A Proven Record of Getting Results for Clients in IP Disputes of all Types
Competing effectively in a dynamic, tech-driven economy requires more than building the proverbial better mousetrap. As a business owner or manager, you know that successful competition also requires the ability to protect and defend your intellectual property interests. It's not enough just to have a trademark, patent, copyright or noncompete agreement. You must police it.
At Kerr, Hendershot & Cannon, P.C., we have the experience and depth of knowledge to help you create, implement and enforce the legal protections that your business needs. Our firm has a proven record of getting results for clients in IP disputes of all types, including confidentiality agreements, licensure agreements, noncompetes, trademarks and copyrights. We have been handling intellectual property litigation effectively for 25 years.
If your company is facing a dispute about intellectual property, it is important to be proactive in getting a lawyer to assert or defend your rights. Call 866-398-1856 or contact us online to set up a confidential consultation about your case. From our office in Houston, we serve clients throughout Texas.
How We Tackle IP Disputes
Our job is to take your difficulties and prepare them thoroughly and aggressively for litigation - whether that involves filing a lawsuit or defending you against one.
The specific issue may vary. It could involve ownership of intellectual property when a business dissolves. It could concern copyright infringement, theft of trade secrets or the enforcement of a noncompete agreement. No matter what the specific issue, however, our lawyers take the bull by the horns and proactively look for ways to protect our clients' best interests.
We are experienced at defending clients against patent infringement lawsuits by patent trolls. Our firm is familiar with new Supreme Court decisions regarding IP matters. We understand that the way to shut down a patent troll is through an aggressive defense, and we know how to use evolving law to obtain declaratory judgments in your favor.
Of course, the approach we take is always customized to the facts of each unique case and based on a keen understanding of the client's goals and a clear-sighted assessment of the legal landscape.
What Type of Property or Business Interest Do You Need to Protect?
Our firm has extensive experience helping clients resolve challenges and take advantage of opportunities concerning intellectual property. This includes:
- Ownership issues when a business is dissolved, sold or undergoes major changes: When business partners decide to reorganize, close or address major changes to their business and relationships, deciding who owns what can be contentious. Even if partners seek to part amicably, disagreements can easily arise. We can help you assert your right to your fair share of trademarks, copyrights, patents and other forms of intellectual property - even if your partners have tried to misappropriate them in some way.
- Copyright, trademark or patent infringement: The rise of the Internet has led to sharp increases in the number of disputes about unauthorized use of protected property. Our attorneys represent companies that include a vast spectrum of sizes and industries. We know how to prosecute or defend against a claim and to determine which remedies to seek in infringement cases, as well as what types of damage claims are warranted.
- Theft of trade secrets or proprietary information: The Texas Uniform Trade Secrets Act protects information that gives one company a competitive advantage over another. We represent both defendants and plaintiffs in cases involving alleged theft, misappropriation or unauthorized use of trade secrets.
- Noncompete agreements: Noncompete clauses or agreements that restrict an employee's ability to work for a competitor in a certain area for a specified period of time have become increasingly common in many industries. We are well-versed in the evolving nature of Texas' noncompete laws. We aggressively protect your interests whether you are accused of violating an agreement or you are seeking to enforce one.
- Confidentiality agreements: These agreements (also called nondisclosure agreements) arise in various commercial contexts, such as when two companies are considering entering into a licensing agreement or other joint venture. We represent clients seeking to enforce or challenge these agreements and are well-versed in temporary restraining orders, temporary injunctions and permanent injunctions.
In these and all other cases that we handle, our goal is always to use our deep-seated legal knowledge and valuable practical experience to guide you toward a desirable outcome. Our firm is also adept at helping clients avoid litigation. But when litigation comes, we do not let it become a runaway bull. We take the bull by the horns and marshal our forces to assert or protect your best interests.
Defending Against Patent Infringement Claims
Patent infringement claims are by nature very different from what you will face in an average legal dispute. At Kerr, Hendershot & Cannon, P.C., we understand this. We know exactly how to defend a business facing what is, in effect, a "shake down" from a patent troll or other entity that has brought a claim against you based on an invalid patent.
Steps We Take in Defending Against Patent Infringement Claims
- With the motion to dismiss, we determine whether there is a basis to request that the judge dismiss the claim for the patent's lack of validity. This is done under Rule 12(b)(6) of the Federal Rules of Civil Procedure.
- The plaintiff's infringement contentions are subject to strict court rules and certain legal requirements. We will attack these preliminary infringement contentions (PICs) to the extent that they do not comply, so that they are stricken.
- We file our invalidity contentions with the court, which include an explanation as to why the patent is invalid because it represents un-patentable subject matter, or is invalid under the doctrines of prior art, obviousness, or indefiniteness.
- In the Markman hearing, we will ask the judge to define the material terms and words in the claims so that their construction falls in the best interest of our client. The claims as they are defined (broadly or narrowly) can be essential in defeating the patent infringement claim.
- If we determine that there is a basis to argue, as a matter of law, that there is no issue of material fact, we will file a motion for summary judgment and ask the court to dismiss the case.
On our separate page dedicated to information about defending against patent infringement claims, you will find these steps described in much more detail. Visit our dedicated page on defending patent infringement claims to learn more.
Contact Kerr, Hendershot & Cannon, P.C.
At Kerr, Hendershot & Cannon, P.C., we vigorously defend our clients against patent trolls and other entities that bring claims based on invalid patents. Our approach is to take care of the problem now, through the means of aggressive legal defense, so that you can put the problem behind you for good. Simon ("Trey") Hendershot, managing shareholder, is an attorney with more than 25 years of experience in the representation of clients facing intellectual property disputes. To arrange a confidential consultation, call 866-398-1856.
Defending Against Complaints to Cancel Trademarks
Cancellation of a Trademark: What You Are Facing
Complaints to cancel trademarks generally arise when you have been using a trademark in your business for some time and the plaintiff later discovers your use of the trademark. These types of complaints take place exclusively within the jurisdiction of the United States Patent and Trademark Office, or USPTO.
In the Petition for Cancellation, the plaintiff will make specific allegations as to why the USPTO should cancel your mark. There are no other remedies for the plaintiff; in defending against complaints to cancel trademarks, you do not face money damages or an injunction ordering you to stop your use of the trademark, even if you lose the case. The USPTO has jurisdiction over trademark registration only, unlike the federal courts, which have jurisdiction over infringement suits.
However, cancellation is a risk, and this could have obvious repercussions on the success of your business, depending on the circumstances in play. In the typical case, the plaintiff generally seeks to have your trademark canceled with the goal of asserting its own trademark rights.
Absolute and Relative Grounds in Trademark Law
A number of issues may be raised in a case involving the possibility of trademark cancellation. These are absolute grounds and relative grounds; in a case before the USPTO, the presence or absence of these grounds, along with how they are interpreted in relation to the particular mark in question, will largely determine whether the mark will be canceled.
Absolute grounds include:
- Descriptiveness (including geographic descriptiveness), which represents a continuum from inherently distinctive to merely descriptive.
- Generic trademark, in which the mark no longer stands for a company's unique offering, for instance, but for the product or service itself in the wider marketplace.
- The functionality doctrine, in which the trademark cannot be used to protect specific features of the service or product.
- Bad faith, in which a trademark filing is originally executed in bad faith and/or fraud, such as prior knowledge of the existence of a competitor's use of a trademark.
Relative grounds (which can be more difficult to prove) include:
- The likelihood of confusion, in which the USPTO weighs the respective strengths and similarities (including where each party in the case conducts business) of the two marks.
- Priority right, which refers to being the first to file a trademark application.
- Bad faith filing, generally regarding the original trademark application, which contains an oath, sworn under penalty of perjury, that no other entity is using the applied-for trademark.
- Business names, domain names, or trade names.
- Well-known and famous marks, such as Coca-Cola or Thomas Edison.
Contact Kerr, Hendershot & Cannon, P.C.
At Kerr, Hendershot & Cannon, P.C., we will aggressively defend you against a complaint to cancel a trademark before the USPTO. Simon ("Trey") Hendershot leads the firm's business law practice and has significant experience (more than 25 years) defending his clients against complaints to cancel trademarks and similar disputes involving intellectual property. Call 866-398-1856 for a confidential consultation.
Defending Against Trademark Infringement Claims
In cases of alleged trademark infringement (in contrast to trademark cancellation, as discussed in the section above), the holder of a registered trademark files a lawsuit in federal court, rather than with the U.S. Patent and Trademark Office. In trademark infringement cases, plaintiffs have a wider set of remedies available to them, including injunctive relief and monetary damages.
At Kerr, Hendershot & Cannon, P.C., we aggressively defend our clients against trademark infringement claims in federal court, and we have the knowledge and experience to do so effectively.
In this section, below you will find a description of the potential liability you face in a trademark infringement claim, as well as the specific defenses we may be able to raise on your behalf.
Legal Liability and Potential Damages in a Trademark Infringement Case
In order to prevail on an infringement claim under the Lanham Act, the plaintiff must show your use of the trademark, its use in commerce, the likelihood of confusion in the marketplace, and account for damages caused as a result of the alleged infringement.
If you have been sued for trademark infringement, the following possible consequences apply:
- Injunctive relief, meaning a court order to stop or limit your use of the mark (this can be ordered prior to final case resolution)
- Monetary damages (with the possibility of treble damages in some circumstances)
- A required accounting of profits and disgorgement of profits made by virtue of your infringing use of the mark
- An order for you to pay the plaintiff's attorney fees (allowed only in exceptional cases)
Specific Defenses Against Trademark Infringement Claims
The most common defense is that your use of a trademark bears no risk of confusion in the marketplace. One example of this is where your company does business in one state and the plaintiff does business in another state. In this example, the risk of confusion is very low.
Other defenses include:
- Laches: involving the plaintiff's unreasonable delay in bringing suit.
- Estoppel: involving the plaintiff's tacit submission to your use of a mark, such as failing to file a timely objection with the USPTO.
- Unclean hands: involving the plaintiff's purposeful conduct, such as creating and using a very similar trademark for the overt purpose of causing confusion in the marketplace.
- Fair use: involving marks that are not quite as distinctive as others, in which other individuals or companies may generally use the word or symbol in other contexts that are not directly competitive (such as fair use of the image of an apple on grocery produce in spite of the existence of Apple Computer's brand logo).
Contact Kerr, Hendershot & Cannon, P.C.
At Kerr, Hendershot & Cannon, P.C., we provide aggressive defense against trademark infringement claims. Simon ("Trey") Hendershot, as managing shareholder and section head of business litigation, is an attorney with more than 25 years of experience in disputes involving intellectual property. For a confidential consultation, please call 866-398-1856.
Our Approach to Protecting Sensitive, Commercially Valuable Information
One way in which our firm's experience shows itself is in sensitivity to how our clients' goals may vary in particular cases. Some clients may see a strategic advantage in pursuing a highly transparent, high-profile resolution to an intellectual property dispute. Others may prefer a much quieter approach, emphasizing negotiation rather than litigation.
Our attorneys have the skill and versatility to deploy whatever tactics are likely to work best for our clients. We will do whatever is necessary to protect your property rights and preserve your reputation. Regardless of how your dispute is resolved, we will let your opponents know that you are prepared to fight them tooth and nail.
How to Know the Right Time to Take Action
Some business disputes come charging into the open like a raging bull at a Texas rodeo. Some may seem to appear like a thief in the night. Others may grow gradually, simmering like a minor irritation, before it becomes clear that something must be done.
Given how much money is often at stake in an intellectual property dispute, it makes sense to take action to resolve the matter sooner rather than later. We protect clients well in advance of IP disputes through noncompete agreements, confidentiality agreements, trademarks, copyrights and more.
For example, if a former employee has started tapping your customer lists and calling on old customers, a call to a lawyer experienced in IP litigation is likely in order.
There are also occasions when the need for action is clearly urgent. If valuable commercial data is about to be wrongfully compromised, we can help you pursue an immediate injunction to stop it.
Schedule a Confidential Consultation About Your IP Concern
Our law firm has the knowledge of both Texas and federal law to confidently assert or defend your rights in any type of intellectual property dispute. Call 866-398-1856 or contact us online for a confidential consultation with an experienced IP litigation attorney.