In today's global economy, changes in technology and product designs are constant, and the need to identify, protect, and enforce intellectual property rights is increasing. Pierce Atwood has a broad range of experience representing clients in IP disputes and litigation including copyright, trademark, and patent infringement, internet domain name and trade name disputes, unfair competition claims, as well as disputes over proprietary information and trade secrets. Pierce Atwood IP attorneys litigate matters before the United States Patent & Trademark Office, state and federal courts at the trial and appellate levels, and before foreign tribunals. Our industry experience includes biotechnology, financial services, computer and software technology, music and entertainment, and designers of luxury goods.

Whether you are an inventor with potentially valuable intellectual property or a Fortune 500 company with a large, sophisticated intellectual property portfolio, we provide expert and cost-effective representation in relation to IP disputes and litigation. When an IP dispute arises, we partner with our clients to determine the best course of action based on their business, legal, and budgetary goals. We have a track record of successfully resolving IP disputes in the areas below.

Copyright, Patent, and Trademark Disputes

Before we turn to litigation, our attorneys employ a host of other strategies to help clients enforce and defend their intellectual property rights. We handle disputes involving infringement, validity, invalidity, enforceability, ownership, and licensing. When business solutions are unavailable to resolve disputes, we enforce and defend copyright, patent, and trademark rights in federal and state courts and before the U.S. Trademark Trial and Appeal Board (TTAB), the International Trade Commission, and other tribunals. Our areas of focus include:

  • Issuing and responding to cease and desist letters
  • Alternative dispute resolution, including arbitration and mediation
  • Multidistrict litigation, non-practicing entity lawsuits, Markman hearings, and creative joint defense arrangements
  • Opposition and cancellation proceedings, interference and concurrent use proceedings, and appeals of final refusals before the Trademark Trial and Appeal Board (TTAB)

As examples of our work in these areas, one team member acted as lead negotiator and legal counsel for a multimillion dollar copyright and trademark licensing agreement. We also represented a nationally-recognized home furnishings brand in a copyright infringement action against the world's leading carpet manufacturer, which resulted in a jury verdict of willful infringement.  In the area of patent litigation, we defended a biotech company accused of infringing patents concerning kits used to track mutations in the HIV genome. We also represented a lighting technology company in the enforcement of patent portfolio related to LED power electronics.

Domain Name Disputes

Our IP Litigation team has experience with domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and Anticybersquatting Consumer Protection Act (ACPA) and before ICANN-approved dispute resolution service providers. We also provide advice on issues relating to keyword advertising and social media, and generic top-level domain (gTLD) issues including use of the Trademark Clearinghouse.

Trade Secrets, Lanham Act and other Unfair Competition Claims

We have represented clients in trade secret, unfair competition, and false advertising cases in state and federal courts throughout the United States. Some of our recent work includes the successful defense of a cloud computing and data distribution company against trade secret misappropriation/employee lift-out claims in New York, and the successful defense of an importer of consumer goods against unfair competition/Lanham Act claims by a competitor in Massachusetts. Most recently, on behalf of our client Vans, Inc. and five other companies, we won summary judgement against claims alleging trade-dress infringement and unfair competition.

Post-Grant Reviews

Partnering with our patent practitioners, our IP litigators have broad experience representing and counseling both patent owners and petitioners in USPTO proceedings, including inter partes reviews and post-grant reviews (including covered business method patent reviews), ex parte reexaminations, interference proceedings, and other post-grant proceedings. Recognizing that post-grant proceedings require diverse skill sets, we believe that our clients obtain the best results when attorneys with deep knowledge of the Patent Office and the underlying technology collaborate with attorneys having strategic and tactical litigation expertise.

Pierce Atwood IP Litigation Team

Our litigators are some of the best in the country; many are recognized by Best Lawyers in America® as being the top professionals in their fields. Our team members present on IP issues before organizations such as the American Bar Association, the Boston Bar Association, the New England Bar Association, and the American Intellectual Property Law Association. One member of the team has led a class on negotiation for Harvard Law School, while another has been included in the World Trademark Review’s WTR 1000 for over a decade.

Copyright Disputes

Key Contact: Jon Gelchinsky
Team Members: Jeff Francis, Michael Hernandez, Kyle Noonan, Matt Stein

Patent Disputes

Key Contact: Robert Abrahamsen
Team Members: Ray Arner, Jeff Francis, Nolan Reichl, Will Worden

PTAB Proceedings

Key Contact: Robert Abrahamsen

Trademark Disputes

Key Contact: Jon Gelchinsky
Team Members: Jeff Francis,  Will Worden

TTAB Proceedings

Key Contact: Jon Gelchinsky
Team Members: Matt Stein, Kyle Glover, Michael Hernandez

Domain Name Disputes

Key Contact: Jon Gelchinsky
Team Members: Kyle Glover, Peter Guffin, Michael Hernandez, Matt Stein

Trade Secrets

Key Contact: Jeff Francis
Team Members: Nicholas Anastasi, Dave Barry, Kyle Glover, Peter Guffin, Kyle Noonan, Nolan Reichl, Sarah Remes, Mark Rosen, Matt Stein

Representative Experience

Defended a gaming company in litigation over an alleged breach of a multi-million dollar royalty agreement.

Defense of Gaming Company in Royalty Agreement Litigation

We successfully defended a major retailer in parallel federal multi-district and state level class actions after a data security breach resulted in exposure of electronic payment card data.

Dismissal of Class Actions Against Retailer for Data Security Breaches

On behalf of our client Vans, Inc., we won summary judgment in trade-dress infringement case in Federal District Court in Boston. The court granted summary judgment to Vans, upholding the design of its Pro-Tec snow and skateboarding helmets against competitor’s trade dress allegations. Vans, Inc. and five other companies that design, manufacture, and sell sports helmets (among other products), were sued by a competitor alleging trade-dress infringement and unfair competition. The plaintiff, Bern Unlimited, Inc., contended the visor on its Baker snow helmets was unique and distinctive, and that Vans and the other defendants were prohibited from selling helmets that also contained a visor. The court found as a matter of law that Bern’s helmet design lacked distinctiveness, thus freeing Vans and other companies to sell competing helmets with visors. In a 56-page opinion issued on March 31, 2015, U.S. District Court Judge Dennis Saylor dismissed the claims against Vans and the other defendants.

Pierce Atwood Wins Summary Judgment in Trade-Dress Infringement Case

Counsel for Time Warner Cable in successful defense of federal court copyright infringement claims concerning alleged unauthorized transmission of 137 television shows and seeking maximum statutory damages and attorneys' fees. Obtained summary judgment dismissing complaint on grounds that transmissions were not to the public under applicable copyright and FCC retransmission consent rules.

Time Warner Cable Successful Defense of Copyright Infringement Claims