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Montgomery_Alex

Alexander P. Montgomery

Partner Boston

Alex co-chairs Hinckley Allen’s Sports & Entertainment Group. He advises clients of all sizes and across all industries, ranging from global startups, emerging to public companies, and investors at all stages of the company life cycle. Alex concentrates his practice on the selection, protection, and enforcement of copyrights and trademarks, along with technology transactions and licensing matters, especially in the software space. He is well-versed in technology and licensing; cloud-based agreements; collaboration, strategic alliance and joint development agreements; and due diligence and other intellectual property issues in joint ventures, mergers, acquisitions and venture capital and private equity transactions.

Alex’s extensive technology transactions and copyright and trademark experience includes:

  • Reviewing, drafting, negotiating, and provide guidance related to various intellectual property-related contracts and license agreements, including software license agreements, mobile application development and license agreements, SaaS agreements, trademark licenses, non-disclosure agreements, and work for hire agreements;
  • The successful prosecution of hundreds of trademark applications with the U.S. Patent and Trademark Office;
  • Advising clients on the filing, maintenance, and renewal of foreign trademark applications and registrations, including utilization of the national, EUTM, and Madrid Protocol filing schemes; and
  • Advising clients on copyright and right of publicity issues surrounding the development of websites, marketing and promotional materials, photographs and videos, and various other copyrightable works.
  • Representing clients as plaintiffs and defendants in opposition and cancellation proceedings in front of the Trademark Trial and Appeal Board;
  • Obtaining copyright registrations from the U.S. Copyright Office for software, books, music, videos, and other works;
  • Obtaining domain names through Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings;
  • Advising a variety of clients on mitigating and avoiding claims of copyright and trademark infringement;
  • Successfully enforcing and defending clients’ copyrights and trademarks through cease and desist letters and subsequent negotiations;
  • Drafting, reviewing, and negotiating a variety of intellectual property-related agreements, including work-for-hire agreements, non-disclosure agreements, software licenses, SaaS agreements, contracts for cloud services, and other technology-related agreements and licenses; and
  • Conducting intellectual property-related due diligence in a variety corporate transactions.
  • Representing clients as plaintiffs and defendants in opposition and cancellation proceedings in front of the Trademark Trial and Appeal Board;
  • Obtaining copyright registrations from the U.S. Copyright Office for software, books, music, videos, and other works;
  • Obtaining domain names through Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings;
  • Advising a variety of clients on mitigating and avoiding claims of copyright and trademark infringement;
  • Successfully enforcing and defending clients’ copyrights and trademarks through cease and desist letters and subsequent negotiations;
  • Drafting, reviewing, and negotiating a variety of intellectual property-related agreements, including work-for-hire agreements, non-disclosure agreements, software licenses, SaaS agreements, contracts for cloud services, and other technology-related agreements and licenses; and
  • Conducting intellectual property-related due diligence in a variety corporate transactions.

 

Alex enjoys maintaining his trademark blog, TantalizingTrademarks.com, where he examines interesting trademark applications recently filed with the U.S. Patent and Trademark Office.

Experience

  • Successfully obtained, through settlement negotiations and after the filing of UDRP complaints, two infringing domain names for a large client, which prompt resolution resulted in a refund of 66% of the UDRP filing fees.
  • Spearheaded campaigns to register and enforce clients’ copyrights and trademarks online and across various e-commerce platforms such as Amazon, eBay, Etsy, and Alibaba.
  • Worked with a large, multi-disciplined, global client to review and develop software-related templates for the organization, such as software license agreements, software development agreements, cloud services agreements, and hosted services agreements.
  • Advised a local clothing retailer on a strategy for the management and expansion of their trademark portfolio.
  • Assisted a nutritional company with the worldwide enforcement of its valuable trademark rights, as well as the international expansion of the company’s trademark portfolio.
  • Advised multiple local craft breweries on the selection and protection of trademarks for breweries and beers.
  • Successfully overcame a likelihood of confusion refusal issued by the U.S. Patent and Trademark office on behalf of an international beer client by prevailing in a TTAB proceeding to cancel the cited mark.
  • Assisted a consumer products company on the intellectual property aspects of its corporate reorganization, which involved the assignment of dozens of trademarks, patents, and copyrights, as well as developing a strategy for expansion into foreign countries and protecting the company’s trademarks overseas.

Credentials

Work Experience

  • Hinckley Allen
    • Partner (2022-Present)
    • Associate (2016-2021)
  • Dressman Benzinger LaVelle, PCS
    • Associate (2015-2016)
  • Cornetet, Meyer, Rush & Stapleton Co., LPA
    • Senior Associate (2012-2015)

Honors & Awards

  • Super Lawyers, Massachusetts
    • Rising Stars (2018-2023)
  • Boston Magazine, Top Lawyers (2023)
    • Intellectual Property Rights

Charitable & Civic Involvement

  • The Theater Offensive
    • Board Member (2021-Present)
  • Cincinnati Intellectual Property Law Association (2012-2016)
    • Director of Outreach Committee (2015-2016)
    • Steering Committee for CincyBrand (2014, 2016)
  • Delta Tau Delta Fraternity Scholarship Committee (2013-2015)
  • Linkinnati
    • President (2013-2015)

Professional Affiliations

  • Boston Bar Association
    • Senior Associates' Practical Skills Committee (2018-2020)
  • Boston Intellectual Property Law Association
  • Cincinnati Bar Association
  • International Cannabis Bar Association, INCBA
  • International Trademark Association, INTA (2016-Present)
    • INTA Bulletins Committee (2020-2021)
  • Ohio Bar Association
  • Sports Lawyers Association (2023-Present)

Bar Memberships

  • Massachusetts
  • Ohio

Newsroom

Publication

A Conversation with Alexander P. Montgomery: Making His Mark in Intellectual Property Law

It is critical for businesses to protect their intellectual property just as vigorously as they would their physical assets. Alexander P. Montgomery, who focuses on copyrights and trademarks, works with companies and individuals in protecting their intelle…

Publication

A Small Claims Court for Copyright Disputes? CASE Act Creates New Alternative Process for Smaller Copyright Claims

A new law known as the Copyright Alternative in Small-Claims Enforcement (CASE) Act creates an entirely new tribunal within the U.S. Copyright Office for resolving smaller copyright disputes. Before the CASE Act, aggrieved copyright owners generally nee…

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Firm News

Hinckley Allen’s Legal Excellence Recognized by Boston Magazine

Hinckley Allen is pleased to announce that numerous attorneys have been recognized by Boston Magazine, earning the prestigious title of "The Top Lawyers of 2023." This annual accolade, initiated in 2021, is designed to highlight outstanding legal talent in…

Firm News

57 Hinckley Allen Lawyers Included in 2023 Super Lawyers and Rising Stars Lists

A total of 57 Hinckley Allen attorneys were named to the Super Lawyers® and Rising Stars lists in Connecticut, Massachusetts, New Hampshire, Rhode Island, and Upstate New York for 2023, including those newly recognized as well as featured in Top Lists.Ger…

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Case Study

Hinckley Allen Facilitates Brinker Capital Merger in Significant Moment for Financial Services Industry

Hinckley Allen represented its long-time client, Brinker Capital, a registered investment adviser, and its affiliated broker-dealer, in their sale to new investment partnership controlled by funds affiliated with Genstar Capital Partners, a California-base…