"The future of the nation depends in no small part on the efficiency of industry, and the efficiency of industry depends in no small part on the protection of intellectual property."
~ Richard Allen Posner,
American jurist, legal theorist, and economist
Kennerly Montgomery's Intellectual Property (“IP”) group provides a full complement of legal services related to domestic and overseas patents, trademarks, copyrights, trade secrets, rights of publicity, and other specialties of IP as well as technology commercialization and transfer, technology law, and monetization of IP.
The IP practice group assists our clients from start-to-finish in the patent process. We provide patentability and right-to-use assessments for newly developed technologies and product designs. Our attorneys offer infringement opinions as well as validity/enforcement opinions with respect to third party patents and how they may relate to our clients’ existing and potential new products or services. The firm also prepares and prosecutes patent applications before the United States Patent and Trademark Office ("USPTO") and overseas patent agencies covering a wide range of technologies and product designs.
A key focus of the IP practice group is representing clients in patent disputes including, but not limited to, matters of patent infringement, validity, ownership, and licensing. When any of these disputes cannot be resolved extra-judicially, the firm represents clients in the enforcement of their patent rights and in defense claims of patent infringement in US District Courts. We also provide representation to parties in inter partes adversarial challenges to the validity of patents before the Patent Trial and Appeal Board of the USPTO.
Our attorneys provide a detailed clearance search for client brands and logos, focused on their availability for use and registration in the USPTO and overseas. Accompanying this is a concerted practice in brand development where we provide advice and best practices for developing strong and commercially powerful brands with the ability to be legally protected in key markets.
The firm also files and prosecutes trademark registration applications before the USPTO and overseas trademark offices, and provides services related to maintenance of registrations for its clients’ trademarks in the US and abroad. As part of its trademark practice, we defend our clients’ trademark applications and registrations in opposition, cancellation, and other adversarial proceedings before the USPTO’s Trademark Trial and Appeal Board and, in overseas registration matters, in cooperation with foreign associate counsel.
Kennerly Montgomery helps clients with a variety of other trademark-related issues including negotiating and drafting license, consent, co-existence, and other agreements; and policing client trademarks against potential misuse and infringement by others, including provision of watch services that periodically screen Internet sites and records of the USPTO and overseas agencies for the presence of trademarks that may conflict with brands of strategic importance to our clients. This service also assesses the advisability of appropriate action to address encroachment of client marks.
As with patents, a key element of the firm’s IP practice in the realm of trademark law is representation of clients before federal and state courts in the enforcement or defense of claims trademark infringement and/or unfair competition arising under federal and/or state law.
Kennerly Montgomery’s IP attorneys register copyrights in the Copyright Office for an assortment of different "works of authorship" such as computer programs, literary and dramatic works, graphic art, multi-dimensional designs, sculptures, musical works, sound recordings, motion pictures and other audio visual works, logo designs, certain product design features (including designs for clothing and other "useful" articles), architectural works, compilations, and collective/derivative works.
The firm also advises clients in matters of ownership, licensing, and enforcement of copyright in its many and varied contexts, including estate and inheritance issues involving copyright and related rights as well as e-commerce and licensing issues that arise in the digital and analog world in which musical, computer programming, textual, artistic, and other works are made available for distribution to consumers.
In addition, and in some cases in conjunction with, patent and trademark claims, we represent parties in copyright dispute mediation as well as in litigation before US District Courts enforcing and defending against claims involving infringement, ownership, and licensing of copyright.
Technology Transfer and Commercialization
Kennerly Montgomery provides technology transfer and commercialization services. Our IP group has the knowledge and expertise to assist clients in navigating complex transactions involving technologies and products. Our attorneys focus on the development, protection, and beneficial use of emerging and established technologies. We provide services relating to material transfer agreements, inter-institutional agreements, nondisclosure agreements, patent licensing agreements, cooperative research agreements, technology demonstration project agreements and management, operating agreements, and grant agreements.
Right of Publicity
The firm’s IP group also provides guidance and representation to clients in the commercial exploitation and protection of rights associated with a person’s “name” or “likeness”--often referred to as the “right of publicity” or the “personality” right. These services also encompass consideration of rights of parties in their personal data as well as estate disposition, licensing, and enforcement against misuse of a person’s property right in their name or likeness, the latter of which are often associated with claims of trademark infringement and/or defamation.
In most states, rights of publicity are created by or codified in special statutes. In Tennessee, the relevant statute is entitled the "Personal Rights Protection Act of 1984" (T.C.A. § 47-25-1101). Among other things, the statute recognizes that such rights are assignable, licensable, and “shall be” descendible the executors, assigns, heirs, or devisees of the individual whose rights are protected under the Act.
The IP practice group has considerable experience in handling trade secret matters for clients. A unique form of intellectual property that is not conferred based on any formal registration or other government-controlled procedure, trade secrets are entirely creatures of common law origin. Once proven to be extant, a party’s trade secret rights--which may include confidential and other sensitive business information--are defensible against misappropriation or unauthorized use by others.
The firm’s attorneys provide advice and guidance to clients on best practices for establishing and maintaining trade secret protection, as well as for avoiding claims of trade secret misappropriation or unlawful use. One important aspect of our trade secret practice is counseling clients in the often-difficult decision of whether to attempt to protect potentially patentable subject matter as a trade secret or under the scope of a patent.
We also represent parties in the prosecution and defense of trade secret claims in federal and state courts. Federal and state statutes now codify much of the common law under which trade secret law formed, and are routinely invoked in civil and criminal actions seeking to enforce trade secret rights.
Other Intellectual Property Services
We also provide guidance and counsel to clients in a range of transactional matters that may impact IP ownership, control, licensing, value, and protection, as well as mitigation of risk associated with disposition and/or use of IP in connection with goods/services. While these contexts vary considerably, they include disposition and allocation of IP rights in bankruptcy and estate matters, IP audits and valuations, mergers and acquisitions, corporate governance, reorganizations, government rights and relations pertaining to IP, and insurance matters including risk mitigation or risk allocation associated with ownership and use of IP.
Attorneys who advise on Intellectual Property issues:
For more information on Intellectual Property issues, please contact us at (865) 546-7311 or select an attorney above to contact them directly.