A company’s intellectual property is its most important asset. If it’s not maintained, someone else could use, or worse, claim ownership and block you from using it. This can be your trademark, story, secret techniques, recipes, and so much more. Ensuring that your IP is properly protected is essential, but also a long-term job. There’s no one-and-done solution; you have to keep protecting it for as long as your company is in operation. To keep it safe, you’ll need in-house IP counsel.

In-house IP counsel can do as our name suggests. We instruct our clients on how to best utilize and protect their IP. If there’s a new way you wish to use your trademark, we can advise. Many companies decide to outsource their entire intellectual property portfolio, and we serve as in-house intellectual property counsel for numerous clients who want the most experienced counselors at their side.

Foreign IP counsel attorneys

What Situations Require In-House IP Counsel?

You would call upon your ​in-house IP counsel before trying to expand your IP or generate new ones, especially in different industries. Our ability to be responsive and well-researched on a work product allows us to answer our clients’ questions quickly enough for them to make a decision.

Whenever you’re trying to expand your IP or create new IP, you run the risk of treading on someone else’s toes. Just like how you need to defend your IP, so does everyone else. If they think you’re imposing a similar trademark or utilizing even a portion of their patent, they may file a cease and desist. We can advise you as to when this may happen.

Examples of Potential IP Issues You May Run Into

We have some examples of legal issues we’ve guided our clients around so they may avoid receiving or having to give out a cease and desist.

  • A client wishes to enter a new industry using their current trademark, but we warn them against using it since there is a similar trademark in that industry. Filing a different trademark means creating a new brand that avoids confusion and a cease and desist.
  • A client believes that another company is infringing on their copyright by creating a similar product in their industry. With research, we find that they do not use the patent and that trying to send a cease and desist may result in monopoly accusations.
  • A client has started a new branding for one of their spin-off products but appears to have infringed on another company’s trademark. We can negotiate the brand change and reasonable expectations to avoid a lawsuit.
  • A foreign client was interested in bringing their product and brand to the United States. We were able to file their patents, trademarks, and more appropriately before they started their marketing and risked utilizing a brand they might not have owned and controlled in the United States.

No business wants to spend money being embroiled in a lawsuit, so, for us, the best path forward is the one that leads to the least conflict. Should conflict be unavoidable, we can represent our client’s interests, whether it is in prosecution or litigation. Our patent, trademark, copyright, and trade secret prosecution process consists of partner reviews of all work products that leave our firm. Our litigation team works together on every brief, motion, and discovery to ensure that our work product is second to none in the country.

Our In-House IP Counsel Gets to Work Right Away

From the moment you take us on, we will conduct a thorough review of your intellectual property assets. We will work to identify any holes in your filing that could leave them vulnerable and take steps to ensure they are protected. Many businesses believe that since they filed a trademark or patent once, they have it forever, but that’s not true. If you file for a patent or trademark and then lose it, you will have to renew it or risk losing it.

In addition, we will proactively monitor your intellectual property from henceforth. This way, we can ensure that they are renewed in a timely manner in all relevant countries.

Contact the IP Attorneys at Emerson Thomson Bennett Today

Our experienced and responsive attorneys can address all of your administrative and legal intellectual property needs. This includes applying for and maintaining patents, trademarks, copyrights, and trade secrets and addressing any disputes that may arise in the future.

Having our firm handle your day-to-day needs can be a much more cost-effective solution compared to hiring a lawyer on an as-needed basis.

Contact Emerson Thomson Bennett at our Akron, Ohio, office to discuss your intellectual property protection and litigation needs with a lawyer. You can reach us by calling 330-434-9999.

John Skeriotis

Partner – Litigation Practice Chair

John Skeriotis

Areas of Practice

Intellectual Property, Patent, Trademarks, Copyright, Internet Law, Litigation, Licensing







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