MCCONNELL VALDES LLC
Puerto Rico
Antonio Escudero-Viera - Member +787 250 5625 aev@mcvpr.com www.mcvpr.com
McConnell Valdés LLC is home to one of the most accomplished intellectual property practice teams in the whole of Puerto Rico. The team helps clients to select and attain the best form of protection for their trademarks, service marks, and copyrights under both US and Puerto Rican IP laws. The IP practice team is comprised of attorneys from both the corporate and litigation practice groups of the firm. The team has been successful in obtaining injunctions against the importation of counterfeit, infringing and gray market products into Puerto Rico; injunctions in false advertisement cases; and injunctions in right-ofpublicity cases. Clients are represented in federal and local courts, before the Puerto Rico trademarks, commercial names, and moral rights registration agencies, and before the US Patent and Trademark Office and the Copyright Office to defend or oppose registrations. McConnell Valdés LLC has been a member of INTA since 2001. Antonio Escudero-Viera described the advantages of being affiliated with the association; “One of the main benefits of being an INTA member is keeping our attorneys and staff abreast of new developments through meetings and publications. Our firm hosted the first INTA Round Table in Puerto Rico.” Mr Escudero-Viera also commented on how widespread IP awareness is in Puerto Rico; “Many US registrants may not be aware that a local registration strengthens the protection of a federal registrant’s trademark rights. Although a federal trademark registration is enforceable in the United States District Court for the District of Puerto Rico, under the Dawn Donut rule, a federal registrant and senior user would only be able to enjoin a junior user if the marks are actually being used concurrently in the same trading area or if the registrant’s expansion into the junior user’s trading area is likely in the normal course of the registrant’s business. “Therefore, there may be instances in which a federal registrant may not be able to enforce its rights. In such instances, a Puerto Rico registration (with or without use in commerce) would provide additional rights to the federal registrant by allowing the registrant to seek injunctive relief and statutory damages, among other remedies, under Puerto Rico law.”
DUANE MORRIS LLP
USA - California
Shlomo Franco - Marketing +14 15 957 3139 sfranco@duanemorris.com www.duanemorris.com
The Intellectual Property practice at international law firm Duane Morris is recognized as one of the leading IP groups in the United States. National publications such as Intellectual Property Today, IP Law & Business, IP Law Bulletin and IP Law360 have all ranked Duane Morris among the leading law firms handling patents, trademarks, copyrights and related IP litigation. Duane Morris’ IP attorneys focus on leveraging their clients’ intellectual property to help them achieve success in the marketplace. Our IP lawyers provide counsel on the most efficacious methods of establishing and developing IP holdings and protecting IP rights so clients can realize the most value from those assets. From patents to trademarks and copyrights to licensing and technology transfers to IP audits and IP asset due diligence, our attorneys offer clients portfolio management and strategic advice on obtaining and protecting valuable intellectual property. The firm’s IP lawyers represent clients ranging from large multinational corporations to individual inventors, authors and owners of creative works. Our IP team includes highly trained attorneys with multiple technical degrees and jury trial experience as well as former patent examiners and patent agents, former corporate patent and trademark counsel and professors of IP law. A sampling of matters the IP Practice Group handles includes biotechnology, pharmaceuticals, consumer products (particularly in the food and home and personal care categories), entertainment, media, biotechnology, franchising, distribution, trade secret matters and licensing projects. Our IP attorneys also assist clients in disputes regarding rights of privacy and publicity, antitrust and Internet and e-commerce issues. Unlike IP boutique firms that limit their practice solely to intellectual property matters, Duane Morris is a full-service firm with attorneys supporting our IP lawyers in all practice areas, including litigation, tax, corporate law, customs enforcement, antitrust, employment, business and finance, international law, government contracts, bankruptcy, banking, personal financial planning, insurance and securities. Our firm also has offices in major markets across the United States, as well as offices in London, Singapore and Vietnam, and has strategic alliances with international networks of law firms to help us service our clients’ needs worldwide.
OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P.
USA – Connecticut
Terrence J. McAllister, Esq. – Partner 001 203 327-4500 tmcallister@ogrp.com www.ogrp.com
Ohlandt Greeley Ruggiero & Perle, LLP is a diverse intellectual property law firm with the capacity to meet the varied and changing needs of a growing U.S. and international client base. We provide a full line of services to our clients, including: patent, trademark and copyright clearance searches; patent and trademark prosecution; counseling; litigation; licensing; infringement and validity studies; handling IP issues that arise in mergers, acquisitions, venture capital transactions, and research financing; joint ventures and joint developments; and intellectual property law audits. We also handle related transactional and contract matters, including agency & talent negotiations, as well as advertising claims substantiation. We provide worldwide representation for our clients through our experienced lawyers and network of international contacts. Many of our attorneys have degrees in engineering or scientific disciplines, and/or have significant experience working in different business industries, and can serve as a resource for strategic planning. Our highly specialized practice serves a diverse and ever expanding national and international client base that includes many Fortune 500 companies, international businesses, private institutions and major U. S. research universities. We serve clients ranging from privately held entities, including new venture start-up companies, to major, publicly held corporations. Our clients are engaged in a variety of businesses including consumer products, chemicals, semiconductors, computers and software, telecommunications, oil and gas, membrane systems, medical and life sciences, financial services, electronics, foods and beverages, clothing, retail services, pharmaceuticals, biomedical enterprises, print and electronic publishing and entertainment services. Mr. McAllister, who heads up the Trademark Practice Group, practices in all areas of trademark and copyright law. Before joining OGRP, Mr. McAllister was Trademark and Copyright Counsel for NYNEX Corporation. He has extensive experience counseling clients on all facets of protecting U.S. and foreign trademark portfolios.
08 INTA
North America & Caribbean section.indd 3
24/11/10 15:30:21