Pirkey Barber is one of the largest firms in the United States focusing on the fields of trademark, copyright, and unfair competition law.
Pirkey Barber is one of the largest firms in the United States focusing on the fields of trademark and copyright law. Representing clients from a variety of industries, our attorneys are well-versed in both prosecution and adversarial matters. We help clients large and small establish, protect, defend, and enforce their rights as owners of valuable marks including some of the most well-known trademarks in the world. Located in Austin, Texas, Washington, D.C. (Tysons), and California (Bay Area), Pirkey Barber operates throughout the United States and abroad.
Our lawyers have represented clients in hundreds of trademark cases across the United States in federal courts and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. From straightforward cases to highly nuanced issues without clear precedent, we provide counsel based on years of specialized experience.
Trademark Counseling, Prosecution, and Portfolio Management
We have experience in all facets of trademark clearance and prosecution. We counsel clients regarding brand selection and help develop and implement global trademark strategy. On a daily basis, our attorneys perform preliminary trademark searches; analyze full searches performed by outside vendors; work with the Patent and Trademark Office through all aspects of registration, from filing applications through ex parte appeal; and manage global trademark portfolios of all sizes.
We regularly counsel clients seeking to acquire, protect, and enforce copyright assets. Our attorneys frequently advise clients with respect to securing and documenting ownership of copyright assets, registering copyrights with the U.S. Copyright Office, assessing potential fair use claims, and negotiating licenses and other transactions involving copyrights. The firm also litigates copyright disputes on behalf of both plaintiffs and defendants. We assist clients with submitting takedown notices under the Digital Millennium Copyright Act (DMCA), and advise clients in responding to such notices.
Licensing and Other Transactions
We counsel clients on wide variety of IP-related transactions. Our representations range from consulting on specific issues in an agreement to actively negotiating all aspects of the transaction. We have particular expertise assisting clients with in-bound and out-bound license agreements, creative content and character license agreements, software license agreements, trademark coexistence and concurrent use agreements, and the development and implementation of intracompany licensing structures and intellectual property holding companies.
We have broad experience in evaluating and counseling clients in a variety of trade dress and nontraditional marks issues across industries. Our trade dress experience ranges from counseling clients on domestic and international prosecution and rights acquisition strategies for product configurations, trade dress, and non-traditional marks, to enforcing these rights in federal court. Illustrative trade dress and nontraditional mark experiences include assisting an international oil and gas company with the protection and enforcement of trade dress rights in exterior store trade dress, assisting well-known consumer products companies with protecting and enforcing rights in their color marks, representing a well-known university in protecting the design of its iconic building, and for a major accessories client, securing robust trademark and copyright protection in jewelry design.
Mediation and Alternative Dispute Resolution
In addition to his trademark litigation practice, founding member Lou Pirkey is active in alternative dispute resolution and has served as a neutral in more than 40 trademark disputes. He is a charter member of the International Trademark Association’s Panel of Neutrals (now the INTA Panel of Trademark Mediators). Rodney Caldwell is also a member of the Panel of Trademark Mediators and has served as a neutral in trademark disputes and also as an arbitrator in a complex patent case managed by the American Arbitration Association International Centre for Dispute Resolution.
Advertising Counseling and False Advertising Litigation
Brand owners are increasingly in need of advice on best branding practices in a world where the forms of, and parameters for, advertising are constantly being probed and redefined. Within this evolving landscape of legal risk and opportunity, we advise our clients on their abilities to robustly advertise their products and services while preventing competitors from falsely advertising competitive products. In addition to litigating complex competitive advertising disputes and advising on advertising claims and substantiation, we guide our clients on branding guideline compliance, social media opportunities and limitations, sponsorship, influencer, and endorsement agreements, talent and celebrity contracts, privacy and publicity rights, disclaimers and disclosures, and confidentiality and non-disclosure agreements.
Social Media and Other Online Branding Issues
Our goal is to help our clients address their compliance needs while optimizing their use of social media. In addition to working with clients to combat, infringing, false advertising or deceptive practices and advising on structure and compliance issues as well as promotion and endorsement campaigns, we advise on policies that protect intellectual property rights on social networks and in the social media context. We also counsel clients on e-commerce issues including co-branding, co-marketing, and end user agreements.
We also handle a variety of wider issues unique to the online space, from clearance projects involving marks designed for widespread internet use (and related domain names) to policing and litigation matters where the infringing uses are internet focused. We deal directly with internet-focused companies such as search engines (e.g., Google), advertising content providers (for ads appearing in search engine results, monetized parking pages, and elsewhere), registrars that offer “private” domain name registration services (such as GoDaddy/Domains by Proxy), website hosting companies (for infringing content on websites, DMCA take-down requests, etc.), social media sites (e.g., Facebook, Twitter, and Instagram) and sites offering software applications for smartphones and tablets (e.g., the App Store). We counsel our clients concerning developments with the generic top level domains, and are highly experienced in handling domain name disputes under ICANN’s policies, including the UDRP.
Guarding against counterfeiters is critical for businesses in today’s global marketplace. We regularly advise clients on proactive anti-counterfeiting strategies and risk-mitigation practices, from utilizing worldwide watches and customs recordation to training customs officials to stop the import of our clients’ counterfeit goods. Additionally, with an established international network of investigators, counsel, and law enforcement officials, we are uniquely positioned to track, identify, and act against counterfeiters throughout the world.
Cryptocurrency and NFTs
The increasing popularity and functional applications of cryptocurrencies, as well as innovative methods to create content through non-fungible tokens (NFTs), have enabled new business opportunities and ventures for our clients in an emerging marketplace. In addition to navigating novel prosecution issues facing clients in cryptocurrency and blockchain technology fields, we counsel our clients on enforcement issues in an increasingly crowded marketplace. Our clients in this space include companies offering blockchain software and mobile applications, cryptocurrency financial services, NFT marketplaces and collectibles, and entertainment products marketed through NFTs. We also advise on policing and enforcement matters in a highly decentralized online environment, and often work with clients applying blockchain solutions to traditional industries.