Intellectual Property Litigation
Unfair Competition & Trade
Licensing & Transactions
Domain Name Disputes
Miskin & Tsui-Yip ensures continued
validity and broad protection of our clients’ intellectual
property assets through vigilant monitoring and litigation,
if necessary. Our litigation practice includes all aspects
of intellectual property, including patent, trademark, trade
dress, copyright, trade secret and unfair competition.
Our clients cover most industrial countries throughout the world and may states of the U.S.
We maintain close relations with our local counsels throughout
the country, and we are able to provide our clients with services
covering litigation in all federal districts. We also maintain
contacts with local counsels throughout the world, and commence,
manage and supervise our clients’ foreign trademark and patent
infringement lawsuits and legal matters. We are prepared to
protect, secure and defend our clients’ intellectual
property assets anywhere and anytime the need arises.
Our litigation practice covers all aspects
of intellectual property right enforcements, including patent
invalidity declaratory judgment lawsuits, trademark infringement
and unfair competition, patent infringement, and copyright
infringement. All of the attorneys at our firm are knowledgeable
and experienced in the intellectual property litigation.
Miskin & Tsui-Yip offers a complete
range of patent services, including client counseling on the
development of the concept into a product, patentability opinions,
infringement studies, validity studies, patent filings for
provisional and non-provisional utility applications, patent
filings for design patent applications, prosecution in the
United States Patent and Trademark Office and many foreign
countries, issuance and maintenance. In addition, we consult
& advise our clients on foreign, regional and PCT filings
and filings under different treaties, including the Paris
Convention and the prosecution of these applications.
We also pay special attention to enforcing the patent rights
of our clients through various methods including cease and
desist activities and pre-litigation settlement of patent
disputes. When necessary, enforcing patent rights including
design and utility patent rights in the United States and
Our patent clients enforce rights in the arts of simple to
complex mechanical devices, novelty items, writing instruments,
medical devices, electronic and electrical equipment and components,
business method patents, chemical compounds, toys and games,
general computer products, jewelry, wireless devices and industrial
Miskin & Tsui-Yip offers a complete
range of copyright services, both domestic and foreign. We
provide clients with counseling regarding registration, licensing,
assignments, policing and enforcement of their copyright rights.
We consult and advise clients of their copyrights under the
Berne convention. Our attorneys have experience in complex
problems which often arise due to the complex statutory U.S.
copyright laws. Often trademark issues arise in the copyright
contexts. To be able to fully address these issues, our copyright
attorneys are also trained in trademark law.
We also pay special attention to enforcing the copyright
rights of our clients through various methods including cease
and desist activities and pre-litigation settlement of copyright
disputes. We are experienced in enforcing copyright rights
in the United States, China and Europe.
Our copyright clients seek copyright protection in various
arts including fashion design, fabric design, packaging, magazines,
albums, poems, stories, books, software, and jewelry.
Miskin & Tsui-Yip offers the complete
range of trademark services, in the United States and all
foreign countries, including prosecution and registration,
registration maintenance, Trademark Trial and Appeal Board
proceedings for cancellations and oppositions, dispute resolution
and trademark infringement litigation.
We also provide counseling on availability of our clients’
new and proposed marks and/or trade dress, in the United States
and abroad. We counsel and advise our clients on filing under
the Madrid Protocol, the Paris Convention and other treaties.
Our clients’ marks are protected through our monitoring
and enforcement, including cease-and-desist activities, trademark
oppositions and cancellations, domain name arbitration, and
litigation. We maintain close relationships with our local
counsels from around the world. Some of the countries where
we have enforced our clients’ trademark rights are Russia,
Australia, Germany, Canada, Japan, China, Korea, Taiwan, Singapore,
and the European Community.
Our trademark clients include software companies, food manufacturers,
franchises, owners of the rights to famous names, manufacturers
of dental and medical devices, apparel and accessory manufacturers,
toy manufacturers, international entities expanding into the
U.S. market, and foreign trademark firms.
Our senior Partner, Howard Miskin, was associate counsel
in a landmark trademark case, “Polaroid v. Polarad,”
which is still uniformly cited in current cases in federal
courts and the Patent and Trademark Office.
Miskin & Tsui-Yip’s practice
also includes enforcement of trademarks, patents and copyrights
assets through asserting numerous federal and state statutes
and common law, which protect valuable business information
and competition in the business environment. Some examples
of our past unfair competition or unfair trade practices claims
include litigation based on Federal Unfair Competition, False
Designation of Origin, Palming Off, Reverse Palming Off and
False Advertising under the Lanham Act, State Unfair Competition
laws, covering licensing and assignment of intellectual property
rights, non-disclosure and non-compete agreements, and state
trade secret laws.
Our attorneys are experienced in the various aspects of unfair
competition and trade practices. We seek to maximize our clients’
financial recovery and injunctive relief in intellectual property
actions, by asserting the appropriate rights associated with
statutory and common law unfair competition and trade practices.
Miskin & Tsui-Yip offers a complete
range of intellectual property transactions which include
licensing, mergers and acquisitions, due diligence, opinion
work and transfers.
Our attorneys been invovled in drafting and negotiating various
types of license agreements, from simple to complex, to maximize
the value of our client’s intellectual property. We
assist clients in obtaining valuable and beneficial contractual
terms through our drafting and negotiating experience. We
have also obtained licenses for our clients, to market valuable
Evaluation of the intellectual property invovled is vital
to any transaction. We perform evaluations of the intellectual
property in contexts of licensing, transactions and litigations.
These evaluations are often an important step in the negotiation
of such intellectual property rights.
Mergers and Acquisitions
An important part of any company’s acquisition or divestiture
is the negotiation of the transfer of the intellectual property.
Our attorneys have experience in negotiation and evaluation
of the Intellectual Property involved in Mergers and Acquisitions.
Our attorneys have provided due diligence which includes
the evaluation of the intellectual property at issue and advice
to our clients entering into any business arrangements.
“Trade secrets” are confidential information
that aids your company in obtaining a competitive advantage.
They can be in the form of a formula, such as the formula
for making Coca-Cola®, business method or manufacturing
processes, collections of information such as your customer
list, as well as other proprietary information.
Trade secrets are not patented or copyrighted, but they can
nevertheless be protected as intellectual property valuable
to your company, so long as they remain substantially ‘secret.’
The unique aspect to trade secrets is that they may be protected
in perpetuity as they are not patented or copyrighted.
Miskin & Tsui-Yip can discuss the pros
and cons of trade secrets and aid you or your
company to take the appropriate steps to protect your trade
secrets, and the methods to keep them from becoming common
knowledge. This includes confidentiality, non-disclosure and
non-compete agreements. We counsel our clients on what information
to treat as trade secrets and how to protect such information.
Miskin & Tsui-Yip provides dispute resolution
services for clients whose mark has been misappropriated in
a domain name by a cybersquatter or an entity seeking to capitalize
on our clients’ fame and renown.
The Internet Corporation for Assigned Names and Numbers (ICANN),
a private-sector nonprofit organization, is an internet technical
coordination body that is responsible for the management of
the Internet domain name system. The coordination of internet
domain name assignments, IP address numbers and other parameters
are handled by ICANN. The Uniform Domain Name Dispute Resolution
Policy (UDRP) is a policy adopted by ICANN and agreed to by
all domain name registrants upon securing domain name registration,
which dictates the procedures to be followed for domain name
disputes. Domain name disputes are resolved through UDRP arbitration
and generally result in quick resolution of domain name ownership
Our attorneys are experienced in handling UDRP arbitration for
our clients whose marks have been used by cybersquatters or
imitators, seeking to profit from our clients’ famous
marks and goodwill. We will provide you with all services relating
to domain name disputes, as well as all other internet and e-commerce
issues. As domain name disputes are often intermingled with
trademark issues, our attorneys are also experienced in related