Goldberg Kohn - Attorneys at Law Goldberg Kohn Bell Black Rosenbloom & Moritz Ltd
Goldberg Kohn

Businesses place ever-increasing importance and value on their proprietary information, creative capital and corporate identities, and we have assembled an Intellectual Property Group that combines transactional and litigation specialists who understand how to protect that valued property.  We counsel our clients with respect to all aspects of their trademarks, copyrights, domain names, patents, trade secrets, licensing/distribution agreements and advertising.

We help our clients protect the value of their corporate identities, including tradenames, logos, trade dress, domain names and Web site designs. We monitor our clients' intellectual property globally on the Web and in other media to identify potential problems as early as possible. We have developed special industry teams for the musical instruments and toy industries. Our lawyers are proactive advisors to businesses on the evolving legal and evidentiary issues spawned by the variety of new media of communication in wide use today, including e-mail retention and purging policies.

When disputes arise, we represent our clients in matters involving trademark infringement, unfair competition, dilution, copyright infringement, patent infringement, right of publicity infringement and misuse/misappropriation of trade secrets in litigation; in alternative dispute resolution proceedings; and in administrative actions, such as trademark oppositions before the U.S. Trademark Trial and Appeal Board.

Our clients include major manufacturers, retailers, entertainment media and not-for-profit entities.

For more information about our Intellectual Property Group, please contact Oscar Alcantara at 312.201.3977 or via e-mail at oscar.alcantara@goldbergkohn.com.

Representative Matters

Our Experience

  • We are engaged by many clients to handle all aspects of their trademark portfolios, including maintenance of existing registrations, prosecution of trademark applications, analysis of pro­posed new marks through preliminary and comprehensive searches, and general counseling. For example, we act as trademark counsel to a major computer products retailer, to a distributor of private label and branded beauty supply products, to a grocery cooperative, and to many other consumer product companies.

  • We represent the owner of the most valuable cigarette trademark in the world in the company's anti-counterfeiting litigation.

  • We represent the owner of some of the most well-recognized trademarks in the market for electric guitars and related products and, in addition to handling all of its general intellectual property matters, we are actively involved in monitoring its network of authorized dealers and handle a variety of matters relating to counterfeiting, unauthorized replacement parts, warranty issues, claims made in connection with the resale of "vintage" products, trade dress protection, and general trademark infringement issues.

  • We represent various software developers in connection with the negotiation of development and licensing agreements. We also represent a number of clients who have acquired (or are interested in acquiring) software and related technologies, and have handled the negotiation and structuring of their development and manufacturing agreements. We have been involved in all aspects of the sale and acquisition of license rights, including health care information systems, voice-recognition technology, set-top box service agreements, Internet service pro­vider arrangements and multimedia publishing contracts.

  • We represent a variety of clients in patent infringement litigation in a wide array of industries.

  • We have negotiated many trademark and copyright licenses, including a wide variety of "typical" agreements for parties in diverse industries, as well as more individualized contracts for clients engaged in character licensing, cooperative advertising programs, Internet linking agreements, sweepstakes promotions and franchise programs. For example, we represent a candy manufacturer in connection with the development and licensing of novelty items using copyrighted characters, and a distributor of cleaning products regarding its relationship with cable television shopping channels and with other mass merchandisers.

  • We regularly provide counseling and advice to clients regarding a wide variety of intellectual property matters, including their licensing programs, distribution systems and advertising campaigns.

  • We have litigated a number of intellectual property matters, including numerous infringement cases, opposition proceedings before the Trademark Trial and Appeal Board, import and custom disputes, and breach of contract actions relating to license/franchise agreements.

Representative Clients

  • CDW Computer Centers Inc.
  • Corgi Classics Limited
  • Fender Musical Instruments Corp.
  • MB Financial Bank, N.A.
  • Orange Glo International Inc.
  • Paris Presents Inc.
  • Philip Morris USA
  • QVC

Related Practices

Related Industries