Michael Hernandez is an attorney in the firm’s IP & Technology Practice Group.  Leveraging 18 years of prior global experience as a software product manager and brand owner at a large, international software company, Mike now provides expert legal counsel to business and product owners on the usage, protection, and enforcement of trademark assets.  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: managing notice and take-down campaigns against online marketplaces; drafting cease-and-desist letters; and filing UDRP domain name proceedings.  Mike also has experience litigating federal trademark infringement and dilution claims.

In addition to his trademark practice, Mike also assists clients with a wide range of business and intellectual property transactions, including drafting complex license agreements, privacy policies, and website terms of use.

Prior to joining Pierce Atwood, Mike worked at Telcordia Technologies (formerly 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.

Professional Activities

  • International Trademark Association (INTA)
  • Maine State Bar Association

Civic Activities

  • Pro Bono Volunteer, Immigrant Legal Advocacy Project (ILAP) Citizenship and Know Your Rights Workshops
  • Member, Scarborough Primary Parent Teacher Association

Practice Areas

Representative Experience

  • 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.

Representative Experience

  • Advised prominent designer of consumer goods in connection with copyright, trade dress, and rights of publicity.
  • Authored privacy policy and terms of use for online career opportunities platform that empowers job candidates in their search for employment.
  • 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.

Representative Experience

  • 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.  

Highlights

“Mike is a valued partner, and is absolutely part of Team Easton.”

          – Sam Gasowski, Senior Counsel, Easton Diamond Sports, LLC


"Mike is an integral and indispensable member of our team, and has done a masterful job in helping our organization protect its trademark assets, which is critical to achieving our mission and establishing a line of sight for national expansion.”

          – Greg Johnson, Executive Director, The Summit Project