Michael C. Hernandez
Michael Hernandez is an attorney in the firm’s IP & Technology Practice Group. Leveraging nearly 20 years of global experience in software product management and technical sales at a large, international software company, Mike now assists clients with a wide range of business and intellectual property transactions, including drafting and negotiating complex software, SaaS, and professional services agreements in the financial, insurance, and healthcare industries.
In addition to his tech transaction practice, Mike also provides expert legal counsel to business and product owners on the usage, protection, and enforcement of trademark assets. Mike helps manage trademark portfolios consisting of registered and unregistered domestic and foreign trademarks for companies of all sizes in the technology, software, sporting goods, clothing, footwear, food, beer, marijuana, dairy, and consumer products industries. He has realized continued success in prosecuting federal and state trademark applications, including successfully overcoming difficult office actions and navigating complex inter partes proceedings before the Trademark Trial and Appeal Board. Enforcement efforts include drafting cease-and-desist letters and settlement agreements, managing notice and take-down campaigns against online marketplaces, and filing UDRP domain name proceedings. Mike also has experience litigating trademark infringement and dilution claims in federal court.
Prior to joining Pierce Atwood, Mike worked at Telcordia Technologies (formerly known as Bell Communications Research and now part of Ericsson), where he held high-profile positions in marketing, technical sales, and product management. Success in translating technical software capabilities into executive business value propositions culminated in a visible management role, where he focused on international business development, customer account management, and contract negotiations.
- Recognized by World Trademark Review (WTR) WTR 1000. Mike was noted for “consistently providing timely and pragmatic counsel on both legal and business issues.” (2022)
- International Trademark Association (INTA)
- Maine State Bar Association
- Pro bono volunteer, Immigrant Legal Advocacy Project (ILAP) Citizenship and Know Your Rights Workshops
- Member, Scarborough Primary Parent Teacher Association
- Attained a Judgment of Permanent Injunction halting the infringement and dilution of the iconic trademarks TITLEIST, FOOTJOY, and PRO V1, and associated trade dress. See Acushnet Co. v. Golf Gods Pty Ltd, No. 1:18-cv-12093-RWZ (D. Mass. Feb. 22, 2019).
- Filed a UDRP complaint with the National Arbitration Forum based on trademark infringement and bad faith, resulting in an Order transferring the domain name <titleistcncpt.com> to client. See Acushnet Co. v. Luce Khen, Case No. 1806580 (ADR Forum, Oct. 22, 2018).
- Attained a Judgment of Permanent Injunction halting the infringement and dilution of the iconic TITLEIST trademark. See Acushnet Co. v. New Era Marketing, LLC, No. 1:17-cv-11293-ADB (D. Mass. May 4, 2018).
- Provides brand protection and global trademark portfolio management for Easton, the world’s leading manufacturer of baseball and softball equipment.
- Assists leading footwear manufacturer, through litigation and other means, to curb the sale of its products through unauthorized channels.
- Supports efforts by Caterpillar subsidiary, Solar Turbines, to protect and enforce its trademark rights for gas turbine machinery products.
- Clears, prosecutes, and enforces domestic and international trademark portfolios for numerous small, mid-size, and large companies in the technology, clothing, footwear, food, beer, dairy, personal care, and consumer product industries.
Latest Updates in Trademark
- Advised prominent designer of consumer goods in connection with copyright, trade dress, and rights of publicity.
- Prepared celebrity endorsement agreement granting client rights to utilize celebrity’s name, voice, likeness, and statements in promoting industry leading ergonomic razors and related grooming products.
Latest Updates in Intellectual Property & Technology
- Drafted and negotiated a Software-as-a-Service (SaaS) license agreement for the procurement of an automated investment advisory software and technology platform to enable investment advisors for a top-tier North American bank to offer a robo-advisory solution.
- Drafted and negotiated a SaaS license agreement for the procurement of a cloud-based ticket management solution that collects, holds and disseminates the locate ticket data from the local One Call Service or utility company. The One Call Services, known as "Call Before You Dig," provide online and call center services for contractors to identify underground pipes and cables.
- Prepared an Integration and Partner Reseller Agreement enabling the development and distribution of an integrated SaaS hospitality sales and door security and opening solution.