Tess Bonoli

About Tess Bonoli

I work with clients to protect and leverage their IP assets, develop and license software and IT services and manage their privacy and data security obligations. Whether I’m working with individual clients and startups, or multinational companies with global brand recognition, I consider each client’s unique business model and resources, and seek to facilitate their creativity and growth while mitigating risk and liability exposure. I provide these services to a diverse range of clients, including ecommerce platforms, technology companies, fashion and beauty retailers, fitness and wellness companies, NFT platforms, accountants and wealth managers, engineering and construction companies, venture capital investors, and private equity firms. TRADEMARK PROSECUTION & PORTFOLIO MANAGEMENT I have shepherded numerous trademarks through the prosecution process, including preparing and filing trademark applications, responding to the USPTO’s requests and office actions, and completing post-registration maintenance filings. I have managed clients’ sizable U.S. and international trademark portfolios containing hundreds of trademarks across approximately 50 countries, including liaising with international counsels worldwide. In addition, I help clients balance the costs and benefits of maintaining various trademarks in their portfolios. SOFTWARE/TECHNOLOGY DEVELOPMENT & LICENSING I work with software, ecommerce, crypto, and consulting companies to draft and negotiate their SaaS, PaaS, and IT services agreements with their vendors and customers, including for software development and licensing. This experience allows me to spot key issues in these agreements, including evaluating whether the contract terms meet actual and anticipated needs, and protecting rights with respect to software and data ownership. PRIVACY & DATA SECURITY I create privacy policies for clients’ websites and applications to explain their data collection and use practices to users, and I draft terms of service to govern users’ interactions with those platforms. I also work with clients and liaise with local counsels to assess compliance obligations with respect to CCPA/CPRA, GDPR, the NY SHIELD Act and the Massachusetts data security law, among others. CORPORATE M&A On behalf of buyers, sellers, and investors, I conduct due diligence in the IP, technology and privacy/data security spaces. I provide support throughout transactions, including with respect to open source analyses for key software assets, purchase agreements, pre-closing IP assignments, and post-closing action items.

Experience

1. Associate Attorney

   Morrison Cohen Llp

   Feb 2021 — Present · New York, NY, US

   Representative matters (9) that I have completed include: • Managing fashion retailer’s global trademark portfolio with marks in 48 countries.• Prosecuted trademark application, successfully overcame USPTO office action and achieved registration of pet care company’s key trademark for its new branding initiative. • Prosecuted trademark application and successfully overcame likelihood of confusion objections for wellness company’s flagship trademark. • Advised private art collector in connection with a multimillion dollar sculpture acquisition, including transport and installation considerations for the artwork.• Developed privacy policy, terms of service and artist agreements for NFT platform operator offering custom artwork NFTs to a multinational consumer base.• Represented fashion retailer in contract drafting/negotiations with multiple technology providers (including digital marketing technology providers), including GDPR analysis and documentation.• Assisted accounting and business consulting company in assessing its obligations pursuant to, and in its efforts to comply with, privacy and data security laws including CCPA/CPRA and GDPR. • Advised private equity fund in its acquisition of an IT services company with proprietary software and a complex trademark portfolio. • Advised private equity fund in its acquisition of a home fragrances company with a robust domestic and international trademark portfolio.

Education

• Brooklyn Law School

  Juris Doctor , Intellectual Property Law

• Tufts University

  Bachelor of Arts (B.A.), Classical, Ancient Mediterranean and Near Eastern Studies and Archaeology

Skills

• Motions
• Archaeology
• Legal Issues
• Art Law
• Copyright Law
• Intellectual Property
• Privacy Law
• Trademarks
• Latin
• Entertainment Law
• Italian Translation