Scheef & Stone L.L.P.

Practice Areas

Business Transactions
Cybersquatting and Domain Name Disputes
E-Commerce and Internet-Related Transactions
Emerging Businesses
Intellectual Property
Intellectual Property Litigation
Media and Entertainment
Trademark Prosecution
Trade Secrets

Practice Emphasis

Tom Kulik is a valuable member of Scheef & Stone’s Intellectual Property Practice Group. With a unique understanding of how intellectual property assets influence business, Mr. Kulik strategically counsels clients on matters involving the evaluation, acquisition, development and protection of intellectual property rights, with an emphasis on creatively leveraging such assets through domestic and international licensing and technology transfer.

Prior to matriculation in law school, Mr. Kulik was an award-winning systems engineer for 3Com Corporation, where he was responsible for local and wide-area network architecture and design supporting both Fortune 500 and start-up companies in the computer services, financial and pharmaceutical industries. Mr. Kulik also engaged in professional acting as a teenager, and has direct experience in television, radio and motion picture production.

Leveraging this industry experience with intellectual property law, Mr. Kulik’s practice involves all facets of intellectual property licensing and technology transfer under patent, trademark, copyright and trade secret law. This experience spans the formulation and execution of complex software development and licensing strategies, including VAR/OEM supply and distribution, manufacturing/joint-development, consulting/support, trademarks/trade dress, trade secret programs and outsourcing. Mr. Kulik assists clients well beyond the traditional scope of IP representation, cultivating and protecting portfolios for emerging growth and legacy companies by performing due diligence reviews to facilitate corporate asset transfers, counseling on IP securitization and enforcement, leveraging publicly-funded research assets in commercial enterprises, designing design patent/trade dress programs and structuring strategic alliances to exploit jointly-developed technologies in digital enterprises.

Mr. Kulik serves as a frequent resource to the media on issues involving cyberspace and intellectual property law, including “spam” and other state and federal privacy legislation. He has written articles addressing these issues, including a criticism of the Computer Assisted Passenger Pre-screening System II (CAPPS II) for Depth magazine. He has also been quoted on these issues in a number of national and local publications, including The Dallas Morning News, MSNBC Business and The New Jersey Law Journal.

Representative Matters

• Mr. Kulik had the privilege of operating through appointment by the Governor of the State of New Jersey to serve as primary intellectual property counsel to a consortium of state entities chartered to develop and implement a $500 million electronic toll collection system.

• Representation of well-known videogame developer in the integration of new graphics modeling engine into updated videogame franchise (including online multiplayer gameplay), and related publishing and distribution of the game through a national videogame publisher.

• Representation of internationally recognized retail garment designer in launch of child-oriented website, responsible for evaluation and integration of web components necessary for FTC and Child Online Privacy Protect Act (COPPA) compliance, as well as implementation of content protection program.

• Representation of national courseware developer in the preparation and prosecution of its core trademarks, coordinating its international brand identity by protecting its trademark rights in over 30 countries (including foreign trademark prosecution, resolution of “typosquatting” and related assertion of trademark rights against infringers).

• Representation of privately-financed, emerging growth company in the integration of cutting-edge patented technology licensed from University of Texas in exchange for equity position correlated to performance criteria. Included related licensing of content from commodities markets to integrate with PDA’s for mobile ranch management platform.

• Representation of ranch owner in the protection of its trademarks and license rights during post-production and rollout of a nationally-televised reality-television program.

An experienced trademark practitioner, Mr. Kulik regularly counsels clients on the use, registration and protection of trademarks and service marks, preparing and prosecuting applications for domestic trademark and service mark registration. This includes handling ICANN UDRP proceedings for internet domain name dispute resolution, as well as trademark infringement, unfair competition and false advertising claims. Mr. Kulik also has significant experience in foreign trademark prosecution and maintenance worldwide, as well as assisting foreign corporations in protecting and asserting their trademarks in the United States.

Mr. Kulik has significant experience in laws involving the internet and emerging technologies/media, including domain name cybersquatting/typosquatting, internet jurisdiction, e-commerce and multimedia rights. He regularly helps clients navigate the rapidly evolving area of personal information privacy, regularly counseling clients on personal information handling practices and policies, including statutory/regulatory requirements for preserving the privacy of financial, health and other personal information.

Combining all this experience, Mr. Kulik’s expertise extends to media and entertainment representation. From counseling newspapers, magazines and publishing houses on First Amendment and IP rights acquisition to assisting videogame developers and publishers in facilitating product-to-market, his experience spans both traditional entertainment (such as motion pictures, television and music) and digital media (including animation, music synchronization and online music, videogame development/publishing/distribu-tion and a multitude of e-commerce enterprises in the development and distribution of content).

Bar Admissions

• Texas

• New Jersey

Court Admissions

• U.S. District Court for the Northern District of Texas

• New Jersey District Court

Education

• J.D., Pace University School of Law School, 1993

• B.A., Franklin & Marshall College, 1987

Honors and Awards

• Member, Pace Law Review

• Member, National Moot Court Team

• Winner, Best Brief, Oralist and Team, Pace Law Moot Court Competition

• American Jurisprudence Awards – Real Property, Trial Advocacy

• NYSBA Law School Legal Ethics Award Winner (1993)

• Member of John Jay Criminal Justice Clinic (1992 – 1993), representing New York County as a student assistant district attorney prosecuting domestic violence matters.

Affiliations

• Member, Board of Directors, Big Thought (a learning partnership committed to inspiring, empowering and uniting children and communities through arts and culture)

• Member, Texas Pro Bono College

Professional Invovlement

• American Intellectual Property Lawyers Association

• Texas Bar Association

            • Intellectual Property Law Section

• Dallas Bar Association

            • Intellectual Property Section

            • Computer Law Section

            • Sport and Entertainment Law Section

Clerkships

• Mr. Kulik served under legislative appointment as a judicial law clerk in Superior Courts of New Jersey for Hon. James P. Courtney, Hon. James N. Citta and Hon. James D. Clyne (1993-1994).