Intellectual Property/ Trademark Outside Counsel

The New York State Department of Economic Development is seeking an experienced outside counsel specializing in intellectual property and trademark law to provide legal guidance on matters related to the registration, licensing, and enforcement of the Department’s trademarks, including the iconic I♥NY logo. The selected firm will be responsible for advising on trademark registration processes, licensing agreements, and will also handle asserting, enforcing, and litigating in defense of the Department’s registered trademarks both domestically and internationally. The outside counsel will work closely with NYSDED’s Counsel’s Office, Contract Management Unit, and program staff, and may interact with senior Department officials as needed. The contract is set for a five-year term, with a total project value estimated between $500,000 and $2,000,000, and is open to all counties within New York State. The procurement emphasizes a commitment to MWBE participation, aiming for 30% participation from Minority and Women-Owned Business Enterprises, though there are no specific set-asides for Service-Disabled Veteran-Owned or Disadvantaged-Owned businesses. The solicitation was posted on June 5, 2024, with responses due by July 10, 2024, and questions regarding the contract are due by June 20, 2024. The contract history indicates previous similar work was performed by Heslin Rothenburg Farley & Mesiti P.C., and the services are to be performed within New York State. The primary point of contact for this procurement is Jamie Moore, Contract Management Specialist, reachable via email or phone.