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IP counseling cannot be done in a vacuum—a strategy that succeeds in one environment may guarantee failure in another. Recognizing that one size does not fit all, the firm endeavors to fully understand each client’s business, the marketplace in which it competes, its management philosophy, and its vision for the future. Based upon these principles and the extensive experience of Dickstein Shapiro’s Intellectual Property attorneys in all phases of IP law, the firm designs intellectual property strategies that are both practical and effective. Such work includes:

  • obtaining and protecting proprietary rights; 
  • developing intellectual property strategies; 
  • licensing proprietary rights; 
  • developing trademark policing strategies; 
  • providing domain name enforcement solutions; 
  • developing strategies for maximizing the value of the intellectual property; 
  • identifying technologies for potential licensing; 
  • providing guidance on federal, state, and local data protection statutes, including compliance policies, procedures, and checklists to avoid data breach liability; 
  • providing representation before Congress and various federal agencies; and 
  • counseling and protecting rights under government contracts.

Policing Policies

Dickstein Shapiro works with its clients to understand their budgets and competitive needs. With this information, the firm helps develop strategies for policing third-party infringements as well as internal misuses of clients’ marks by franchisees, affiliates, or other related entities.

Trademark Piracy

Dickstein Shapiro has experience dealing with trademark piracy problems in numerous countries around the world, including Australia, Guatemala, Japan, South Korea, and countries in Eastern Europe.

Data Security

A wide range of companies today collect, store, and make use of non-public, personally identifiable information. The web of laws on the federal, state, and even local level creates a challenging legal environment for companies to manage. Creating and executing policies, procedures, notices, and responses to data security issues and inadvertent disclosures are essential for use in counseling in-house clients in IT, marketing, and sales organizations. Through Attorneys General and others, states are increasingly becoming active in data breach and information security enforcement. There are documented data security breaches affecting more than 285 million records for 2008 alone, which damage companies’ reputations and have resulted in many multimillion dollar settlements. Dickstein Shapiro frequently advises and counsels clients to enable them to steer clear of these risks and often assists in the event that a breach occurs.

Chinese Character Marks

Because Chinese characters can be used to represent sounds or meaning, depicting a trademark in Chinese can present unique challenges. Dickstein Shapiro has guided clients through the process of selecting Chinese character marks that reflect the proper sound when spoken and an appropriate meaning when read and then searching the availability of several versions in China, Hong Kong, Macau, and Taiwan.

Domain Name Issues

Dickstein Shapiro has counseled clients in the development and implementation of international domain name programs. As part of such efforts, the firm has worked with clients and their registration and maintenance services and has developed compliance procedures and protocols for entities and corporate offices.

Multicountry Recordations

Dickstein Shapiro has extensive experience in recording worldwide assignments, name changes, mergers, and similar title changes. The firm has conducted large-scale recordation projects, including an entity change recordation project covering more than 75 countries and a name change recordation project covering more than 55 countries. The firm is involved in these kinds of projects and therefore is aware of the current requirements in each country and can efficiently prepare and file the necessary documents.

Customs Recordation

The firm has experience dealing with U.S. Customs and Border Protection as an enforcement mechanism with respect to infringing or counterfeit goods entering the United States.

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