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Montgomery, A

Alexander P. Montgomery

Associate

Alex Montgomery regularly advises clients of all sizes and across all industries on the selection, protection, and enforcement of their copyrights and trademarks. Additionally, Alex has experience in a variety of technology transactions and licensing matters, especially in the software space. Finally, he is a member of the firm’s Cannabis Practice Group and advises clients in the industry on the complicated issues surrounding branding for cannabis-focused companies.

He also enjoys regularly updating his trademark blog, TantalizingTrademarks.com, where he examines interesting trademark applications recently filed with the U.S. Patent and Trademark Office.

Alex’s extensive copyright and trademark experience includes:

  • 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;
  • 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;

Experience

  • Provided guidance and advice to a marijuana dispensary related to the selection and protection of the dispensary’s name at both the state and federal levels.
  • Provided guidance and advice to a business selling CBD products related to the selection and protection of the business name and brand name at both the state and federal levels.
  • 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
    • Associate (2016-Present)
  • 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)

Charitable & Civic Involvement

  • 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-Present)
  • Cincinnati Bar Association
  • INTA (2016-Present)
  • National Cannabis Bar Association
  • Ohio Bar Association

Bar Memberships

  • Massachusetts
  • Ohio

News & Insight

Publication

Trademark Clearance Searching: Avoid Legal Risks and Realize Cost Savings

February 28, 2019

Trademark clearance searching is valuable because it allows you to get ahead of obstacles and avoid potential legal issues before they arise and before your company invests time and resources in developing its trademark. Consider the set-back you would exp…

Publication

Protecting Your Brand in the Cannabis Industry: 5 Practical Tips

February 15, 2019

A valuable form of legal protection for many brand owners is a federal trademark registration with the U.S. Patent and Trademark Office (“USPTO”). A federal trademark registration provides its owner several legal benefits, such as nationwide rights and…

Publication

Six FAQs on Federally Registering Your Trademark, Brand Name or Logo

February 4, 2019

Question 1: Why seek a federal (U.S.) trademark registration?There are six important reasons to seek federal registration of your trademark or brand name. Plans to expand your business into other regions of the U.S. Concern about importation of counterfe…

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Firm News

38 Hinckley Allen Attorneys Recognized as 2018 Super Lawyers and Rising Stars

October 18, 2018

The Super Lawyers has selected 38 Hinckley Allen attorneys as Super Lawyers and Rising Stars. Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive this honor.Super Lawyers, a Thomson…

Firm News

Alexander Montgomery Joins Hinckley Allen’s Intellectual Property and Corporate & Business Practices as an Associate

September 20, 2016

Hinckley Allen is pleased to welcome Alexander Montgomery to the firm’s Boston office as an associate in the Intellectual Property and Corporate & Business groups where he’ll focus on copyright and trademark prosecution and enforcement, as well as …