Branding, Advertising and Copyright

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Baker Botts’ Branding, Advertising, and Copyright (“BAC”) team offers a comprehensive suite of services to help you understand the legal landscape in a complex and constantly evolving field.  We partner with our clients to develop, protect, maintain, and enforce their trademarks, trade dress, and copyrights, and act as their trusted advisors when building and executing on advertising and marketing initiatives. Baker Botts’ dedicated BAC team offers a sophisticated understanding of the nuanced — and often public-facing — intellectual property and advertising issues that impact business decisions, including trademark and copyright clearance, prosecution, enforcement, licensing, and litigation. Our experience spans industries ranging from energy to apparel, and from food and beverage to telecommunications, supporting both long-established and newer startup clients. We are proud to be on the cutting edge of today’s emerging legal issues, with recent engagements concerning generative artificial intelligence, greenwashing and greenhushing, NFTs and blockchain technology, product configuration trade dress, software copyrights, counterfeiting, gray market goods, and data scraping.

Baker Botts’ broad and business-focused experience is why some of the most recognizable companies in the world trust Baker Botts with their most valuable asset: their reputation.

Protecting Your Brand

With decades of dedicated experience in trademark prosecution and counseling, Baker Botts’ attorneys, paralegals, and staff provide clients with insights on all aspects of protecting their brand through trademark law, in strategizing to file and maintain trademark applications and registrations, and enforcing our clients’ trademark rights, as well as defending against claims brought by aggressive trademark owners. With a clear understanding of our clients’ trademark needs, we are situated to provide guidance on related matters, including rights of publicity/privacy, product configurations and trade dress protection, among a host of other intellectual property related issues.

  • Clearance and Prosecution. Our clients are well served by the depth of our experience in performing preliminary knock-out scans and trademark clearance, filing and prosecuting new applications, and seeing those applications through to registration. We have worked with virtually every type of mark, including product configurations, packaging design, exterior signage, interior trade dress, scent marks, sound marks, and motion marks, and we are well versed in the various procedural options available throughout the registration process.
  • Trademark Portfolio Maintenance. Baker Botts efficiently manages the global trademark portfolios of many Fortune 500, startup, and non-profit companies across industries, including communications, finance, energy, food and beverage, pharmaceutical, technology, consumer products, and retail services with some portfolios consisting of thousands of trademarks. The BAC team are experts at efficiently managing small- and large-scale worldwide portfolios in cost effective ways to ensure that clients have peace of mind in the maintenance of their worldwide trademark rights and protection over their brands.
  • Policing. Owning great IP is not enough. At Baker Botts, we help our clients protect their investments through counseling, policing efforts, including reviewing watch services and reporting on potential infringements, sending cease and desist letters, negotiating settlements, coexistence agreements and consents, and, when necessary, engaging in litigation before administrative tribunals, trademark offices or the courts. With an eye towards each client’s priorities and goals for intellectual property enforcement, we work collaboratively to lay the foundation for robust brand protection, deter infringing activities, and take  legal action, where necessary.

Branding, Advertising and Copyright Litigation

Complementing its prosecution work, Baker Botts’ BAC team provides valuable insight when branding, advertising and copyright issues are raised in court, blending robust subject-matter experience with strategic litigation experience from pre-filing investigative work and analyses through trial. With significant experience representing both plaintiffs and defendants in litigation, the Baker Botts team is well versed in viewing disputes from all sides and advising on comprehensive and efficient paths forward.

  • Trademark, Unfair Competition and Lanham Act Litigation. Trial work involving high stakes trademark, trade dress, and advertising issues is one of Baker Botts’ key strengths. In addition to Lanham Act and trademark infringement cases, our litigation experience includes license disputes, breaches of contract, trade secret and trade dress disputes, advertising disputes, counterfeiting and gray market issues, and other disputes involving intellectual property. We are well-versed in working with experts to offer helpful survey and other evidence to support our clients’ claims and defenses.
  • Domain Names and Internet Issues. Baker Botts is experienced in handling a variety of internet disputes, including domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”).  We work closely with clients to establish domain name monitoring procedures that focus efforts on targeting real issues impacting the bottom line without expending resources unnecessarily.
  • Administrative Proceedings. We have prosecuted and defended opposition and cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office and before its international equivalents for decades. We have litigated over a thousand TTAB proceedings, including trials. We are also adept at handling advertising disputes before the National Advertising Division (“NAD”) of the Better Business Bureau, as well as appeals to the National Advertising Review Board (“NARB”).
  • Copyright Enforcement and Litigation. Baker Botts’ attorneys offer vital insights to clients seeking to litigate copyright rights in court, helping to prosecute strong copyright registrations, enforce copyrights in the event of infringement, and defend against claims of infringement and copyright trolls.

Advertising and Marketing

Baker Botts boasts a knowledgeable and sophisticated advertising and marketing practice and is comprised of lawyers who litigate and render advice on various aspects of advertising and marketing law and related issues. We recognize the myriad of new ways our clients advertise their products and services, and have worked closely with clients to negotiate sponsorship agreements, cross-marketing and promotional content agreements, licensing deals, talent agreements, and commercial co-venture agreements in industries ranging from apparel to beverages, and from consumer electronics to wireless services.

  • Advertising Clearance. We conduct soup-to-nuts review of proposed broadcast, print and online campaigns to ensure compliance with the complex web of laws, rules and regulations related to advertising, including FTC guidance and the Green Guides.
  • Contests, Sweepstakes, and Promotions. We offer comprehensive services to clients wishing to operate contests, sweepstakes and promotions, including drafting official rules in line with statewide regulations, counseling on entry mechanisms, preparing privacy and publicity releases, rights to user-generated content, and advising on cross-promotional agreements.
  • Claim Substantiation. Whether a product efficacy claim, a price comparison or a sensory claim, we are experienced in working with clients to ensure they develop solid, defensible substantiation to make truthful and accurate statements in their advertising and marketing initiatives. We are also adept at challenging and defending against advertising claims of competitors, whether through cease and desist letters, NAD proceedings or federal litigation.
  • Digital Advertising and Social Media Counseling. We understand the digital advertising landscape and help clients lawfully navigate it while effectively engaging consumers. We review and advise on social media best practices, render advice on influencer marketing, provide guidance on native advertising, and help clients effectively capture the attention of their target customers through advertising efforts while respecting consumers’ privacy.
  • Sponsorships and Cause-Related Marketing. We have worked closely with clients to negotiate sponsorship agreements, trademark licensing deals, talent agreements, and commercial co-venture agreements in industries ranging from apparel to beverages, and from consumer electronics to wireless services.

Copyright

Our lawyers offer substantial experience in copyright prosecution and enforcement across diverse categories of copyrightable works, including technology, mobile applications and software, toys, artwork, fabric and knitwear designs, fashion accessories, architectural design, music, jewelry, literary and sculptural works, and advertising and packaging materials. We advise clients on a wide range of copyright matters, including whether, when, and how to obtain federal registrations, licensing and permissions, infringement, and fair use. We counsel clients on topics relating to copyright law’s ever-changing jurisprudence and landscape, including the exciting frontiers of copyrightability in NFTs, the metaverse, generative artificial intelligence, and social media, as well as copyright-related statutes including the Digital Millennium Copyright Act (“DMCA”) and the Audio Home Recording Act.

  • Fair Use.  Our team consists of several thought leaders on fair use in copyright who have written many articles and given presentations on this ever-evolving topic. We work with clients to evaluate cases of potential copyright infringement and where fair use may apply, even where the lines are sometimes blurred.
  • Artificial Intelligence. Baker Botts is closely monitoring developments, including with the Copyright Office, on the copyrightability of AI-generated works, as well as implications for providers of AI-related services. Staying current in this space, we counsel clients on potential liability issues, with the goal of helping clients understand their rights in this developing area.

Education and Counseling

Beyond handling legal issues faced by clients, the Baker Botts BAC team knows that education matters, especially on such nuanced topics as trademark, copyright, advertising and marketing. We are always willing to explain the law behind the advice we provide to clients, whether informally or through more formal presentations and trainings. We have also designed and presented comprehensive trainings to business and in-house legal teams encompassing legal frameworks and practice notes on myriad issues, and we are always updating these trainings and staying on top of latest developments. A selection of recent trainings is listed below:

  • AI Copyright and Enforcement Risks
    • Use of Audio Recognition Technology
    • Discussion on Copyright Protection over AI-Created Works
  • Selecting and Using Strong Trademarks
    • Tips for Creating Distinctive and Unique Trademarks
    • Fair Use of Trademarks in Comparative Advertising
    • Parody and Fair Use of Trademarks
  • Advertising and IP “101”
    • Guidelines for Drafting Contests and Sweepstakes
    • FTC Guidelines on Endorsements and Testimonials
    • Social Media Influencing
  • Intellectual Property “101”
    • Trademark and Trade Dress Infringement
    • Trademarks and Non-Fungible Tokens (NFT’s)
    • Copyright Infringement and Fair Use
    • Design Patent Infringement and Remedies
    • Using Intellectual Property in Vendor Agreements
  • Marketing Contracts in a Rapidly-Changing Landscape
    • Advertising and Marketing Claims, Omissions, and Disclaimers
    • Environmental, ESG, Greenwashing Claims
    • Influencer Marketing Agreements and Best Practices
    • Addressing Artificial Intelligence (AI) in Contracts and Best Practices
  • Copyrights and Fair Use
    • Fair Use Guidelines
    • Resources for using images, books, and music in the public domain