Experience
Patent Preparation and Prosecution
Our firm worked with a large company in the high technology industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio.
Patent Preparation and Prosecution
Our firm worked with a large company in the high technology industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio.
Patent Prosecution and Opinion Drafting
Our firm represented a computer printer and electronics company in the drafting of patents and prosecution of patent applications related to consumer electronic products such as printers (laser, ink jet, etc.), scanners and all-in-one units, ink and print head design.
Prosecuted multi-million dollar trademark action and defended counterclaim
We represented the owner of a $400 million business enterprise in prosecuting a trademark action. We contended that the defendant, who previously had claimed to be in a partnership with our client before the court dismissed his theory, was infringing upon our client’s trademarks. We proved that the defendant had no evidence to support his claims that license fee payments he had made were “capital contributions” to our client and their alleged partnership. A federal judge ruled that the defendant had infringed upon our client’s trademark and granted summary judgment to our client. He also entered a permanent injunction to prevent the defendant from using our client’s trademarks.
Protecting New Corporate Identity and Innovative R&D
Protecting the Future
Innovation is the driving force behind the growth and sustainability of any business, especially one within a specialized industry. Growing your brand and reputation, as well as protecting your ideas, is an ongoing challenge that requires a thorough understanding of not only the law, but also the industry and the marketplace.
As a former subsidiary of BP Company North America, Tri-Arrows Aluminum faced plenty of challenges in building and safeguarding their new identity after being purchased by a consortium of five Japanese companies in 2011. Following the sale, they turned to Dinsmore, who assumed responsibility for managing existing patent applications and prosecution through the U.S. Patent Office. We have also teamed with Tri-Arrows to begin trademark efforts, working with the U.S. Trademark Office to establish and protect their name and brand in the marketplace. Our attorneys have worked exhaustively to learn the aluminum industry, including the market, price points and competition, in order to strategically place Tri-Arrows on a path to long-term success.
Beyond patents and trademarks, we also have steered Tri-Arrows through a number of research and development agreements, protecting their exploration into ventures that have the potential to impact the aluminum industry. Tri-Arrows’ forward-thinking mentality, combined with Dinsmore’s support and guidance, has enabled them to focus their R&D efforts on both the materials used and the processes employed as they search for competitive advantages.
Working in an industry where significant steps are sometimes hard to come by, Tri-Arrows has employed an aggressive mindset toward protecting their technology and intellectual property, knowing that any competitive advantage could be the determining factor in their success. Dinsmore has become a true partner of Tri-Arrows in this effort, building a level of trust that has paved the way for their continued growth.
Innovation is the driving force behind the growth and sustainability of any business, especially one within a specialized industry. Growing your brand and reputation, as well as protecting your ideas, is an ongoing challenge that requires a thorough understanding of not only the law, but also the industry and the marketplace.
As a former subsidiary of BP Company North America, Tri-Arrows Aluminum faced plenty of challenges in building and safeguarding their new identity after being purchased by a consortium of five Japanese companies in 2011. Following the sale, they turned to Dinsmore, who assumed responsibility for managing existing patent applications and prosecution through the U.S. Patent Office. We have also teamed with Tri-Arrows to begin trademark efforts, working with the U.S. Trademark Office to establish and protect their name and brand in the marketplace. Our attorneys have worked exhaustively to learn the aluminum industry, including the market, price points and competition, in order to strategically place Tri-Arrows on a path to long-term success.
Beyond patents and trademarks, we also have steered Tri-Arrows through a number of research and development agreements, protecting their exploration into ventures that have the potential to impact the aluminum industry. Tri-Arrows’ forward-thinking mentality, combined with Dinsmore’s support and guidance, has enabled them to focus their R&D efforts on both the materials used and the processes employed as they search for competitive advantages.
Working in an industry where significant steps are sometimes hard to come by, Tri-Arrows has employed an aggressive mindset toward protecting their technology and intellectual property, knowing that any competitive advantage could be the determining factor in their success. Dinsmore has become a true partner of Tri-Arrows in this effort, building a level of trust that has paved the way for their continued growth.
Rebranding of Name
We conducted extensive reviews of potential names for the organization and actively worked with our client to narrow down its options and eventually select its new name. Once selected, we successfully prosecuted an application for the new logo with the US Trademark Office to registration.
Registered Color Mark for International Equipment Manufacturer
When a North American-based equipment manufacturer with international operations wanted to register and protect a color distinctive of its product line, in-house counsel turned to Dinsmore to guide them through the process. Registration of unconventional marks, such as single-color marks, requires the assimilation and creative presentation of a large amount of brand history, sufficient to establish that the color is as integral to the brand-owner’s identity as its corporate name and principal word marks. We registered the client’s color mark in the U.S., then liaised with foreign counsel to accomplish the same for our client in multiple jurisdictions abroad. The registration of a color mark is a rare and valuable accomplishment, which enables the brand owner to protect and strengthen its brand for many years to come.
Representative IP Litigation Cases
Cascades Publishing Innovation, LLC v. Reed Elsevier, Inc., 3:13-cv-00422-WHR (SD OH 2013)
Cirrex Systems, LLC v. Ocean Optics, Inc., 1:12-cv-1769 (ND GA 2012)
Milacron, LLC, et al. v. Stough Tool Sales, et. al., 1-12-cv-119 (SD OH 2012)
Ball Metal Beverage Container Corp. v. Crown Packaging Technology, Inc., et al., 3:12-cv-0033 (SD OH 2012)
Diba Industries, Inc. v. IDEX Health & Science, LLC, 3:12-cv-01248 (DCT 2012)
AOK Global Products, LTD, et al. v. Ferno-Washington, Inc., 1-12-cv-267 (ED VA 2012)
Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-135 (WD KY 2011)
Ionic Communications Group, Inc v. Ionic Collective, LLC, 1:11-cv-00766 (SD OH 2011)
Chikezie Ottah v. First Mobile Technologies, 1:10-cv-07296 (SD NY 2010)
L.F.P. IP, LLC, et al. v. Hustler Cincinnati, Inc., 1:09-cv-913 (SD OH 2009)
T. Marzetti Company v. Roskam Baking Company, 2:09-cv-584 (SD OH 2009)
The Container Store, Inc. v. Schulte Corporation, et al., 4:08-cv-00410 (ED TX 2008)
Alps South, LLC v. The Ohio Willow Wood Company, 8:08-CV-1893-T-35MAP (MDFL 2008)
Stiefel Laboratories, Inc. v. Pracso, LLC, 07-0781, (SD OH 2007)
Prasco, LLC v. Stiefel Laboratories, Inc., 07-0135, (SD OH 2007)
NCR Corporation v. Abercrombie & Fitch Co., 06-0919, (SD OH 2006)
NCR Corporation v. The ATM Exchange, 05-0383, (SD OH 2005)
Daniel F. Fitzgibbon, Jr. v. Martin County Coal Corporation and Sidney Coal Company, Inc., 05-0036, (ED KY 2005)
Crown Packaging Technology, Inc., et al. v. Ball Metal Beverage Container, Corp., 05-0281, (SD OH 2005)
Pisces by OPW, Inc. v. Advanced Polymer Technology, Inc., 04-0178 (SD OH 2004)
Milacron, Inc. v. Graham Engineering Corporation, 02-2142, (SD OH 2002)
Total Containment, Inc. v. Osborne, et al., No. 96 7241 (ED PA 1997)
PISCES By OPW v. Total Containment, No. C-1-01-0063 (SD OH 2001)
Environ Products v. PISCES By OPW, No. 02-865 (ED PA 2002)
PISCES By OPW v. Environ Products, No. C-1-02-292 (SD OH 2002)
PISCES By OPW v. Total Containment, No. CIV-02-0543 (SD OH 2002)
PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (SD OH 2004)
Cirrex Systems, LLC v. Ocean Optics, Inc., 1:12-cv-1769 (ND GA 2012)
Milacron, LLC, et al. v. Stough Tool Sales, et. al., 1-12-cv-119 (SD OH 2012)
Ball Metal Beverage Container Corp. v. Crown Packaging Technology, Inc., et al., 3:12-cv-0033 (SD OH 2012)
Diba Industries, Inc. v. IDEX Health & Science, LLC, 3:12-cv-01248 (DCT 2012)
AOK Global Products, LTD, et al. v. Ferno-Washington, Inc., 1-12-cv-267 (ED VA 2012)
Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-135 (WD KY 2011)
Ionic Communications Group, Inc v. Ionic Collective, LLC, 1:11-cv-00766 (SD OH 2011)
Chikezie Ottah v. First Mobile Technologies, 1:10-cv-07296 (SD NY 2010)
L.F.P. IP, LLC, et al. v. Hustler Cincinnati, Inc., 1:09-cv-913 (SD OH 2009)
T. Marzetti Company v. Roskam Baking Company, 2:09-cv-584 (SD OH 2009)
The Container Store, Inc. v. Schulte Corporation, et al., 4:08-cv-00410 (ED TX 2008)
Alps South, LLC v. The Ohio Willow Wood Company, 8:08-CV-1893-T-35MAP (MDFL 2008)
Stiefel Laboratories, Inc. v. Pracso, LLC, 07-0781, (SD OH 2007)
Prasco, LLC v. Stiefel Laboratories, Inc., 07-0135, (SD OH 2007)
NCR Corporation v. Abercrombie & Fitch Co., 06-0919, (SD OH 2006)
NCR Corporation v. The ATM Exchange, 05-0383, (SD OH 2005)
Daniel F. Fitzgibbon, Jr. v. Martin County Coal Corporation and Sidney Coal Company, Inc., 05-0036, (ED KY 2005)
Crown Packaging Technology, Inc., et al. v. Ball Metal Beverage Container, Corp., 05-0281, (SD OH 2005)
Pisces by OPW, Inc. v. Advanced Polymer Technology, Inc., 04-0178 (SD OH 2004)
Milacron, Inc. v. Graham Engineering Corporation, 02-2142, (SD OH 2002)
Total Containment, Inc. v. Osborne, et al., No. 96 7241 (ED PA 1997)
PISCES By OPW v. Total Containment, No. C-1-01-0063 (SD OH 2001)
Environ Products v. PISCES By OPW, No. 02-865 (ED PA 2002)
PISCES By OPW v. Environ Products, No. C-1-02-292 (SD OH 2002)
PISCES By OPW v. Total Containment, No. CIV-02-0543 (SD OH 2002)
PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (SD OH 2004)
Research and Licensing Agreements
Our firm represented a large company in the automotive industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio, and in preparing and negotiating research agreements with universities. We assisted in implementing cost-effective procedures for conducting patentability analyses and patent preparation for a stream of invention disclosures.
Tech-Licensing Agreements for “Robot Combat League” Television Series
We provided counsel, analysis and revisions to multiple development agreements between our client, Smart Dog Media, (a production company) and a robotic engineering company which was developing robots and robotic technology for the television series, “The Robot Combat League,” currently televised on the Syfy Channel.
Trademark and Copyright Experience
Summary:
- Has prosecuted hundreds of U.S. trademark applications, and liaises extensively with foreign counsel for prosecution of trademark applications abroad. Maintains extensive trademark portfolios for large technical and consumer goods corporations, as well registrations for individuals.
- Conducts and analyzes trademark availability searches.
- Has represented numerous clients in appeals and inter-partes proceedings before the Trademark Trial and Appeal Board.
- Has counseled clients extensively on copyright, and routinely registers claim of copyright on behalf of clients.
- Has extensive experience in the construction, assertion and defense of trademark and copyright infringement claims.
- Counsels clients with respect to, and prepares, licenses for all types of intellectual property.
Trademark Infringement Litigation
We represented our client’s organization in a lawsuit filed against his brother and his brother’s company for infringement of a trademark. After successfully defending through trial against a counterclaim that our client’s brother was a partner in our client’s business empire, the Court granted summary judgment in our client’s favor on the trademark claims in October 2011. A permanent injunction was entered against our client’s brother and his organization shortly thereafter.
University Advanced Research Agreements
We represent an automotive manufacturer in negotiating and completing numerous university advanced research agreements and cooperative research and development agreements, in which we leveraged a unique combination of Intellectual Property and Corporate transactional experience.
Worldwide Rebranding
We conducted extensive, worldwide searches and reviews of potential names selected by our client for its rebranding. We then coordinated the filing and prosecution of applications for the new name 15 different countries, including the United States, where we successfully defended the marks against claims of a potential likelihood of confusion with another mark.
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