Partner - McCarter & English LLP
James H Donoian has wide-ranging experience in protecting and enforcing IP rights. He has counselled clients for over 25 years on global IP and brand management issues, including litigation and enforcement in US federal courts and in Europe, Asia and South America. He has litigated against clients’ competitors, licensees and distributors, as well as against infringers and counterfeiters in over 25 different US courts, including in Hawaii, Puerto Rico and the US Virgin Islands. He often works with foreign counsel and law enforcement agencies, including to coordinate investigations and concurrent litigation and enforcement efforts in multiple jurisdictions.
Mr Donoian has guided companies in establishing multiple forms of IP rights around new products to provide protection and, where necessary, in successfully combining various IP claims and equitable remedies to enforce those rights in the United States and abroad. He has also been responsible for global anti-counterfeiting enforcement programmes, obtaining seizure orders, asset restraints and other novel forms of equitable relief against domestic and foreign companies.
Mr Donoian also counsels clients and manages US and international trademark portfolios for various consumer goods and industrial clients, and advises on IP transactions and advertising, as well as marketing strategies and issues.
Mr Donoian works with clients in various industries, including fashion and apparel, jewellery, luxury brand goods, consumer products, toys, sports and entertainment, hotels and resorts, food and nutritional products, pharmaceuticals and medical devices, internet and television advertising and marketing, and other industrial and commercial markets. He helps clients develop and implement domestic and international brand management programmes and create early comprehensive IP protection for new products – covering trademarks, trade dress, copyrights, design patents and utility patents – in advance of product launches, in order to restrict copying by competitors and infringers.
Sample client list
- Alexander Wang
- Loblaw Companies
- Milk Studios
- Reynolds Consumer Products
McCarter & English LLP
245 Park Avenue
New York NY 10167
Navigating changes in the internet landscape and staying ahead of the curve
Anti-counterfeiting: A Global Guide 2017
The transition of the IANA functions from the US government to ICANN triggered a comprehensive review of many of ICANN’s services. While these do not have a serious impact on the everyday use of the Internet, they do have consequences for the services available to brand owners to combat ...
Food products: how plain packaging could make counterfeiting easier
Anti-counterfeiting 2016 – A Global Guide
The requirement that the packaging of certain products be plain, in order to highlight any warning placed on them, may carry more drawbacks than benefits for both the businesses that sell the goods and their consumers.
A new strategy for protecting luxury and fashion brands in the digital space
Online Brand Enforcement 2015
Fuelled by the increasing advances of the Internet for online sales and advertising, as well as by social media, brand cachet and corresponding demand for products have allowed companies to expand rapidly into new territories worldwide. Unfortunately, new growth opportunities for brands ...
Register for more free content
- Read more World Trademark Review blogs and articles
- Receive the editor's weekly review by email