invalidate their copyright. The threat of this is usually enough for them to drop the suit.
We work vigorously to secure insurance coverage for our clients when they have been threatened or sued. You are entitled to have all the costs of defending yourself from a claim of infringement, whether it is only a cease and desist letter, all the way up to the costs of a lawsuit. We find that insurance companies routinely reject insurance claims for intellectual property, but most business liability insurance is required by federal and state laws to include this coverage. It’s just that the insurance policy writers are very good at hiding this coverage in exclusions and exceptions to those exclusions. Most law firms accept the insurer’s denial of coverage and check off the box on their flowchart as having at least tried to get the client coverage. We won’t rest until we secure coverage so our client doesn’t have to foot the bill of defense. We are very focused on developments in insurance law and use the law to our client’s advantage. We are not afraid of suing insurance companies for bad faith in denying coverage, and insurance companies, more than other companies, are extremely adverse to risk. They will usually settle and provide defense because this will cost them less than paying their own lawyers to defend them in a battle which, if they lose, would have dire consequences for their business.
Where settlement is possible, we make every reasonable effort to negotiate an amicable resolution with the other side. In fact, much of our trial strategy is designed to create the opportunity for early settlement of the dispute, before trial costs become high. Feldman Law Group has lengthy experience in drafting the settlement agreements, co-existence agreements, assignments, and licenses that typically resolve trademark disputes. We also have substantial experience in recording such agreements, transfers, and other changes in the chain of title with the U.S. Patent and Trademark Office and foreign trademark offices.
Our focus in discovery is to rapidly identify the vulnerabilities of the opponent’s case and exploit those weaknesses though targeted discovery. In addition to laying the groundwork for winning at trial, this strategy is designed to win the case early through the development of issues ripe for a summary judgment motion, thus obtaining our goal while obviating the cost of extended litigation. Often, exposing vulnerabilities in an opponent’s case, and making them realize the risk they face of ultimately losing at trial, may help drive an early and favorable settlement. Remember that a plaintiff will not have the benefit of insurance covering their costs of the lawsuit.
In addition to finding weakness in the opponent’s case, both in the facts and in the law they are relying on, one of our principal focuses is to discover facts that could threaten to invalidate our opponent’s IP rights, which is usually enough to cause them to immediately drop their suit, or to negotiate an early and favorable settlement.
This is described in more detail in our section above regarding litigation, but basically, it is sometimes the case that IP rights – patents, trademarks or copyrights, can be invalidated if facts are discovered which the IP rightsholder would prefer not come to light. We have become very good at discovering these kind of facts, especially where it concerns copyrights for jewelry.
Over 4 decades of researching and preparing briefs, we have collected hundreds of jewelry resource books. Our clients have used this vast research library not only as an inspirational archive for new jewelry designs but, more importantly, as a reference point to end litigation (by showing the piece of jewelry at issue is old).