Kaleo Legal prosecutes and maintains valuable trademark portfolios both domestically and throughout the world. Our flat-fee based trademark practice takes a practical approach to the entire process, from trademark selection through registration, renewal, and enforcement. Our trademark clients range from start-up technology companies to well-established, brick-and-mortar businesses in an array of industries including software, consumer products, alcohol, building supply, plumbing, home goods and appliances, e-commerce, professional services, restaurants, and hospitality. Kaleo Legal uses state-of-the-art docketing software and techniques to monitor our clients’ trademark portfolios, which cumulatively encompass thousands of trademark applications and registrations in the United States and abroad. Our intellectual property attorneys have broad expertise in trademark selection, clearance searches, infringement analyses, prosecution, trade dress, litigation, and watch services.
Clearance
Our trademark clearance services range from conducting “knockout” searches at the USPTO to providing analysis of in-depth, comprehensive searches of the USPTO, domain name registers, common law uses, and state business and trademark registrie. We are experts at suggesting ways to deal with obstacles, including by narrowly tailoring applications and cancelling or acquiring blocking registrations.
Filing
We strategically draft U.S. trademark applications with the goal of avoiding objections that can delay publication or cost extra money in dealing with Office Actions. Internationally, we file applications through our trusted network of experienced foreign agents. Where available, we also file for foreign protection through various international treaties, which provides clients with cost effective filings solutions while offering the most comprehensive geographic coverage.
Domain Name Disputes and Take-Downs
Kaleo Legal is exceptionally skilled at protecting our clients’ rights online. We assist our clients in acquiring and registering domain names, submitting domain name arbitrations under the Uniform Dispute Resolution Policy, and filing civil actions in federal court for cybersquatting and trademark infringement. As a result of our efforts, Kaleo Legal has caused numerous infringing websites to be taken down and many domain names to be rightfully transferred to our clients.
Licensing
We routinely prepare and negotiate all flavors of trademark licenses, including joint ownership and co-existence agreements, agreements in settlement of litigation, and complicated product merchandising agreements.
Maintenance
It is necessary to periodically file proof of use of the mark for the covered goods or services with the USPTO in order to maintain a trademark registration. Kaleo Legal dockets such maintenance deadlines in a state-of-the-art docketing system accessible to our clients, and we work with them to strategically maintain their portfolios of marks.
Monitoring and Watch Services
Trademark owners must be vigilant in protecting their rights. As part of our role in our clients’ policing efforts, Kaleo Legal arranges for trademark watch services, domestically and/or internationally. In that way, we can receive timely notice of confusingly similar marks and discuss with our clients whether to oppose registration. We eliminate the background noise by reviewing the watch notices in advance, so our clients don’t have to.
Oppositions and Cancellations
Kaleo Legal enforces our clients’ trademarks by vigorously (and regularly) pursuing opposition proceedings and cancellation actions before the Trademark Trial and Appeal Board. In the event that a third party opposes an application or petitions to cancel a registration, we are there to defend our clients’ rights. Because these proceedings closely resemble federal court litigation, our decades of litigation experience serves us well.
Trademark Counsel Team:
William R. Poynter
About:
Billy serves as the fractional General Counsel and Chief Intellectual Property Counsel for several companies, and he has a great deal of experience assisting software providers with their commercial needs, including drafting and negotiating licensing agreements, partner agreements, and services agreements of all kinds. As an extension of the in-house department, Billy supports software sales teams in all aspects of their legal needs, and is an integral part of their achieving sales and revenue quotas on a quarterly and annual basis.
He focuses his practice on intellectual property law, including IP assessment, creation, and enforcement; dispute resolution; and particularly the IP issues surrounding software creation, development, and implementation. In fact, he has extensive experience with drafting and negotiating commercial contracts of all kinds. And he has assisted in the acquisition and sale of technology companies for larger-scale clients, especially in the software industry.
Billy also maintains an active litigation practice at Kaleo Legal, mostly in the federal courts of the Eastern District of Virginia. As a full-time litigator for much of his career, Billy has handled IP cases involving a variety of technologies, including software, business methods, telecommunications technology, mechanical devices, chemical compositions, and electrical technology. He has litigated cases around the country, including in popular patent litigation jurisdictions such as the Central and Northern Districts of California, the Eastern District of Texas, and the District of Delaware. Billy has particular experience litigating patent, intellectual property, and other cases in the Eastern District of Virginia, also known as the “Rocket Docket,” as both lead and local counsel. He is extremely well versed in addressing the e-discovery issues that accompany complex litigation. Billy is a permanent member of the Fourth Circuit Judicial Conference.
After graduating from law school at UVA, Billy spent one year practicing at a large firm in Washington, DC, before clerking for The Honorable Alvin A. Schall, US Court of Appeals for the Federal Circuit. Before joining Kaleo Legal, he served as the co-chair of the Intellectual Property Litigation practice at Williams Mullen. Throughout his practice, Billy has represented domestic and international companies of all sizes and types, including startups, mid-sized companies, and Fortune 500 companies, in various industry sectors such as software, retail, manufacturing, telecommunications, and transportation.
Billy is listed in Virginia Super Lawyers, and has been regularly named as Virginia Legal Elite for Intellectual Property by Virginia Business. He has been ranked in Chambers USA since 2014 for Intellectual Property, has been named to Best Lawyers in America since 2015, and has an AV rating from Martindale Hubbell.
Billy maintains membership in the American Bar Association’s Intellectual Property Division and the Federal Circuit Bar Association, in addition to sitting on the committee of the Law Practice Management Division of the Virginia Bar Association. He currently serves on the Board of the Directors of the Norfolk Forum and is a member of the Greater Norfolk Corporation. He spent ten years as a member of the Board of Directors of the Virginia Opera, including as a member of the Executive Committee. In 2010, Inside Business named Billy to its list of the Hampton Roads “Top 40 Under 40.”
He earned his undergraduate degrees from Washington & Lee University in 1998, a bachelor of science in chemistry and a bachelor of arts in medieval and renaissance studies, magna cum laude, Phi Beta Kappa. He earned his juris doctor from the University of Virginia School of Law in 2002.
Years of Experience: 18
Past Work Experience: Hunton & Williams, Clerk – US Court of Appeals for the Federal Circuit, Williams Mullen
Professional Affiliations: ABA, VBA, VSB, DC Bar, FCBA, Fourth Circuit Judicial Conference, FBA
Awards & Honors: Phi Beta Kappa, Magna Cum Laude, AV Rating from Martindale Hubbell, Best Lawyers, Chambers USA, VA Legal Elite, VA Superlawyers, Top 40 Under 40, Inside Business Entrepreneurial Excellence
Bar Admissions: Virginia, District of Columbia
William R. Poynter
Principal
About: Billy serves as the fractional General Counsel and Chief...
Will Dickinson
About:
Will Dickinson focuses his fractional general counsel practice on negotiating technology transactions for fast-paced sales organizations, managing the legal needs for software sales teams, managing clients’ large trademark portfolios, and augmenting the commercial and intellectual property capabilities of clients’ in-house legal departments.
Will has experience in:
- Technology transactions and other commercial-contract negotiations
- Intellectual property licensing
- Trademark and copyright prosecution
- Intellectual property portfolio management and counseling
- Intellectual property litigation
- Commercial dispute resolution
- Trademark Trial and Appeal Board litigation
- Domain-name (UDRP) arbitration
- Digital Millennium Copyright Act (DMCA) counseling and registration
Throughout his career, Will has helped clients ranging from growth-oriented sales organizations of all sizes, to Fortune 500 companies with large intellectual property portfolios, to startups and mid-sized businesses with important intellectual property assets, to state agencies with mission-critical IT systems.
Will has been named among Virginia’s “Legal Elite” by Virginia Business magazine, a “Rising Star” and a “Super Lawyer” by Virginia Super Lawyers, a 2019 “Up and Coming Lawyer” by Virginia Lawyers Weekly, named in Best Lawyers in America for Trade Secrets Law and Intellectual Property Litigation, named “Lawyer of the Year” for Trade Secrets in the Norfolk Region, and named a Richmond Times Dispatch “Readers’ Choice Lawyer.”
Prior to joining Kaleo Legal, Will practiced at an Am Law 200 law firm headquartered in Richmond, Virginia. Will received his law degree from Wake Forest University School of Law, where he served as the Editor-in-Chief of the Wake Forest Law Review. He earned his undergraduate degree from Wake Forest University, with a Bachelor of Arts degree, magna cum laude, Phi Beta Kappa.
Will has served on the Sports Backers President’s Council, as the Chair of the Wake Forest University School of Law Rose Council, on the Executive Committee of the Leukemia & Lymphoma Society’s Richmond Light the Night Walk, on the Greater Richmond Chamber of Commerce’s IMPACT Award Committee, and as a mentor at Startup Virginia. He is a member of the American Bar Association, Virginia Bar Association, Richmond Bar Association, and the Greater Richmond Intellectual Property Law Association.
Awards & Honors: Best Lawyers 2024 Edition
Will Dickinson
Principal
About: Will Dickinson focuses his fractional general counsel practice on...
Alex Gabriel
About:
Alexandra Gabriel joined Kaleo Legal in November 2020 and focuses her practice on intellectual property and employment matters. As intellectual property counsel, Alex works with companies to maximize, protect, and enforce their intellectual property through portfolio development, trademark and copyright prosecution, licensing, and litigation. As employment counsel, Alex assists clients with navigating federal and state statutes and regulations, such as Title VII, the Family Medical Leave Act, the Americans with Disabilities Act, and the National Labor Relations Act, and she serves as litigation counsel for clients facing employment-related claims. Alex helps businesses protect their proprietary information and trade secrets through the use of internal policies, confidentiality and restrictive covenant agreements, and litigation. She is well versed in litigation, transactional matters, and client counseling, and she serves as fractional IP and employment counsel for several companies.
Alex earned her undergraduate degree from Old Dominion University and her law degree from the University of Virginia School of Law. Prior to joining Kaleo Legal, Alex clerked for the Circuit Court for the City of Virginia Beach and practiced at Williams Mullen, an Am Law 200 law firm. She was recognized by Best Lawyers as among the “Ones to Watch” for 2021.
Awards & Honors: Best Lawyers 2024 Ones to Watch
Alex Gabriel
Partner
About: Alexandra Gabriel joined Kaleo Legal in November 2020 and...
Dan Lee
About:
Dan focuses his practice on commercial contracting, licensing, and intellectual property matters. He assists clients with reviewing, drafting, and negotiating a broad array of commercial contract types, including SaaS agreements, master services agreements and related statements of work, software licenses, procurement and supply agreements, nondisclosure agreements, and other outsourcing and technology agreements. Dan also helps clients with trademark selection, clearance, prosecution, enforcement, and licensing.
Dan earned his undergraduate degree from Virginia Commonwealth University and his law degree from the University of Richmond School of Law where he also earned a Certificate in Intellectual Property with distinction. Prior to joining Kaleo Legal, Dan was a member of the Global Technology and Outsourcing team at Hunton Andrews Kurth, an AmLaw100 firm, and previously served as senior contracts counsel for a large nationwide staffing and consulting firm.
Years of Experience: 7
Dan Lee
Partner
About: Dan focuses his practice on commercial contracting, licensing, and...