U.S. Trademark and Intellectual Property Law Firm

Wells IP Law, PLLC

299 South Main Street
Suite 1300
Salt Lake City, Utah 84111
USA

(801) 444-7143

(203) 295-3730

www.wellsiplaw.com

Contact Nicholas Wells

Law Firm Overview FREE CONSULTATION

Wells IP Law is a boutique law firm that focuses on trademark prosecution and other intellectual property matters. We maintain a branch office in New York City our main office is in Salt Lake City, Utah.

We have relationships with clients and major law firms in more than 40 countries. Much of our work is in assisting non-U.S. clients with obtaining trademark registrations in the United States. We have particular experience with applications filed under the Madrid Protocol. Unlike many U.S. law firms, we are happy to operate on a fixed-fee basis for most trademark matters, so that clients are aware of the full cost in advance and can make an informed business decision about their legal expenses.

We also work in areas that include copyright registration and disputes, promotions and social media, entertainment law and related business agreements, publishing matters, and open source software licenses.

Nicholas D. Wells has MBA, JD, and LLM degrees and has more than 25 combined years of experience in the software industry and law practice.

Year this Office was Established: 2009

Languages: English, Italian.

Areas of Law

Additional Areas of Law: Data Privacy Law; Publishing Law; Open Source Software.

Areas of Law Description

Our services include:

- Intellectual Property Law — Trademarks, Copyrights

• Comprehensive US trademark availability searches (clearance searches)
• Filing new US trademark applications
• Responding to Office Actions from the US Patent and Trademark Office, including rejections based on descriptiveness, likelihood of confusion, surname, geographic descriptiveness, trademark doctrine of foreign equivalents,
• Assisting non-US clients with US trademarks filed under the Madrid Protocol
• Filing ex parte appeals to the Trademark Trial and Appeals Board
• Filing oppositions to trademark registration
• Filing cancellation of existing US trademark registrations
• Advising clients on international trademark filing strategy
• Managing foreign outside counsel in obtaining international trademark protection
• Negotiating consent agreements to permit trademark registration
• Negotiating trademark license agreements
• Conducting intellectual property audits to analyze client’s IP portfolio, identify risks, and recommend needed protection
• Analyzing online copyright and trademark infringements
• Advising clients on unusual music performance license situations under ASCAP/BMI licenses
• Analyzing “work made for hire” issues
• Preparing employer agreements to ensure ownership of materials developed by contractors and employees
• Sending takedown notices to website copyright infringers that have resulted in prompt removal of infringing material, including from Google’s Android Market
• Registration of US copyrights in literary, musical, audiovisual, and computer-based works
• Obtaining licenses for use of copyrighted music
• Analyzing cutting edge copyright issues related to digitized content
• Analyzing termination of transfers of copyright under Sections 203 and 304 of the US Copyright Act
• Advising US clients regarding international copyright issues
• Managing nationalizing non-US patents in the US through the Patent Cooperation Treaty (PCT)
• Drafting new US patent applications
• Drafting and negotiating patent license agreements

- Entertainment Law — Publishing, Promotions, Sweepstakes, Social Media

• Handling book publishing agreements with major publishers in New York and elsewhere, including Doubleday, John Wiley, Pearsons, Cengage, Shadow Mountain, and Macmillan.
• Representing new authors in contract negotiations with book publishers
• Advising clients on right of publicity issues in relation to live events, film shoots, reality television shoots, and news programming
• Representing musical artists
• Representing GRAMMY® award-winning musical groups
• Obtaining clearance (music licenses) for audio CDs, digital downloads, and DVDs (sync licenses)
• Handling agreements for multiple film projects with multi-million-dollar budgets (location agreements, musical score agreements, talent agreements, production agreements, screenwriter agreements)
• Handled sports marketing agreements for sponsorship of the Dallas Cowboys, PGA Tour, British Triathlon, and the Winter Olympics, as well as negotiated agreements with multiple Olympic athletes
• Preparing Official Rules for sweepstakes, both for company internal events and for public participation, including multi-million-dollar events
• Handling social media promotions through Facebook and Twitter

- Technology — Internet Law, Domains, Licensing

• Negotiating confidentiality/non-disclosure agreements
• Negotiating software license agreements and software development agreements—we’ve negotiated opposite Google, Microsoft, Oracle, Dell, Xerox, AT&T, Adobe, IBM, JP Morgan Chase, and many others.
• Negotiating technology services agreements
• Analyzing online copyright and trademark infringements
• Sending takedown notices to website copyright infringers that have resulted in prompt removal of infringing material, including from Google’s Android Market
• Analyzing open source software matters, including potential open source license liability and creating strategies for clients that want to use open source software
• Handling domain name disputes through UDRP proceedings
• Conducting website legal reviews, including analysis of copyright and trademark issues
• Preparing website legal documents, including terms of use, e-commerce terms, privacy policies, and disclosure policies related to social media
• Advising clients regarding FTC requirements for bloggers and other social media participants to avoid liability under false advertising laws

- Data Privacy Law

• Analyzing clients’ compliance and risks related to European privacy laws under the EU Data Protection Directive (Directive 95/46/EC)
• Advising US-based clients on use of the safe harbor and model contract provisions of the EU Data Protection Directive (Directive 95/46/EC)
• Preparing internal security compliance policies and data management policies to ensure compliance with European laws
• Registering clients’ databases with European data protection authorities
• Analyzing US state laws relating to data privacy and data breach notification
• Advising clients regarding the requirements of specific state and federal privacy-related laws for website privacy policies, including COPPA, GLB, and HIPAA.