Practice Areas

Trademark and Copyright

Kasem Ko understands that the acquisition and protection of intellectual property assets and portfolios is vital to achieving commercial success. Our firm advises individuals, start-up/entrepreneurial businesses, and established businesses on trademarks, copyrights, trade secrets, internet and domain matters, e-commerce matters, and related unfair competition matters.

Trademark

An effective trademark registration strategy precedes implementation of a business strategy. Trademarks safeguard business brand and marketing programs by protecting words, names, symbols, or colors that distinguish business goods and services from those manufactured or sold by others.

Our attorneys conduct a diligent search of existing marks, both registered and unregistered, to ensure the registrability of a client's mark. Upon completion of an exhaustive search, our attorneys issue opinions on the registrability of a mark. We advise clients on the selection of a mark that balances protection afforded under the law, the risk of infringement against another mark, and the effectiveness of the mark for its intended purpose for use in commerce. We also counsel on the pitfalls and disadvantages of failure to register a mark, whether on a state, national, or international level.

Our firm prosecutes a federal trademark application from inception to conclusion, which includes the preparation of the application, prosecution before the United States Patent & Trademark Office (USPTO), responding to office actions, and, if necessary, preparation and filing of an appeal before the Trademark Trial and Appeals Board (TTAB). In addition to registration of federal marks, our firm registers marks both on a state level, and internationally. Our attorneys advise on international trademark issues concerning the Madrid System, comprising the Madrid Protocol and the Madrid Agreement, the Paris Convention, and the World Intellectual Property Organization (WIPO).

We also counsel on the advantages and disadvantages of filing U.S. applications on the basis of foreign applications. As commerce becomes increasingly globalized, our firm is prepared to ensure that our clients' intellectual property portfolios attain the requisite protection on an international level. Upon registration of a mark, the firm is available to monitor marks for possible infringement. We also handle trademark maintenance and renewal, advising clientele on fulfilling the necessary conditions to renew a trademark indefinitely.

Kasem Ko provides representation on infringement issues, ranging from issuing infringement opinions under the "likelihood of confusion" standard to litigation. Our firm protects our clients' trademarks by utilizing cost-effective solutions first, such as issuance of cease-and-desist letters. When necessary, however, we aggressively pursue infringement matters through the most economical and expeditious channel available to our clients, whether through mediation, arbitration, or litigation. We also defend our clients from infringement allegations. Finally, we evaluate existing trademarks under consideration for adoption.

Kasem Ko's trademark practice also encompasses legal matters at the forefront of internet and electronic commerce, which have spawned relatively novel trademark issues relating to cyber squatting, meta tags infringement, and domain name disputes. When our clients are involved in domain name disputes, we recommend the most cost effective and efficient solution through the Uniform Domain-Name Dispute Resolution Policy (UDRP), an administrative process designed to resolve trademark disputes involving internet domains. In UDRP disputes, our attorneys provide representation before dispute resolution providers approved by the Internet Corporation for Assigned Names and Numbers (ICANN). Through the UDRP, clients may obtain transfer of, or cancellation of, an infringing domain. Under certain circumstances, we advise clients to proceed under the Anti-Cybersquatting Consumer Protection Act (ACPA).

Our firm provides representation on related commercial matters including:

Trade dress and trademark dilution;
Trade secrets and misappropriation;
Unfair competition, "palming off," and deceptive trade practices;
False or misleading advertising, and product disparagement;
Counterfeiting, first sale doctrine, parallel imports, and "gray market" goods imports in violation of the U.S. Tariff Act;
Preparation and negotiation of license, sponsorship, and endorsement agreements.

Kasem Ko's intellectual property practice extends to copyrights, a form of intellectual property that protects original works of authorship, including computer software, architecture, literary works, and artistic works. Copyright law is a dynamic area of law, and with the advent of digital content, businesses are becoming increasingly familiar with the importance of seeking protection for their content. Businesses and individuals alike expend significant resources in developing intellectual property assets, and turn to our firm for the protection of those assets.

Kasem Ko handles copyright issues arising in various industries, such as software, technology, advertising, media, and entertainment, and in connection with internet-based businesses, where we address questions pertaining to graphics, html code, and content. Our practice includes:

Copyright registration, maintenance, and protection;
Negotiating and drafting complex copyright development, transfer, and licensing agreements;
Infringement opinions, defenses to infringement allegations, cease and desist letters, mediation, arbitration, and litigation;
Counseling clients on emerging issues under the Digital Millennium Copyright Act (DMCA) as well as the anti-circumvention and safe harbor provisions of the DMCA;
Resolving "work made for hire" issues to ensure that our clients own the copyrights to works they pay to develop;
Advising clients on matters relating to derivative works, joint works, joint authorship, right to profit, public domain, duty of contribution, and duty to account;
Application of fair use principles in the context of new media and internet technologies;
Advising on photocopying, scanning, website linking, and electronic use or publication of third party materials;
Advising on matters pertaining to the Berne Convention for the Protection of Literary and Artistic Works.