California-Based Intellectual Property Attorneys, International Reach

A key to success for companies in today’s marketplace is the ability to procure, protect and exploit intellectual property. Our IP department, which is highly integrated with our litigation and transactions departments, has the depth and experience to provide sophisticated and comprehensive solutions to any IP issues our clients face. We assist in the procurement of IP assets, provide representation in the negotiation and drafting of IP transactions, and litigate infringement actions and unfair competition claims.

Do you need a California patent attorney? Learn more about our prosecution and litigation services.

Our Intellectual Property Services Include:

• Intellectual Property Strategies and Monetization
• Patent and Trademark Monitoring and Portfolio Management
• Patent Searches, Prosecution, Licensing and Litigation
• Trademark Searches, Registration, Licensing, and Litigation
• Copyright Registration, Licensing and Litigation
• Trade Secret Protection, Policies and Litigation
• Trade Dress Protection
• Unfair Competition
• Right of Publicity Contracts and Disputes
• Entertainment Litigation
• Nondisclosure Agreements, Assignments, Purchase/Sale Agreements, Coexistence and Other IP Agreements
• Privacy Policies, Website Disclaimers and Website Terms of Use
• Advising Start-Ups
• Artificial Intelligence, Augmented Reality, and Virtual Reality

The Role Of The USPTO

The United States Patent and Trademark Office (USPTO) fosters American innovation and protects intellectual property by granting patents and registering trademarks. It allows inventors and businesses to safeguard their innovations and brand identities.

However, applicants may make mistakes when dealing with the USPTO. Examples include:

• Failing to research existing patents or trademarks
• Submitting incomplete or incorrect paperwork
• Missing filing deadlines and timeframes
• Not understanding the requirements for patents or trademarks
• Not seeking legal guidance

Proper preparation and an understanding of USPTO procedures can increase the chances of a successful application.

Registering A Trademark

There is no legal mandate to register a trademark, but it offers several benefits. Federal registration grants exclusive nationwide rights, legal presumption of ownership and the ability to use the ® symbol, enhancing brand credibility and protection.

Remember to conduct a thorough trademark search to ensure the desired mark is not already in use. Another critical step involves including details about the mark and its intended use along with the trademark application.

If the examiner finds no conflicts or mistakes, the trademark is published, allowing others to oppose it if needed. Unless there is opposition, the trademark is registered.

Our experienced intellectual property lawyers can facilitate a smooth application process and help to prevent errors.

IP In The Digital Age

The digital age has redefined intellectual property challenges, with online platforms increasing exposure to copyright infringement, software patent disputes and digital rights management issues.

For example, online copyright infringement is a growing concern in the 21st century. Unauthorized sharing of images, music, videos and software on websites or social media platforms can erode intellectual property value. Fortunately, taking swift action, including issuing takedown notices and seeking legal remedies, can mitigate potential losses.

Similarly, software patents also demand legal attention. Protecting innovations in algorithms, system architecture and applications can help promote a competitive advantage. However, overlapping claims and vague standards often lead to disputes. This is precisely why clear documentation and reputable legal guidance are the major and decisive components for resolving these issues effectively.

Digital rights management (DRM) tools are key in protecting intellectual property. Employing encryption, access control and watermarking technology can help secure proprietary content and limit unauthorized use.

IP Valuation And Audits

Regular evaluation of intellectual property assets can strengthen a company’s business position and reveal untapped opportunities. This can help to ensure you make better decisions in licensing, mergers and acquisitions, or litigation.

Frequent IP audits assess the current status of a company’s intellectual property portfolio of patents, trademarks, copyrights and trade secrets. This process uncovers:

● Gaps in protection that require immediate attention
● Unused assets that could generate revenue
● Potential infringement risks
● Areas for strategic growth and development

Understanding the true value of IP can guide investment decisions and position businesses for sustainable growth. However, during an audit, companies should review licensing agreements, check for expired registrations and evaluate competitor activity. The information gathered can help streamline IP management and ensure compliance with legal standards.

Licensing And Franchising

Licensing intellectual property creates additional revenue streams while expanding market presence. When drafting a licensing agreement, both parties should define clear terms regarding royalties, duration, exclusivity and jurisdiction.

Franchising is a more comprehensive model that allows businesses to scale operations using established trademarks, trade secrets and systems. Franchise agreements must include protections for intellectual property to prevent misuse or dilution.

Both licensing and franchising agreements should include dispute resolution clauses to address potential disagreements effectively. Consulting our experienced intellectual property attorneys can help ensure the terms of these agreements align with business goals, protect proprietary assets and prevent common pitfalls in IP commercialization efforts.

Strategic IP Audits

Many businesses undervalue intellectual property because they focus only on registered patents or trademarks. A strategic audit looks deeper to identify latent assets that may not yet be formally protected. These can include proprietary datasets compiled over years of operation, internally developed software tools, confidential customer analytics, manufacturing processes and unfiled trade secrets embedded in day-to-day operations.

An effective audit also examines ownership chains. One frequently overlooked issue involves independent contractors. If agreements did not properly assign intellectual property rights to the company, ownership may remain with the contractor. 

We carefully review older independent contractor agreements to confirm assignment language was properly executed and inventions, code or creative works are legally owned by the business. Identifying overlooked assets, and correcting ownership gaps strengthens valuation and enforceability.

IP Monetization

Intellectual property should function as a revenue generator, not merely as a defensive tool. Structured licensing programs allow companies to create recurring royalty streams from patents, trademarks, software and proprietary content. We assist clients in structuring licensing agreements that clearly define scope, exclusivity, territory, quality control and royalty calculations.

International distribution strategies further expand revenue potential. Through well-drafted cross-border agreements, businesses can extend product lines into new markets while maintaining brand integrity. Royalty provisions may include minimum guarantees, milestone payments or performance-based escalators. Strong monitoring and enforcement provisions are also essential to protect against underreporting or misuse. By aligning the licensing structure with long-term business goals, intellectual property becomes a scalable asset that generates predictable income rather than remaining dormant.

2026 Compliance

California’s continued prohibition on noncompete agreements significantly impacts trade secret protection. Because employee noncompetes are unenforceable in 2026, companies cannot rely on restrictive covenants to prevent former employees from joining competitors. Instead, proactive trade secret audits are critical. 

Businesses should document proprietary information, restrict access on a need-to-know basis and implement structured exit procedures. During employee departures, companies must secure devices, revoke access credentials and remind departing personnel of confidentiality obligations. In the absence of enforceable noncompetes, internal controls become the primary safeguard for proprietary information.

Companies should also revisit confidentiality agreements and employee handbooks to confirm that trade secret definitions are clear and enforceable under California law. Regular training sessions can reinforce expectations regarding data handling, remote access and third-party sharing. When disputes arise, documented compliance efforts strengthen the company’s position in litigation and help demonstrate that reasonable steps were taken to protect proprietary assets.

California Intellectual Property: Answering Common Questions

It is natural to face uncertainty or have questions about your business intellectual property. To help you move forward confidently, here is how we answer common questions from other clients.

What constitutes trade secret information, and how can I safeguard it from unauthorized use or disclosure?

Trade secrets are a type of confidential business information that gives you a competitive advantage. It can include formulas, inventions, designs, processes, customer lists or other information not generally known to the public. Implementing strong security measures like these can safeguard trade secrets:

• Identify and classify your trade secrets
• Limit access to trade secrets on a need-to-know basis
• Use nondisclosure agreements (NDAs) with employees, contractors and other third parties
• Implement physical and technological safeguards such as secure storage and passwords to strengthen your protections
• Have a plan for what to do if you suspect a trade secret has been misappropriated (call a lawyer, etc.)

Considering the sacrifices you made in the interest of running your business, do not let trade secret theft bring it down around you.

What rights do I have if someone is infringing on my intellectual property?

If someone has stolen your intellectual property or used it unlawfully, taking the appropriate legal steps can help to stop them. This could include seeking an injunction – a court order prohibiting the infringement – or suing for damages. The specific legal action you should take depends on the circumstances and how much damage it causes.

How do I bring forward an intellectual property lawsuit?

To initiate an intellectual property (IP) lawsuit, begin by consulting with an IP attorney who can assess the validity of your claim and guide you through the process.

Gather and document all pertinent evidence, such as registration certificates, contracts and examples of the infringement. Your attorney will draft and file a complaint in the appropriate court, detailing the specific IP rights violated and the relief sought, whether damages, injunctions or other remedies.

After the complaint is filed, the defendant will be served and required to respond, leading to the discovery phase where both parties exchange information and evidence. The case may proceed to trial if a settlement is not reached during pretrial negotiations. Your attorney will advocate on your behalf throughout this process, striving for a favorable resolution.

What must be proven in an intellectual property lawsuit?

As the plaintiff, you must prove several elements to establish your case successfully.

First, you must demonstrate ownership of a valid IP right, such as a patent, trademark or copyright. This often involves presenting registration certificates or other evidence of IP ownership. Next, you must show that the defendant infringed on these rights, typically by proving unauthorized use, copying or exploitation of the protected work or invention.

Causation and damages are also critical. You must illustrate how the infringement has caused economic harm or loss. The specific criteria can vary depending on the type of IP right involved, making it essential to seek experienced legal guidance to build a robust case.

How can intellectual property support good sustainability practices?

Perhaps surprisingly, intellectual property can play a role in fostering sustainability by protecting and promoting innovations that contribute to environmental stewardship.

• Patents can safeguard eco-friendly technologies and processes, encouraging investment in green solutions by ensuring inventors can reap the benefits of their work.
• Trademarks and certification marks can signify adherence to sustainable practices, helping consumers identify and choose products that align with their values.
• Additionally, IP rights can support the sharing and licensing of sustainable technologies, facilitating their broader adoption and impact.

By strategically leveraging IP, your California business can help drive innovation that enhances competitiveness while contributing to a more sustainable future.

How can I avoid infringing on the intellectual property rights of others in my business activities?

Inadvertent infringement can happen and often leads to costly legal consequences. Following these guidelines assures no violations occur:

• Conduct thorough searches for existing patents and registered trademarks to help you avoid accidental infringement
• Avoid the use of third-party logos, trademarks and any copyrighted material

It can be tempting sometimes to cut corners and alter another’s existing intellectual property for use in your business. Unfortunately, this is a dangerous habit that can lead to intellectual property litigation if it is discovered.

How do I protect my business brand internationally from Fresno?

All you require is strategic planning. Start by identifying which countries matter most to your business operations or customer base. Each country has its own trademark registration system. You will need to file applications in each jurisdiction where you want protection.

The Madrid Protocol offers a streamlined approach. This international treaty allows you to file one application through the U.S. Patent and Trademark Office that can extend to over 130 member countries.

Consider these key steps:

• Identify target markets where your customers or competitors operate
• Research trademark requirements and costs for each jurisdiction
• File through the Madrid Protocol system to cover multiple countries efficiently
• Monitor registration deadlines and respond promptly to any office actions
• Budget for ongoing renewal fees in each protected country

Remember that trademark rights are territorial. Registration in the U.S. alone will not stop infringement overseas.

What happens when a patent expires?

After a patent expires, the protected invention enters the public domain. Anyone can then make, use, sell or import the invention without permission or paying royalties.

Most utility patents last 20 years from the filing date, while design patents last 15 years from the grant date. Once expired, the patent cannot be renewed or extended except in rare circumstances involving regulatory delays. As such:

• Competitors can legally copy and sell your once-protected invention
• You lose the ability to collect licensing fees or royalties
• Market prices often drop as new manufacturers enter the space
• Your business strategy must shift from exclusivity to other competitive advantages
• Planning early allows time to develop new innovations or strengthen your brand

For patent holders, expiration means facing new competition. Generic drug manufacturers, for example, often wait for pharmaceutical patents to expire before entering the market.

Does AI-generated content qualify for copyright protection in 2026?

Current U.S. copyright law requires human authorship for protection. The Copyright Office has stated that works created entirely by AI without human creative input cannot be copyrighted. However, the landscape is evolving rapidly as courts and legislators clash about these questions.

If you use AI as a tool while maintaining creative control and making meaningful contributions, the resulting work may qualify for copyright. Think of AI as similar to using Photoshop or other creative software. The key factor is your level of human creativity and decision-making in the final product.

Contact Coleman & Horowitt, LLP, For IP Protection And Guidance

Coleman & Horowitt, LLP, has a reputation as a sophisticated, modern law firm with tools to match each client’s needs. Learn how to protect all your business’s assets, including long-held and newly developed intellectual property.

Call 559-343-2648 or send an inquiry by email to schedule a consultation with one of our IP lawyers in central California.

Practice Area Attorneys

Sherrie M. Flynn – Partner

Gregory J. Norys – Managing Partner

Aisha O. Otori – Associate

Jennifer T. Poochigian – Partner

Gary S. Shuster – Senior Counsel

Darryl J. Horowitt – Founder-Partner-Mediator

Nicholas F. Phillips – Associate

Daniel L. Rudnick – Senior Counsel

Judith M. Sasaki – Partner

David J. Weiland – Partner