Intellectual Property & Technology

Protecting your brand, one of the most valuable assets of any franchised business, is an essential part of any successful franchise system. Our Intellectual Property and Technology team helps franchisors protect and enforce their trademarks in the U.S. and abroad, and assists with technology issues including software licensing, social media, data privacy, and e-commerce. We also work with franchisors on compliance with advertising laws.

Our experience in intellectual property issues includes a number of issues common to franchisors:

• Obtain trademark and domain name registration in the U.S. and in more the 160 countries
• Evaluate potential new trademarks to assess the risk of third party infringement claims and the likelihood of successful registration of proposed trademarks
• Develop a strategy for international trademark registration so that international protection is in line with planned development efforts and franchisors’ budgets
• Register, maintain, and manage portfolios of intellectual property assets
• Establish and enforce trademark and service mark standards within franchise systems
• Enforce post-termination covenants against former franchisees which continue to use system signage or other trade dress
• Enforce trademarks and copyrights against third party infringers in state or federal courts, and manage foreign trademark enforcement efforts
• Advise on the protection and registration of written and graphic material in the franchise system, whether protected by copyright or trade secret law
• Draft and negotiate software license agreements with software vendors or between franchisors and their franchisees
• Develop Web-based distribution and marketing systems
• Provide policies for franchise systems in connection with social media and intranets
• Advise franchisors on system standards for use of trademarks by franchisees and third parties on the Web
• Assist franchisors with advertising law compliance, including laws regulating contests and sweepstakes, substantiation and comparative advertising, and word-of-mouth marketing
• Provide Terms of Use and Privacy Policies for franchisor Web sites, and advise on data privacy and information security issues
• Handle domain name disputes using ICANN arbitration procedures