United States: Massachusetts

Firms

1
Wolf Greenfield & Sacks PC
2
Foley Hoag LLP
Hamilton Brook Smith Reynolds
Ropes & Gray LLP
Sullivan & Worcester LLP
Wilmer Cutler Pickering Hale and Dorr LLP
3
Burns & Levinson LLP
Day Pitney LLP
Goodwin Procter LLP
Morgan Lewis & Bockius LLP
Nixon Peabody LLP
Burns & Levinson LLP
The Burns & Levinson trademark team works seamlessly with the full-service outfit’s other practices – particularly finance, tax and regulatory – to provide a comprehensive offering that can troubleshoot any trademark issue from any industry and maximise brand protection to boot. The IP group is co-chaired by the “incredibly sharp” Deborah Peckham; she is especially well attuned to the needs of players in the high-tech arena and is a safe pair of hands for internet and e-commerce companies. While she soothes the day-to-day worries of major brands such as Segway, she is also a perfect fit for smaller businesses: “She enjoys partnering with small and medium-sized companies and the work that she does for them is outstanding.” Teammate Mark Schonfeld is a trial attorney with an enviable amount of courtroom know-how. He has an intimate understanding of litigation procedures, but his real gift lies in stamping out high-end counterfeiting.
Day Pitney LLP
While the highly specialised IP team at corporate outfit Day Pitney can adroitly handle all manner of contentious mandates, the firm’s general litigators provide considerable added firepower in make-or-break disputes over lucrative intangible assets. Swift, sharp action is a hallmark of the trademark practice, be it in response to client requests or in the proactive enforcement of brand rights. “The service culture is excellent, as it turns matters around ASAP.” The “terrifically shrewd and affable” Carrie Webb Olson leads the pack. She has played a vital role in creating a sophisticated modern docketing system to support the group’s ever-increasing workload. She is “commercially minded and good at tailoring her advice to suit a client’s budget and aspirations, and she makes sure that her subordinates operate in the same manner”. Although Fish & Richardson maintains outposts across the country, Boston is undeniably the beating heart of its pre-eminent national practice. The IP group boasts a deep pool of legal talent and commercial knowledge, which has attracted the longstanding patronage of numerous top-brass trademark owners. “Fish & Richardson is always a competitor for intellectual property in Boston – it’s the big dog here.” At the top of the food chain is Cynthia Johnson Walden, an “outstanding trademark practitioner” whose “strategic savvy” informs her “excellent, results-oriented counselling”. “She has a unique ability to facilitate innovative brand protection solutions in a cost-effective manner.” Robert O’Connell also wins “unequivocal endorsement” from clients for his measured, cost-sensitive advice. He never fails to address domestic and global branding issues quickly and comprehensively, causing one client to profess: “He is the only lawyer that I would use for trademark work in the Boston area.” Debra Serota wins plaudits for her incisive management of international portfolios; a decade spent as in-house counsel for Reebok underpins her perceptive, business-driven advice. Timothy French splits his time between trademark and patent prosecution, but is similarly “an international leader” in the field; he is “astute, bright and knows the law of trademarks”. Mirroring the high quality of the non-contentious practice, the heavy-duty contentious team is admired for its countless courtroom victories – many of which have been masterminded by David Hosp, the “exact type of person you would want as first chair in a suit”. He adopts an “even-handed and very analytical approach”; “substantively, he is second to none”. “Efficient and effective”, Mark Puzella also litigates with aplomb and is “clearly a subject-matter expert at the top of his field”. Completing the triumvirate is Sheryl Koval Garko, who comes “highly recommended” for her “helpful and creative advice”, which is “always of first-rate quality”.
Foley Hoag LLP
Foley Hoag is “within the top three firms in Massachusetts for trademark work”, but also possesses “a strong national IP practice”. It shored up its countrywide reputation by opening a New York office in 2015. “While the team there may not be the cheapest available, it is absolutely money well spent – I have seen it take over matters and drive them to their conclusion when these same matters were languishing with other firms at similar rates,” avers one happy client. The practice’s success owes much to trademark chair Julia Huston. “An outstanding talent in this space”, she is a trailblazer in both prosecution and litigation. A previous stint as president of the Boston Bar Association and her current role as chair of the Parallel Imports Committee of the International Trademark Association (INTA) proves her worth as “one of the top branding attorneys in the United States”. Another star of the practice is Joshua Jarvis, who was elected to the partnership in early 2016. Initial brand development and strategic insight on how best to overcome complex obstacles are both strong suits; ownership and licensing issues also fall under his purview. “He is very creative and a great attorney with the personality to match”, as well as “an expert in the new media space”.
Goodwin Procter LLP
The trademark group at Goodwin Procter specialises in resolving the most challenging, multifaceted issues faced by brand owners, as evidenced by its representation of B&B Hardware in one of the few trademark cases to have reached the US Supreme Court; it triumphed for its client in what was arguably the most significant trademark decision of 2015. The victory was in no small part thanks to the “fantastic” Robert Carroll. With a sterling record of success in the courts and intimate familiarity with milestone cases, he is also an adept counsellor for emerging enterprises: “He plays an instrumental role in helping small companies to achieve their short-term goals and positioning them to achieve their long-term ones.” He is also “responsive and consistently renders great advice” for businesses of any size.
Hamilton Brook Smith Reynolds
Hamilton Brook Smith Reynolds prides itself on devising economical strategies that ensure maximum brand protection. The boutique has streamlined its processes to a fine point, which translates into lightning-fast turnaround times and pithy advice – when a three-line answer will suffice instead of a three-page one, that is what the firm will provide. “Solid all-around trademark practitioner” John DuPré epitomises this efficiency: “He is extremely quick and will come back to you immediately if you have a question for him.” Speed is not his only enviable characteristic, though – “his patience and intelligence are second to none”. The “excellent” Susan Glovsky is equally “patient and very thorough” in catering to clients’ needs; the enforcement maven’s foresight and wisdom have made her an invaluable partner to businesses across numerous industries. A string of offices in and around New England gives McCarter & English a noteworthy presence on the East Coast IP landscape. Close coordination between them amplifies their efficacy – for example, the New York unit plays host to many members of the firm’s esteemed luxury and fashion group, with which the Boston team works hand in hand. Lynchpin Lee Carl Bromberg has racked up an impressive track record representing major fashion brands in bet-the-company litigation, including his successful defence of Christian Louboutin’s famous red sole mark. Another stalwart defender of the interests of fashion players is Lori Shyavitz, who can also deftly navigate the intersection of intellectual property and advertising and promotion law. Contentious ace Erik Paul Belt’s focus on entertainment and technology disputes exemplifies the team’s broad industry expertise. Keith Toms is another adroit litigator, but also shines for his advisory services: “He is extremely proactive and has a perfect understanding of the law. His opinions are always very precise and he provides just the right amount of information needed for a business to make a smart decision.”
Morgan Lewis & Bockius LLP
A 2014 merger with Bingham McCutchen saw Morgan Lewis & Bockius quadruple its worldwide partner headcount and move into previously uncharted territories – including Massachusetts. Its IP capabilities have likewise broadened, with new partners Rachelle Dubow and Joshua Dalton launching the Boston IP practice. Dubow focuses on clearing, prosecuting and managing global brands, while also helping businesses to monetise and license out their intellectual property in the most secure and efficient manner possible. “She makes every effort to fully understand the details of IP transactions” and “always delivers strong legal results”. Her “tremendous client communication and negotiation skills, as well as her truly amazing level of responsiveness”, ensure that she “brings clarity on any trademark issue”. Dalton also comes highly praised as a “master of the law” across the spectrum of IP disputes: he “understands all the concepts and arguments intuitively” and is “just fantastic all around”.
Nixon Peabody LLP
For a general commercial outfit, Nixon Peabody has one of the larger trademark prosecution practices in the country – it regularly places among the top national filers. It doesn’t simply go through the motions, but evinces real zeal for protecting marquee brands across their entire lifecycle. Patent and trademark litigator par excellence Jason Kravitz leads enforcement efforts and the group as a whole. He represents businesses from across the spectrum of industries, but is especially firmly plugged in to the concerns of technology companies. “He has a solid understanding of clients’ goals and strikes a good balance of knowing when to be aggressive and when not to be – he’s great at judging the situation.”
Ropes & Gray LLP
The Boston contingent of national heavy-hitter Ropes & Gray has turned prosecution into a fine art, while the New York and DC offices have perfected the handling of high-stakes disputes. Teams across the country work in harmony to provide a cost-to-coast, A-to-Z service. Emilia Cannella concentrates on the daily management of portfolios, although her “broad and comprehensive trademark knowledge” also allows her to resolve tricky contentious and transactional matters without breaking a sweat. “She is that great combination of smarts and practicality”; clients appreciate her “attention to detail and in-depth analysis of potential issues”. The firm’s ongoing relationship with Luxury Brand Partners has flourished of late, due largely to the spectacular joint efforts of Cannella and Erica Han. IP and corporate transactions are Han’s forte, as well as global strategy, prosecution and clearance. “She is highly responsive, has a uniquely strong mix of prosecution and transactional expertise, and brings a very helpful, pragmatic perspective to counselling and agreement drafting based on her prior in-house experience.”
Sullivan & Worcester LLP
A solidly commercial mindset and a well-connected network of foreign associates give Sullivan & Worcester’s trademark team a nuanced grasp of business-related branding issues worldwide. Its management of the portfolio of Vice Media – a worldwide media player operating in more than 30 countries – exemplifies its international expertise. The Vice brief falls under the remit of the “pragmatic and experienced” Kimberly Herman. Although well versed in many fields, Herman spends the bulk of her time developing and implementing high-level strategies. She is “an outstanding adviser” who “zealously looks out for a client’s interests”, but “her passion and devotion are tempered by a good practical sense”. Lawrence Robins likewise wins plaudits for his perceptive counsel and fierce contentious skills. “A great teacher to other top practitioners”, he is “strong in negotiations” and has “that far-reaching experience and perspective that clients appreciate”. Sunstein Kann Murphy & Timbers’ trademark team has drawn in many big-name clients – particularly in the life sciences and higher-education domains – thanks to its unfailingly pragmatic advice and remarkable stability. Its core practitioners have practised together long enough to develop a deep camaraderie and ensure that marks are cared for by the same partners from start to finish. Trademark chair Lisa Tittemore “is involved in many professional activities and is clearly so hardworking”, says one peer; another is impressed by her “diverse litigation experience, which makes her extremely well informed and easy to talk to on trademark matters”. Her seasoned courtroom know-how extends to patent and copyright cases and she also co-chairs the litigation group, alongside the redoubtable Kerry Timbers. Timbers is equally adept at counselling and prosecution, especially for briefs that stretch beyond US borders. His admirable network of foreign counsel is a coveted ace up his sleeve, but “he acts very economically and will use only a small – but sufficient – number of contacts to solve issues”. On top of this, “his responses are clear and comprehensive” and his work is both “fast and accurate”. These qualities have given him the chops to take on responsibility for major clients, including Harvard University. “Dedicated and diligent” prosecution whizz Steve Abreu is “a fantastic attorney who is on the ball and really knows the law”; he “can always cater to a situation from a business perspective”. His continued efforts and successes saw him elected to the partnership in 2016.
Wilmer Cutler Pickering Hale and Dorr LLP
Intellectual property is a cornerstone of WilmerHale’s full-service offering and the team has a natural instinct for resolving IP issues that overlap with commercial concerns. The Massachusetts office is anchored by Michael Bevilacqua, who manages thousands of trademark and service mark registrations domestically and abroad, but also has extensive experience in transactional mandates, especially those involving technology-related agreements. “He is very smart, thorough and highly skilled – he does a lot of work and it is all of top-notch quality.”
Wolf Greenfield & Sacks PC
As one of the largest IP outfits in Massachusetts – and with virtually all of its staff based in Boston – Wolf Greenfield & Sacks casts an imposing shadow on the Bay State market. However, its formidable local presence belies its international reach and client base. The firm’s wide scope of influence allows it to take any trademark issue by the horns and it can call in members of its crack litigation team for support should things get dicey. Prevailing before the Trademark Trial and Appeal Board (TTAB) is the branding squad’s main claim to fame – it currently enjoys a virtually undefeated record. This strength is boosted by the presence of the “truly astounding” John Welch. “He has an encyclopaedic knowledge of trademark cases – his blog keeps on top of every important case coming out of the TTAB. If you need to know anything about the board, he is the man to see. He is at the top of his game.” Team chair Douglas Wolf is another nationally esteemed practitioner; he is consistently recognised as one of the top filers in the country and has served on a diverse array of INTA committees. He has “a fantastic reputation as an all-round strategist” who offers “very timely, business-practical advice”. While he has “a great client base for both counselling and litigation”, he shines brightest in domestic and foreign prosecution. One enthralled peer states: “He is the kind of practitioner I aspire to be one day.” Completing the set is Michael Albert, who co-chairs the litigation group. He specialises in patent disputes, but is a force to be reckoned with in soft IP trials, too. A “very strong litigator” with a terrific demeanour and knowledge base, he also ably applies his skills as a domain name dispute arbitrator.

enforcement and litigation

David Hosp - Fish & Richardson PC
Julia Huston - Foley Hoag LLP
John L Welch - Wolf Greenfield & Sacks PC
Michael A Albert - Wolf Greenfield & Sacks PC
Erik Paul Belt - McCarter & English LLP
Lee Carl Bromberg - McCarter & English LLP
Robert D Carroll - Goodwin Procter LLP
Joshua M Dalton - Morgan Lewis & Bockius LLP
John L DuPré - Hamilton Brook Smith Reynolds
Sheryl Koval Garko - Fish & Richardson PC
Jonathan M Gelchinsky - Pierce Atwood LLP
Susan GL Glovsky - Hamilton Brook Smith Reynolds
Ann Lamport Hammitte - Lando & Anastasi LLP
Jason C Kravitz - Nixon Peabody LLP
Mark S Puzella - Fish & Richardson PC
Lawrence R Robins - Sullivan & Worcester LLP
Mark Schonfeld - Burns & Levinson LLP
Kerry L Timbers - Sunstein Kann Murphy & Timbers LLP
Lisa M Tittemore - Sunstein Kann Murphy & Timbers LLP
Cynthia Johnson Walden - Fish & Richardson PC
Douglas R Wolf - Wolf Greenfield & Sacks PC

prosecution and strategy

Julia Huston - Foley Hoag LLP
Robert M O'Connell Jr - Fish & Richardson PC
Cynthia Johnson Walden - Fish & Richardson PC
John L Welch - Wolf Greenfield & Sacks PC
Douglas R Wolf - Wolf Greenfield & Sacks PC
Michael J Bevilacqua - Wilmer Cutler Pickering Hale and Dorr LLP
Emilia F Cannella - Ropes & Gray LLP
Patrick J Concannon - Nutter McClennen & Fish LLP
John L DuPré - Hamilton Brook Smith & Reynolds PC
Jonathan M Gelchinsky - Pierce Atwood LLP
Kimberly B Herman - Sullivan & Worcester LLP
Lawrence R Robins - Sullivan & Worcester LLP
Carrie Webb Olson - Day Pitney LLP
Steve Abreu - Sunstein Kann Murphy & Timbers LLP
Rachelle A Dubow - Morgan Lewis & Bockius LLP
Timothy A French - Fish & Richardson PC
Nicole E Gage - Foley & Lardner LLP
Erica L Han - Ropes & Gray LLP
Joshua S Jarvis - Foley Hoag LLP
Deborah Peckham - Burns & Levinson LLP
Debra S Serota - Fish & Richardson PC
Lori Shyavitz - McCarter & English LLP
Kerry L Timbers - Sunstein Kann Murphy & Timbers LLP
Lisa M Tittemore - Sunstein Kann Murphy & Timbers LLP
Keith Toms - McCarter & English LLP
Close

Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 70