United States: DC Metro Area Sterne, Kessler, Goldstein & Fox PLLC

Sterne, Kessler, Goldstein & Fox PLLC is a leading IP-specialty law firm based in Washington DC that is distinguished by the strong technical experience and knowledge of its lawyers. Sterne Kessler has more than 35 years’ experience helping companies to strategise, build and enforce worldwide IP portfolios, including preparing and prosecuting patent and trademark applications before the US and foreign patent offices, advising on portfolio strategies (eg, valuation, acquisition and due diligence) and inter partes matters (eg, lawsuits, appeals, oppositions and re-examinations). The firm’s trademark clients enjoy a team-orientated approach to service that is unparalleled in the IP space.

Sterne Kessler’s trademark, advertising and anti-counterfeiting practice is particularly adept at meeting the IP needs of companies that are developing and maintaining strong brands around the world. The firm’s well-thought-out IP strategies guard against patent, trademark and copyright infringers; knock-offs and counterfeiting; online fraud; and idea theft by competitors, insiders, partners and manufacturers – all of which can harm a company’s reputation and brand.

The following distinguish Sterne Kessler from the competition:

  • proactive representation that takes into consideration clients’ business objectives, marketing goals, state of the market and budget in order to craft the most effective strategy for protecting and enforcing a brand;
  • interdisciplinary protection strategies that include consideration as to whether other forms of IP protection (eg, design patents or copyright) would enhance the client’s market position;
  • a personal approach to representation – Sterne Kessler knows its clients and understands their businesses;
  • complimentary audits of clients’ marketing materials and websites to ensure maximum exposure and proper use of trademarks to maintain the strength of IP rights;
  • aggressive yet efficient programmes to identify and pursue trademark infringements in the marketplace (both real and virtual), including attempts by others to register conflicting marks with trademark offices throughout the world;
  • real-time electronic reporting and budget management for all matters;
  • flexible staffing and support options to work with clients’ in-house teams;
  • successful representation of clients in district court litigation, trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board and Uniform Domain Name Dispute Resolution Policy proceedings;
  • negotiation of licence and coexistence agreements; and
  • organisation of in-house training sessions on IP issues.

Sterne Kessler’s presence in Washington DC is a distinct advantage; the firm’s proximity to the US Patent and Trademark Office (USPTO), the Court of Appeals for the Federal Circuit, the International Trade Commission, the US Supreme Court and Congress means it is well positioned to help to shape the IP landscape. The firm’s lawyers can easily conduct in-person interviews at the USPTO and form substantive professional relationships with examiners, given their regular presence at the USPTO.

While the firm provides a full range of services, it is organised internally around four main practice groups: the biotechnology/chemical group, the electrical group, the mechanical/consumer products group and the litigation group. In total, more than 350 people are employed at the firm.

Sterne Kessler lawyers and agents are carefully recruited for their technical expertise and industry experience. Most have earned an advanced technical degree (more than 50 hold PhDs), and have significant industry or academic experience across a wide spectrum of technical areas, including electronics, software, biotechnology, clean technology, pharmaceuticals, grid resilience, chemical products and processes and consumer products. Sterne Kessler lawyers are trained to evaluate intellectual property in the context of clients’ business issues to ensure alignment with company goals.

In recent years, Sterne Kessler has been recognised for excellence in the following publications:

  • Intellectual Asset Management;
  • Managing Intellectual Property;
  • The National Law Journal (Intellectual Property Hot List); and
  • Chambers & Partners USA: America’s Leading Lawyers for Business.

Contact details

Sterne, Kessler, Goldstein & Fox PLLC
1100 New York Avenue NW
Washington DC 20005
United States

E: info@skgf.com
T: +1 202 371 2600
F: +1 202 371 2540
W: www.skgf.com

Professional contacts

Monica Riva Talley, Director
E: mtalley@skgf.com

Monica Riva-Talley, Director
E: mtalley@skgf.com

Sample client list

  • Cirque du Soleil
  • Deer Stags Concepts
  • Emergent BioSolutions
  • Paul Reed Smith Guitars
  • Ribbon Labs
  • Sun Products Corporation
  • The Washington Post

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Issue 70