Intellectual Property and Branding

Both nonprofit organizations and for-profit companies can create and own intellectual property, which is often among their most valuable assets. At Bromberger Law, we help our clients protect their intellectual property under U.S. copyright and trademark laws and develop strategies for using their intellectual property in furtherance of their social missions. We also counsel our clients on the protection and use of trade secrets and confidential information, non-disclosure agreements, work-for-hire agreements, licenses, releases, concurrent use agreements, and transfers of intellectual property as part of other business transactions, and are familiar with tax issues related to gifts of intellectual property to charity.

 

Our attorneys understand the importance of intellectual property issues; often a client’s reputation as well as its assets may be at stake. Improper use of a client’s name, or someone impersonating its products or services in the marketplace can have serious negative consequences. A client’s ability to stop the infringer often depends on having taken the proper steps to protect the property beforehand.We assist our clients in navigating these issues to safeguard their brands and reputations, help them make the best use of their assets, and rest easy knowing they are protected.

 

Trademarks

 

Our trademark services include:

 

  • Counseling clients on strategies to protect their names, logos, taglines, and other brand assets under U.S. trademark laws.

  • Registration and maintenance of trademarks and service marks.

  • Drafting and negotiating trademark licensing and assignment agreements.

  • Advising nonprofits on licensing their trademarks to for-profit companies for use in charitable fundraising and cause marketing campaigns, ensuring that such campaigns comply with state charitable solicitation laws and industry best practices.

Copyrights 

 

Our copyright services include:

 

  • Counseling clients on strategies to protect works of authorship under U.S. copyright laws.

  • Providing advice on the Fair Use doctrine and the use of copyrighted works licensed under a Creative Commons, Open Source, or other open culture license.  

  • Drafting copyright assignment and licensing agreements.

  • Drafting independent contractor and consultant agreements that include “work-for-hire” and copyright assignment provisions

  • Advising nonprofit clients on expanding the scope and reach of their programs by licensing their creative works, such as educational and training materials, for use by other nonprofit organizations.

  • Advising funders and grantee organizations on issues related to grant-funded research, including the ownership and use of any intellectual property developed use grant funds.

  • Preparing data-sharing, assignment, and licensing agreements for use by hybrid social enterprises, with an eye to ensuring that each entity has the flexibility it needs to develop and use intellectual property in furtherance of its mission and purposes, that the for-profit does not receive an undue private benefit from its use of the intellectual property, and the nonprofit’s tax-exempt status is protected.

Corporate Transactions

 

Conducting intellectual property due diligence is an integral part of evaluating another company or organization as part of an asset sale, merger, or acquisition. As part of this due diligence process, we help our clients identify the intellectual property to be transferred as part of the transaction, register any trademarks or copyrights as required under the deal terms, and prepare assignment, licensing, and other agreements required to close the transaction.

 

Trade Secrets

We routinely advise our clients on strategies to protect their trade secrets and confidential information, including the use of non-disclosure and confidentiality agreements. We routinely prepare and negotiate non-disclosure agreements as part of the initial due diligence process leading up to a significant corporate or business transaction, as well as confidentiality agreements and provisions applicable to ongoing business relationships. We also provide advice on procedures to safeguard and use trade secrets and confidential information obtained from another party, the steps that should be taken in the case of a data breach or other accidental or unauthorized disclosure, and the return or destruction of confidential information upon termination of the arrangement.