Gregory S. Bernabeo

Greg Bernabeo practices intellectual property law with an emphasis on the strategic use of IP as an offensive and defensive tool to help his clients achieve their business objectives. A seasoned IP attorney, Greg's experience spans the full IP life-cycle, including:

  • pre-incorporation meetings with innovators to identify strategically-meaningful intellectual property
  • development and implementation of domestic and foreign IP strategies
  • performance of clearance studies
  • preparation and prosecution of patent, trademark and copyright applications
  • analysis and counseling prior to licensing or assertion of IP rights
  • enforcement of IP rights

Patents
Greg regularly counsels as to clients' non-infringement of competitors' patent rights, which often entails developing design-around solutions to avoid the patent rights of others. He often conducts corporate IP audits to identify protectable proprietary information, and performs transactional due diligence to assess IP portfolios in the licensing and M&A contexts.

With a background in mechanical engineering and extensive experience in the computer-science field, Greg provides patent counsel in the mechanical, electromechanical and computer science arts. He has drafted and prosecuted hundreds of patent applications in diverse technological fields and industries, including Industrial/Cleantech, Medical/Healthcare, Software/Computer Technologies/E-Commerce, Telecommunications and Consumer Products.

Trademarks and Copyrights
In addition to his patent practice, Greg regularly counsels clients in selecting and clearing trademarks for use, and in registering and enforcing trademark rights both in the U.S. and abroad. He has managed the entire trademark portfolios for entities ranging from an industry association, to a pharmaceutical company, to an industrial products company, to a web-based company, to an individual. He is attuned to trademark issues in the online context, and has resolved numerous trademark-related disputes. Greg has successfully resolved trademark disputes in the social media context, through tactful negotiating and initiation of proceedings under applicable website policies. He has also provided copyright registration, counseling and licensing services for a broad range of clients in diverse industries.

Transactional Work
Greg has been ­­­involved in a broad range of transactional work, ranging from performing IP due diligence in connection with mergers, asset purchases and divestitures, to preparation of IP policies and procedures, to drafting agreements for domain name sales and transfers, and protection of his clients' interests through confidentiality, manufacturing, licensing, consulting and employment agreements.

Enforcement
Greg’s experience further includes a broad range of IP enforcement experience, including enforcement of patent and trademark rights through assertion letters, administrative proceedings, arbitration and litigation, and is supported by vast experience in a broad range of pre-litigation analysis and counseling. Greg’s experience includes inter partes proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and arbitration under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).

Greg is admitted to practice before the U.S. Supreme Court.

Experience

Patents 

  • Pre-incorporation counseling of an inventor of a consumer product, and tandem development of patent and trademark strategies in support of planned business activities; the product is now sold in mass-market retailers in the U.S. and abroad
  • Advising a start-up web business in developing and prosecuting through to issuance a patent portfolio in support of proprietary online trading platform technology; the company has since been acquired by a Fortune 500 enterprise
  • Developing a patent portfolio protecting a small company's cloud-based services technology; the company has since been acquired by a leading PC manufacturer
  • Monitoring ANDA patent litigation for leading brokerage houses and performed substantive patent analysis to advise sell-side analysts as to the litigants’ success prospects in support of the preparation of BUY/SELL/HOLD reports
  • Analyzing patent assets for a global pharmaceutical and medical device manufacturer in support of its first acquisition of a Web-based services company
  • Preparing and prosecuting patents for a perennial top-10 U.S. patent recipient in support of the company's $100MM+ patent licensing program

 Industrial/Cleantech

Representative experience includes: power generation systems with CO2 capture; biogas power generation; manufacturing equipment; semiconductor fabrication; internal combustion engines; automotive wiring harnesses, connectors and subassemblies; interactive and fixed trade show displays; point of purchase (POP) displays; product packaging, including shipping boxes, display boxes, and pharmaceutical pellet packaging; fire suppression systems; braided tubing and textiles, extrusions for use as gaskets and weather-stripping; pharmaceutical pellet manufacturing and imprinting equipment; welding and HVAC equipment and systems; flue gas scrubbing for marine power systems burning high-sulfur fuels; decontamination/containment structures; and camera-based imaging and inspection systems.

 Medical/Healthcare

Representative experience includes: surgical instruments, including laser probes, surgical shields, incisional keratotomy instruments, dilators, catheter placement guide wires and bone-cutting trephines for surgical use; operating room equipment, including fluid circulating cassettes and sterile instrument receptacles; laboratory equipment, including centrifuges for medical use, flow cells and robotic assaying equipment; medical devices, including surgical implants and camera-based imaging systems; drug delivery systems, including inhalers, safety syringes and injectors; healthcare products, including cosmetic applicators, wash basins and urine collection devices; pharmaceutical sales tools and physician's expert systems.

 Software/Computer Technologies/E-Commerce

Representative experience includes: cloud computing; Internet, World Wide Web and networking technologies, including XML, content based routing, multicasting, load balancing, and server and file replication technologies; e-commerce and social commerce/networking software, including marketing, social commerce, and merchandising platforms; financial and payment systems; user account management software; database management software; DTV and CATV and information distribution systems; graphical user interfaces; Internet business models and business methods.

 Telecommunications

Representative areas of telecommunications experience include: telecommunications and computer hardware, including optical transceivers, optical circuits; splice cabinets and anti-crosstalk and strain-relief devices; cable television set top box hardware and software, including middleware; and analog, digital and optics devices and circuits, including semiconductor fabrication; and fiber optic, electrical and electronic connectors.

 Consumer Products

Representative experience includes: office products, including paper cutters, staplers, and pencil sharpeners; baby products; sporting goods, including toys and spas/hot tubs; power tools; and hardware, including hand tools.

 Enforcement  

Domain Name UDRP/Arbitrations

Tall Oaks Publishing, Inc. v. National Trade Publications, Inc. – Represented trademark owner Tall Oaks in obtaining transfer of domain name from cybersquatters in the firm’s first ICANN UDRP engagement

Born to Ride, Inc. v. Wayne Kohl – Represented trademark owner Born to Ride in obtaining transfer of domain name from unauthorized/IT consultant who had “hijacked” the domain name

The Generations Network, Inc. v. 6684874 Canada Inc. – Represented domain name registrant 6684874 in the defense and retention of domain name registration

Administrative Proceedings/Trademark Trial and Appeal Board 

Hoopla Software, Inc. v. Hoopla Software, LLC – Enforced trademark owner’s rights in an opposition proceeding before the U.S. Trademark Trial and Appeal Board opposing the authorized party’s attempt to register a HOOPLA SOFTWARE trademark, resulting in express abandonment of the trademark application by the third party 

Innovative Print and Media, Inc.  v. Market Quest Group, Inc. – Represented trademark owner Innovative in an opposition proceeding before the U.S. Trademark Trial and Appeal Board in opposing the applicant's registration of a similar mark, obtaining settlement resulting in coexistence on defined terms

Federal-Mogul Powertrain, Inc. v. Flexible Technologies Inc. – Represented trademark owner Federal-Mogul in enforcing trademark rights and negotiating a settlement resulting in the third party's abandonment of the mark

Karen Clark & Company v. Addis Intellectual Capital – Defended trademark applicant Addis in an opposition proceeding in which he defended opposition, negotiated resolution and obtained the opposed trademark registration 

NTD Laboratories, Inc. v. Kellner – Counseled trademark applicant Kellner in defending and resolving trademark opposition proceedings

Social Media Websites/Domain Name Registrars 

Represented various trademark holders in disputes against social media users, resulting in transfer and/or take down of social media user accounts and pages under social media website policies

Represented various trademark holders in disputes with domain name registrants, resulting in transfer of domain names and/or take-down of objectionable websites under domain name registrar policies

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Books

Resources