Philip I. Frankel

Phil counsels various industries and business entities to develop and protect their valuable copyrights, trademarks, trade dress and trade secrets in order to preserve the essence of their creative works. He provides insight to his clients on the availability and proper use of trademarks on both a domestic and international level. Phil is called upon in the early stages of trademark development and licensing to analyze the concept to ensure the development of a strong mark and presence in the market place while keeping infringers at bay.

Phil’s experience has allowed him to consult with various industries and individuals to address their intellectual property (IP) needs. For example, he has consulted with artists, architects, musicians, illustrators, graphic designers, and non-profit institutions including museums and galleries, as well as start-up entrepreneurs and publicly traded companies.

Phil’s clients cover a variety of industries including:

• Authors	• Home Improvement
• Apparel Design	• Jewelry
• Architecture	• Library Suppliers
• Colleges and Universities	• Mobile Application Developers
• Cosmetics	• Museums
• Educational Children’s Programs	• Pet Food
• Electronic Parts	• Publishing
• Food Distributors	• Restaurants
• Furniture	• Software Developers
• Games and Toys	• Ticketing
• Gifts	• Wineries & Breweries
• Golf Professionals

 

Both as a counselor and litigator, Phil has years of experience in software and technology-licensing and matters involving mobile application development and web posting, as well as protection of trademarks and domain names. He has successfully handled many trademark infringement claims, oppositions and cancellation disputes in state and federal courts, as well as before the Trademark Trial and Appeal Board.

Phil is often called to consult with advertising agencies and marketing people in protecting and developing their client’s intellectual property rights. As such, he frequently lectures on and handles matters involving rights of privacy, rights of publicity, labeling, deceptive packaging, contests, sweepstakes and lottery rules throughout the country. In addition, Phil is involved with the legal compliance of gift card and reward programs that have been instituted by his business clients.

Throughout the years Phil has drafted hundreds of license agreements for various industries, especially in the technology industry including the following agreements:

• Software Development	• Source Code Escrow
• Software Licenses and Maintenance	• Co-Existence
• Website Development	• Work For Hire (for both Employees and independent Contractors)
• Co-Branding	• Co-Location
• Teaming (technology business that work together to respond to an RFP)	• Private Label
• Software as a service (Saas)	• Web Hosting
• Application Service Providers (ASP)

 

Phil frequently lectures to lawyers and marketing and trade associations on various IP issues in the U.S. and abroad. He has lectured on trademarks at Syracuse University and the Syracuse University College of Law, and the State University of New York Institute of Technology at Utica/Rome, as well as the New York State and Onondaga County Bar Associations. He also frequently lectures on the intellectual property concerns when using social media.

The following are a few representative matters:

• Counseled game developers from the “idea on a napkin” concept stage into a very successful company with a national distributed board game that was listed as one of the top ten games of the year by Mensa. Helped establish the company, develop and protect its intellectual property involving copyrights, trademarks and patents, and soundly navigated the various media platforms while promoting the game on an international scale. The game was later sold to a nationally well known company.
• Managed the domestic and international trademark portfolio for an international ticketing services company with marks in six continents.
• Developed guidelines for a company’s in-house marketing personnel regarding the protection of its mark and how to properly use it in order to avoid potential pitfalls.
• Successfully litigated before the Trademark Trial and Appeal Board a complex trademark case in which the client sought to cancel a competitor’s registered trademark by proving that the client had been the first one to use the mark in commerce months before the infringing company first utilized the same mark.
• Successfully arbitrated a domain dispute issue before the National Arbitration Forum to protect the client from a chronic cybersquatter.
• Stopped an internationally distributed software game from unlawfully using client’s photographs as part of the background images without first seeking permission from the photographer.