The Hedge Fund Law Report

The definitive source of actionable intelligence on hedge fund law and regulation

Articles By Topic

By Topic: Trademarks

  • From Vol. 10 No.8 (Feb. 23, 2017)

    How Hedge Funds Can Protect Their Brands and IP: Pepper Hamilton Attorneys Discuss Trademarks and Copyright (Part One of Two)

    An adviser’s name and proprietary trading methods can be among its most valuable assets. A panel of intellectual property (IP) attorneys at Pepper Hamilton’s recent symposium offered a thorough overview of the fundamental elements of trademark, copyright, trade secret and patent law, as well as practical examples of how IP law intersects with fund management. The panel was moderated by Pepper Hamilton partner Gregory J. Nowak and featured Evan H. Katz, a managing director of alternative asset investment firm Crawford Ventures, Inc.; Pepper Hamilton partners Michael K. Jones and Peter T. Wakiyama; and associates Lori E. Harrison and Joseph J. Holovachuk. This article, the first in a two-part series, discusses how investment managers can safeguard their brands through trademarks and protect their copyrightable materials. The second article will explore the panelists’ insights with respect to trade secrets and patents in the investment management context. For more on IP protection, see “Trending Issues in Employment Law for Private Fund Managers: Non-Compete Agreements, Intellectual Property, Whistleblowers and Cybersecurity” (Nov. 17, 2016). For additional insight from Pepper Hamilton, see “Marketing and Reporting Considerations for Emerging Hedge Fund Managers” (Jun. 16, 2016). For more from Nowak, see “Tax Proposals and Tax Reforms May Affect Rates and Impose Liabilities on Hedge Fund Managers” (Apr. 16, 2015).

    Read Full Article …
  • From Vol. 5 No.11 (Mar. 16, 2012)

    Hedge Fund Names: What a Hedge Fund Manager Should Do Before It Starts Using a Name

    Although the pace of new hedge fund formation these days is nowhere near that of several years ago, new funds are still being formed at a fairly healthy clip.  Whether as a result of investment banks spinning off their proprietary trading operations due to the Dodd-Frank regime or as a result of successful traders leaving funds that are stuck below their high-water marks, new funds are being formed and new managers will need to come up with names for their management companies and funds.  In the wake of last decade’s exponential growth in the industry, they will find that most of the obvious sources of names (e.g., trees, birds, constellations and mythological entities) are already being used.  Other names, although no longer in use, have been so tarnished by their past use in the investment management field (whether due to scandal or simply poor performance) that they are no longer viable candidates for a new manager.  This makes selecting a name for a new management company or fund increasingly difficult and presents a greater risk now than ever before.  It also makes obtaining trademark protection for a name increasingly important.  Complicating the name selection issue is the fact that trademark rights exist on a country-by-country basis, which means that a given name might be available for use and registration in one country but not in another.  With the globalization of financial markets and the rise of multi-jurisdictional hedge fund managers, new managers must consider name rights outside the United States and may have to devise intricate use and registration strategies internationally to ensure their ability to use their name and prevent others from adopting similar names across many countries.  In a guest article, David Nissenbaum and Scott Kareff, Partner and Special Counsel, respectively, at Schulte Roth & Zabel LLP, discuss various topics related to hedge fund name selection, including: the importance of trademark registration for hedge funds; specific disputes that can arise as a result of name selection; ten lessons that can be learned from prior name disputes; and the value of name searches, including a discussion of the name search process and its inherent limitations.

    Read Full Article …
  • From Vol. 3 No.45 (Nov. 19, 2010)

    U.K. Chancery Court Holds That, Under European Union Intellectual Property Law, Financial Services Company “OCH Capital” Infringed the Trademarks of European Hedge Fund Manager Och-Ziff Capital Management

    On October 20, 2010, a Judge of the United Kingdom High Court of Justice, Chancery Division, ruled that OCH Capital, LLP infringed two trademarks, “OCH-ZIFF” and “OCH” registered by hedge fund Och-Ziff Management Europe, Ltd. and its manager, OZ Management LP (collectively Och-Ziff or Claimants), and that OCH Capital committed “passing off,” the European equivalent of “unfair competition.”  Specifically, it found that, by using the sign “OCH Capital,” and derivations thereof, in the course of its trade in the financial services industry, OCH Capital created confusion in the marketplace with the Och-Ziff trademarks, and caused damage to, and took unfair advantage of, the Och-Ziff Group’s established reputation in the same industry.  The Court also held OCH Capital, its founder, Thomas Tadeus Antoni Ochocki, and its management firm, Union Investment Management Ltd. jointly liable.  We detail the background of the action and the Court’s legal analysis.

    Read Full Article …