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A Position of Strength
Companies throughout Texas and across the country turn to Cox Smith for integrated intellectual property strategies that reflect our firm’s strengths in general business, litigation, international, and tax law. We advise emerging technology companies, leaders in the middle market with $100 million to $2 billion in sales, and global multinationals on their trademark, patent, IP litigation, and IP portfolio management needs. Our particular strengths are in global trademark management and Internet-related issues. Our lawyers take a very genuine interest in our clients and work constantly with their marketing, manufacturing, and research and development personnel to keep abreast of their industry developments and business strategies. And with a team of nearly a dozen IP lawyers and a PH.D. level patent agent, many of whom are registered with the U.S. Patent & Trademark Office, we have the technical resources to match our business understanding.

Some of the largest companies in the Southwest are among our IP clients, including middle-market leaders in telecommunications, Internet and marketing services, beverages, pharmaceuticals, medical devices, and computer software. We also actively work with many small but growing companies, often through university-based technology incubator programs, and give them the same guidance to build, exploit, and protect their intellectual asset portfolios.

In addition to our IP group's substantial capabilities in trademark law, our knowledge of Internet and privacy law (enhanced by several team members who are Certified Information Privacy Professionals) adds value for our clients. A number of our lawyers are recognized for their accomplishments in Chambers USA and The Best Lawyers in America. A key member of our team is Division Head for the American Bar Association’s Intellectual Property Law Section, past chair of the State Bar of Texas, Intellectual Property Law Section, and a frequent court-appointed special master, mediator and arbitrator in numerous IP disputes, many of them focusing on the technology industry. All of our IP lawyers are astute counselors, combining a depth of technical ability with a strategic understanding of how best to protect intellectual assets.

Trademarks
Cox Smith has exceptional strength in trademark management. Our lawyers oversee more than 10,000 marks, more than one-third of them registered internationally by working with a strong network of foreign associates. We help leading telecom, pharmaceutical, beverage, marketing services, and other types of clients decide when it is in their business interest to protect trademarks, service marks, and trade dress. Trademark portfolios get complete attention so that assessments and renewals are timely and complete. And because we continually review how marks are used, we often can identify new opportunities for licensing and enforcement.

Our full lineup of trademark services includes:

• Selection, clearance, registration, and protection of trademarks and service marks both in the United States and internationally.
• Negotiation and drafting of trademark and service mark acquisition, clearance, and licensing agreements.
• Litigating trademark, service mark, and trade dress infringement and anti-counterfeiting actions in state and federal courts.
• Handling opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office.
• Counseling on advertising and marketing practices.

We also provide our clients with day-to-day advice regarding potential infringement of their trademarks, as well as avoiding infringement of others’ trademarks, using sophisticated tools to keep marks current and monitor infringing uses or attempted registration of our clients’ trademarks and domain names.

Privacy, Internet and E-commerce
In today’s information age, company and personal data is both a key asset and a source of significant risks and responsibilities. Cox Smith’s Privacy and Internet capabilities offer experience in a demanding and constantly evolving area of the law, where technology and business models change far faster than legal precedent can begin to address.

We routinely handle commercial agreements for major Internet service offerings, including critical development, licensing, service level, support, branding, and business continuity measures. When M&A work requires, we help clients and transactional attorneys understand and handle issues surrounding the ability to use or transfer acquired information. Even outside of the M&A arena, our privacy attorneys can assist in the acquisition, transfer and augmentation of valuable marketing and other data. Moreover, our attorneys offer valuable input in connection with the vendor and contractor agreements that are a part of virtually all business relationships.

Our lawyers are also familiar with most of the Internet-specific business arrangements faced within the e-economy, including website development agreements, hosting agreements, search engine optimization, online advertising contracts, joint marketing agreements, and unique copyright, trademark, and publicity issues arising from user submitted content. Our clients – including regional players as well as multinational, multifaceted organizations – regularly call on us for email marketing advice, as well as privacy policy drafting and updates and safe harbor registration.

On the compliance side, we counsel clients on a wide range of matters, from subpoena and search warrant compliance to government investigations to requests for personnel records. As part of those services, we often prepare or revise company policies concerning use of company computers and email accounts and the disclosure of company and personnel information.

We help companies assess and implement information management systems that address identity theft protection and other privacy-related requirements, and we stay on top of ongoing developments in state, federal, and international law. When the need arises, we are ready and able to provide immediate data breach or other crisis services and advice.

Significantly, our Privacy and Internet lawyers work within a larger Cox Smith team. For example, our Privacy group includes financial institution attorneys who provide industry knowledge on FACTA requirements, payment card systems standards, gift cards, and federal and state banking laws and regulations. The privacy group also includes employment lawyers who assist in personnel records issues and, where appropriate, HIPAA requirements arising out of the administration of group health plans. Our Internet lawyers work with technology-savvy corporate lawyers on e-commerce agreements, and with fellow IP lawyers on technical specifications and other matters within their particular areas of knowledge.

With respect to trademarks and domain names, Cox Smith understands the digital economy and can handle the novel and complex trademark protection, branding and fair use issues that the Internet poses for our clients. We enforce our clients’ rights against cybersquatters and others who improperly register and use Internet domain names that are identical or confusingly similar to our clients’ names or trademarks. With the help of our global counsel network, we combat such abuses around the world, using traditional trademark laws as well as the Internet Corporation for Assigned Names and Numbers (ICANN) proceedings and enforcement of the Anticybersquatting Consumer Protection Act (ACPA).

Read more about our Privacy / Data Security practice.

Technology Contracting
Purchasing a technology system is always a complex transaction, and Cox Smith has helped clients with technology licensing and system acquisition decisions ranging in value from $100,000 to $100 million. We negotiate with technology vendors of all sizes and types, including suppliers of hardware (IBM, Siebel), and software (Oracle, SAP) and operating systems (Microsoft). We add value to every step of the process, from negotiating contract concessions and performance guarantees, to software licensing and protection, navigating to source open software issues, to structuring strategic alliances for outsourcing technology functions and commercializing proprietary systems.

Patents
We help clients prepare, file, and prosecute patent applications to protect their inventions, with an emphasis on proactive patent portfolio management. Our patent work is done with an eye toward issuance of valid and enforceable patents, protecting the in-house technology development process, and commercializing patents through domestic and international licensing, production, and joint venture programs. Using our technical experience, we can prepare and prosecute patents in the U.S. and abroad across a full spectrum of technologies – mechanical, electromechanical, chemical, biotechnical, software, business methods, and designs. More important, our patent counseling is integrated into an overarching value-added strategy in which we help clients exploit new business opportunities while protecting the underlying inventions.

We also help clients assess the competitive patent landscape in their industry and counsel them on how to minimize risk of infringement. As needed, we can provide legal opinions regarding noninfringement, invalidity, unenforceability, and freedom to operate, either in the context of litigation or otherwise.

Strategic Counseling
Cox Smith uses a coordinated approach to protect, manage, and enforce copyrights, trademarks, and patents. We integrate our services for the prosecution, registration, protection and licensing of trademarks, copyrights, and patents with a business eye for competitive needs years into the future. We help clients take a holistic, integrated view of the entire landscape for their IP to see impediments, risk, and opportunity.

That includes strategic planning for mergers and acquisitions designed to leverage IP strengths, as well as licensing agreements that both extend and protect ownership rights. Our lawyers guide clients right from the start in a transaction, so that patents, trademarks, copyrights, and publicity rights are fully secured even before structuring the deal. By taking such a complete approach to IP portfolio management, we can protect IP assets from the moment of creation, and help clients build a portfolio that is profitably leveraged and exploited in the marketplace.

IP Litigation and Dispute Resolution
Although our goal is always to help clients avoid infringement conflicts, if the need arises, we have full capabilities to enforce and defend their interests in Texas state courts and federal courts nationwide. Our experience encompasses all aspects of intellectual property disputes, including infringement and validity of patents, copyrights, trademarks, trade dress, service marks, and trade secrets. Taking an integrated litigation focus, we also handle related controversies involving employment and non-compete agreements, licensing, warranties, contracts, unfair trade practices, and computer fraud. Our privacy team also handles data breach management, FTC inquiries, and other data privacy and security incidents.

We have represented IP clients in federal district court, the U.S. Court of Appeals for the Federal Circuit, the Trademark Trial and Appeals Board, and the Board of Patent Appeals and Interferences. Our definition of winning in IP litigation is to achieve each client’s business objectives, whether through aggressive representation at trial or alternative forms of dispute resolution that reach competitive goals without the expense of litigation.

That includes the capability to serve as court-appointed special master, expert, court technical advisor, mediator and arbitrator in cases involving technologies ranging from communications to pharmaceuticals. A member of our IP team has appeared in more than 30 such proceedings, in forums ranging from federal district courts nationwide to proceedings of the American Arbitration Association.