United States: New York James Donoian

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.

Professional associations

  • INTA

Sample client list

  • Alexander Wang
  • Cartier
  • Loblaw Companies
  • Milk Studios
  • Reynolds Consumer Products

Firm details

McCarter & English LLP
245 Park Avenue
New York NY 10167
United States

Contact details

E: jdonoian@mccarter.com
T: +1 212 609 6817
W: www.mccarter.com

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Issue 71