Paul Borovay has experience counseling senior-level management, marketing divisions, sales teams, and in-house legal teams. His work runs the gamut from representing a startup fintech firm in a trademark dispute with one of the world’s largest financial services companies, to conducting due diligence for intellectual property-focused mergers, acquisitions, and divestitures. Paul has protected some of the biggest and most recognizable brands both in the United States and abroad, and he brings a unique, experiential skill set that brings value to any matter on which he works.
Paul regularly conducts worldwide IP due diligence, clearance, and risk analysis for major global product expansions. He has managed domestic and international trademark and copyright portfolios for clients in the technology, financial services, food and beverage, pharmaceutical, household products, and retail industries. He also assists clients in all aspects of domestic and foreign trademark prosecution and enforcement, including directing outside counsel in more than 40 countries. Paul has successfully handled trademark oppositions, cancellation proceedings, and office action response before the U.S. Patent and Trademark Office, and he has successfully secured several domain name transfers using UDRP proceedings.
Paul has negotiated worldwide contracts, disputes, licenses, and assignments with multinational companies. He takes the time to fully understand the nuances of his clients’ products to ensure that any agreement they sign protects their current products and those they may make tomorrow. Paul negotiates with confidence, respect, and humility, which reflects positively on his clients and often helps close deals quickly and under budget.
Paul reviews advertising material and copy for clients to ensure that risks are minimized and that claims are substantiated. He also advises marketing teams on best practices, intellectual property, and FTC compliance. Paul has first-hand experience litigating cases concerning false advertising, trademark infringement, trademark counterfeiting, and copyrights, which has given him an appreciation for disputes that could have been averted.
Privacy and Data Security
Paul conducts comprehensive privacy and data security risk assessments for companies large and small, which includes putting together detailed and prioritized remediation recommendations and instant responses policies and procedures. Paul also has experience working directly with companies’ IT teams to determine the extent of a breach and whether and what state data breach notification and disclosure laws may apply.
• Managed domestic and international trademark portfolios for clients in the technology, financial services, food and beverage, pharmaceutical, household products, and retail industries. Also advised clients in all aspects of domestic and foreign trademark prosecution and enforcement, including directing outside counsel in more than 40 countries
• Successfully handled trademark oppositions, cancellation proceedings, and office action response before the U.S. Patent and Trademark Office
• Represented leading, privately-held plumbing products company in successful copyright litigation against third-party’s unauthorized use of photographs of the company’s products
• Represented a financial services trading platform in trademark litigation against a direct competitor, securing a quick result and a complete abandonment of the infringing use
• Advised well-known restaurant brand in COLA review for proposed rum-based product launch
• Represented one of the world’s largest manufacturers of iron water works and plumbing products in a copyright and trademark infringement suit against a direct competitor
• Represented a European-based fintech firm in an opposition against one of the world’s largest credit card services companies, which included all aspects of discovery and motion drafting, as well as conducting and drafting a likelihood of confusion survey
• Prepared and filed copyright applications for software, sound records, and works of visual art for clients in the software, music, and manufacturing industries
• Lead enforcement efforts for multinational pharmaceutical company and its vitamin and supplement product line
• Successfully secured domain name transfers through UDRP proceedings in both WIPO and the Forum
• Regularly conduct worldwide trademark clearance and risk analysis for publicly traded technology company
• Represented leading restaurant brand in connection with new restaurant concept launched in 2018, including trademark and trade dress clearance
• Conducted trademark enforcement for one of the world’s largest apparel companies
• Represented largest privately held manufacturer and distributor of medical supplies in a right of publicity and breach of contract case.
Publications & Presentations
Music and Motion Picture Licensing for Healthcare Providers: It Pays to Play
Featured, Healthcare News
September 11, 2018