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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 intellectual property through selection, registration, enforcement, and licensing. Here he shares how he got started in this practice area and why he thinks it’s such a fascinating area of the law.

How did you first get interested in intellectual property law?

My passion for intellectual property started in law school after I took an introduction to intellectual property course. The underlying subject matter is so often creative and unique, which keeps my practice interesting. Trademarks, for example, generally consist of brand names, logos, and slogans, but can also be short musical jingles, shapes of products, and even scents.

Copyrights, on the other hand, generally arise when any creative work is fixed in a tangible medium, like music, photographs, books, websites, and even software. I’m fortunate enough to work with clients ranging from solo entrepreneurs to big corporations across a variety of industries, all of which own their unique copyrights and trademarks. For example, quite a few Hinckley Allen clients are in the entertainment and music industries, so I’ve had the opportunity to work with a variety of bands and sports teams to help them protect their trademarks. Getting to see the creative things our clients develop, and assisting them with maintaining and maximizing their rights in that intellectual property, is incredibly rewarding.

How does copyright and trademark law fit into your practice?

Not only do companies often need guidance with respect to ensuring they own new trademarks or copyrights developed by them, their employees, or outside contractors, they frequently reach out to me to assist with protecting their valuable intellectual property following creation. Many companies, for example, own decades-old trademarks that have accumulated significant goodwill. Protecting that goodwill is vital. Permitting third parties to infringe upon those rights is not only likely to result in consumer confusion, but also dilutes the brand and jeopardizes the trademark owner’s ownership of the same.

There’s also significant work in the area of licensing, including licensing in the software space. If a trademark or copyright owner is permitting a third party to use its intellectual property (like software) or obtaining the right to use another’s intellectual property, a license agreement is typically involved. I draft and review those agreements to ensure the client’s intellectual property is protected (if the licensor) or to ensure the client is getting the rights they need from the owner of the licensed intellectual property (if the licensee).

How does the trademark process work?

Many people think they need a trademark registration to obtain trademark rights, but that’s not true. Simply using a trademark in commerce to identify the source of one’s goods or services is sufficient to obtain trademark rights, albeit geographically limited rights. Obtaining a trademark registration from the U.S. Patent and Trademark Office (“USPTO”), however, provides one significant benefits, not the least of which is nationwide protection for one’s trademark (as opposed to geographically limited protection).

Prepare and filing an application with the USPTO is generally straightforward, but missteps, such as filing in the name of the wrong owner, listing the incorrect goods or services, or listing the wrong filing basis, can not only jeopardize the chances of obtaining a registration, but can also jeopardize the validity of the resulting registration (if a registration issues at all).

Filing an application isn’t the end of the registration process, however. Rather, it commences a somewhat complicated legal examination process whereby an attorney at the USPTO reviews the application to determine if it meets the statutory requirements for registration. For example, the USPTO will refuse to register trademarks that are confusingly similar to marks already on file. I assist clients through every stage of the registration process to maximize their chances of successfully obtaining a trademark registration.

What happens if more than one person is using the same trademark?

The short answer is that priority goes to whichever person started using the trademark first. But whether or not infringement arises also depends on a variety of other factors, such as the underlying goods and services. It’s possible for two companies to use the same name in unrelated industries, for example. I help clients navigate these issues to determine whether they may have a strong infringement claim or, if on the other side, whether they have a strong defense to a claim raised by a third party. I also advise clients on how best to minimize the risk of infringement resulting from any new trademarks developed by the client, primarily by conducting trademark searches.