Andrews Kurth Kenyon LLP
Andrews Kurth’s lateral hire of Kenyon & Kenyon’s IP team gave it an immediate and assertive presence on the trademark scene, propelling it into the WTR 1000
this year. “Capable, steady and creative”, Edward Colbert
is a go-to for high-stakes litigation. His courtroom acumen proved a blessing for Pintrips, for which he secured victory against Pinterest on all counts, successfully arguing that the terms ‘pin’ and ‘pinning’ fell under the fair use doctrine. He also continues to defend William Grant & Sons in ongoing disputes over its STOLICHNAYA vodka mark and recently prevented a Russian company from challenging its use in the United States. Accompanying Colbert in the office is the “detail-oriented, professional and practical” Susan Smith
, who offers perceptive guidance on both non-contentious and enforcement briefs for world-leading Fortune 500 companies.
Arent Fox LLP
“Tenacious” full-service player Arent Fox boasts over 100 dedicated IP attorneys who “understand business and all the costs involved, and possess profound knowledge of IP protection”. “World-leading corporations know what they are doing when they seek out the firm to protect their rights and there is a reason why they continually choose it to represent them.” The “courteous, professional and well-organised” trademark squad is a dominating force across multiple industries, including food and fashion. Mars is just one of the food titans that it regularly assists – a brief shared by Cristina Carvalho
and Ricardo Fischer
. Managing partner Carvalho is admitted to practise in both the United States and Brazil, which came in handy when she advised Mars on the Latin American trademark implications of its recent acquisition of the Iams and Eukanuba pet food brands. The “highly admired” and multilingual Fischer has likewise honed his expertise of branding issues that cross over into Latin America and the Caribbean. Fluent in Italian and Spanish, Michael Grow
is a dexterous litigator and a close partner to Warner Bros; he has protected its rights associated with Harry Potter, the Tasmanian Devil and The Wizard of Oz, among many iconic characters and franchises. “One of the best IP attorneys in the country”, Anthony Lupo
is another key contact for entertainment and media giants. “He is pragmatic, efficient, accurate and an invaluable resource for his experience in the fashion industry, too.” “His legal judgement is outstanding and clients love him.” “An up-and-coming superstar with a significant following of major brand owners”, Christopher Norton
manages many large-scale global portfolios with a deft hand. Completing the set is James Davis
, the person to call for any and all internet and counterfeiting quandaries.
Barnes & Thornburg LLP
The IP division is the largest practice group of Barnes & Thornburg, underlining the firm’s commitment and depth in the field. Comprehensive expertise in trademarks, patents and copyright gives its practitioners a holistic view of overarching IP and business concerns, while a healthy geographic dispersion speeds up its reaction times to local market changes. Spearheaded by consummate professionals Joseph Lewis
and Jordan Weinstein
, the DC unit can ably assist across the trademark lifecycle. All-rounder Lewis is “one of the best trademark attorneys out there. Fully reliable, prudent in his advice and a fair negotiator, he is a dream come true for brand owners”. Weinstein’s practice also runs the gamut, with refined proficiency in online and high-tech issues. His fortes range from jewellery to satellite systems and practically everything in between.
Buchanan Ingersoll & Rooney PC
High-quality output delivered in a timely fashion is the calling card of the trademark team at Buchanan Ingersoll & Rooney. Clients always come first and it strives to keep them out of unnecessary battles, resolving the vast majority of disputes outside the courtroom. When matters get heated, though, its lawyers always keep their cool. It recently acted for Nationstar Mortgage in the first fraud claim to be sustained by the Trademark Trial and Appeal Board (TTAB) since a precedential decision in 2009. Bassam Ibrahim
masterminded the case. All facets of trademark, unfair competition and false advertising law fall under his purview; he is also well versed in contentious issues involving domain names, trade dress, product configurations and counterfeit goods.
Covington & Burling LLP
Sophisticated trademark matters with an international flavour are meat and drink to Covington & Burling’s forward-thinking branding team. Having fostered a truly collegial culture, the group can capitalise on practitioners’ strengths to secure optimal outcomes every time. The “knowledgeable and professional” Marie Lavalleye
is a reliable first port of call for players in the pharmaceuticals and sports sectors, and a key contributor to the firm’s prominent food and drug practice. “She eschews legalese and has a good sense of when to be aggressive or not. What’s more, she is a tough negotiator who is creative in her approach to complex trademark transactions.” She and Kathleen Gallagher-Duff
recently facilitated a multi-layered joint venture and licensing agreement between client National Geographic Society and 21st Century Fox, which was ultimately valued at $725 million. Gallagher-Duff additionally keeps a hawkish eye on National Geographic’s worldwide portfolio, as well as those of many other household names.
DLA Piper LLP
International leviathan DLA Piper has boots on the ground in critical jurisdictions all over the globe, ensuring 24-7 coverage of branding issues. “It takes on board a huge amount of work, especially with respect to global portfolios, but its imposing network of practitioners can deal with it all.” “Exceptional” trademark team head Ann Ford
is “a thorough and appropriately aggressive advocate for clients”. “She fully understands trademark law and is responsive with her innovative recommendations. More importantly, she produces winning results.” The retail, fashion and food and beverage domains are strong suits; she adroitly handles all domestic IP matters for The Dannon Company. Ford is assisted in this endeavour by right-hand man Thomas Zutic
. Efficiency is the key to his well-rounded practice and his strategic nous allows him to nip problems in the bud before they can escalate.
Drinker Biddle & Reath LLP
The branding team at Drinker Biddle & Reath provides all-encompassing support across the trademark lifecycle. Reinforced by the outfit’s bustling general practice, the group takes an integrated approach to broader marketing problems; its close working relationship with the advertising and promotions contingent, for example, is very beneficial to clients. Leading the pack is Jennifer Dean
, a whizz at establishing and developing new brands in the United States and abroad. She takes a highly proactive approach to protecting portfolios and overcoming the obstacles that inhibit the growth of a mark.
Dykema Gossett PLLC
Quick at spotting trouble and able to devise creative solutions, the tight-knit branding squad at Dykema Gossett knows what it takes to keep clients happy. Its unique government policy practice adds further value to its offering, as strong ties to policymakers enable patrons’ voices to be heard on key trademark topics. In 2015 the firm merged with Cox Smith Matthews and saw Jennifer Fraser
join its ranks, giving its IP capabilities a notable leg-up. A former examiner of the US Patent and Trademark Office (USPTO), Fraser brings a rare level of percipience to the non-contentious side of the practice. However, she is also a fierce enforcer; she recently chaired a case for SKF USA, a world leader in rolling bearings and related technologies, and settled it the night before trial. The DC office is also home to group leader Eric Fingerhut
, a pillar of support for those seeking high-level strategy and counselling. “He is exceptional in prosecution and has a lot of experience with domain names, too. Personable, knowledgeable and very client focused, he has a good head on his shoulders.” Although adept in disputes, Fingerhut is a deal maker, not a deal breaker; his shrewd judgement often leads both his client and the opposing side down the most painless route.
“Among the top of the food chain for trademark work” and “a strong national presence in the field”, Finnegan hosts “a deep bench of tremendously capable practitioners who offer a consistently excellent level of service”. “Its reputable branding practice always turns out high-quality work.” “Especially famed for their litigation capabilities”, the IP team’s “core senior members are all formidable lawyers”. They continue to diligently serve long-time patron Under Armour, for which they juggled a series of critical cases over the past year. “One of the best litigators in the country with an unbelievable success rate”, Douglas Rettew
took the lead on these. “Practical and responsive”, he is “a fantastic resource and ally for any company in a complicated dispute”. “He brings an amazing amount of enforcement experience to the table and is excellent at providing different legal and commercial viewpoints.” Under Armour also relies on “organised, analytical and strategic” Danny Awdeh
to enforce its rights. “He has a sturdy command of a variety of topics and interacts very well with foreign associates.” Fellow courtroom sharpshooter Mark Sommers
is “outstanding in all contentious matters”. “With his incredible experience, he understands the nuances of complex negotiations and thinks outside the box.” Christopher Foley
is the first point of contact for key client Caterpillar, whose CAT mark he recently defended before the TTAB. “He is easy to work with and takes a deep interest in his client’s business. His premium counsel is most valuable for difficult prosecution, complex projects and important TTAB proceedings.” “Top-notch” Brett Heavner
’s practice focuses on trademark, counterfeiting and advertising litigation. His encyclopaedic legal know-how is coupled with a “very pleasant demeanour”. In a similar vein, “highly accomplished” Julia Anne Matheson
is “a forthcoming practitioner who is enjoyable to work with”. “She is a phenomenal counsellor who handles all clearance and prosecution work with finesse, in addition to being a great writer and thorough thinker.” “Her grasp of case law, melded with her common-sense approach, results in crystal-clear advice every time. She goes the extra step of studying clients’ business to provide commercially savvy commentary.”
Hogan Lovells US LLP
With an extensive international network, Hogan Lovells is an undisputed global IP powerhouse. Despite the vast physical distances between its practitioners worldwide, the streamlined communication and collegiality between them translate into an integrated platform where individual strengths are fully exploited. With countless years of trial experience, Raymond Kurz
dispenses “precise and practical” trademark wisdom from the Washington DC bureau. He has helped to protect and develop many marquee brands and demonstrates real flair for non-traditional marks. Timothy Lyden
co-leads the US trademark prosecution practice. He astutely advises brand owners seeking to monetise and safeguard their intangible assets, and also shepherds numerous lucrative transactions to close, especially when it comes to brand mergers and acquisitions.
Holland & Knight LLP
Such is the exemplary quality of the comprehensive trademark services on offer at Holland & Knight that even the US government regularly calls on it for assistance. It wins special praise for its overseas expertise and considerable influence in policymaking; both of these can partially be credited to “simply fantastic all-round lawyer” Paul Kilmer
, whose practice has a strong international flavour. He spearheaded the creation and development of the Trademark Working Group, which represents brand owners before the Office of the US Trade Representative and other government agencies in charge of regulating IP matters. Consequently, Kilmer has had a profound impact on trademark protection regimes all around the globe. “His tireless efforts have produced great results and have helped to shape an important part of the IP world.”
Seamless cooperation between Jones Day’s many offices gives its trademark attorneys instant access to a deep pool of specialist legal wisdom. The DC garrison is a particular hub of contentious excellence. Cutting-edge cases are a forte of “go-to litigator” John Froemming
, whose recent successful defence of the distinctive trade dress of the EOS sphere-shaped lip balm keeps his undefeated courtroom record intact. “His instincts, work ethic, courtroom demeanour, insight, intellect and knowledge of the law are second to none.” He is a prime pick for brand owners in dire straits; Reynolds Consumer Products is just one company which called up Froemming at the last minute – he secured a permanent injunction against its competitor after coming in only two months before the jury trial. One commentator enthuses: “He is not just a trademark litigator who I would recommend, but the only one who I would recommend.” Susan Kayser
also has ample experience in the courtroom. She represented Richemont in a claim brought on behalf of numerous plaintiffs that a large business-to-business website was facilitating the counterfeiting of luxury goods via its distributor and manufacturer members. She brought the case to a successful close in 2015, securing permanent injunctive relief and a final judgment of $10 million in damages. Kayser is also a rainmaker on the prosecution front.
Katten Muchin Rosenman LLP
“The DC office of Katten Muchin Rosenman is a go-to for any branding matter. Though not the cheapest around, it is worth every penny; the trademark team is absolutely committed, professional and easy to work with.” Roger Furey
manages the esteemed team and is one of the firm’s chief litigators. The “innovative and first-rate” attorney deploys creative strategies that frequently lead to the prompt resolution of disputes; his timely, candid advice further enhances the cost efficiency of his work.
Making waves since its debut on the trademark scene just a few years ago, compact boutique Kelly IP has rapidly ascended both the local and national tables. “A clear gold-tier firm locally” and “a very strong name nationally”, it receives ringing endorsements for the calibre of its practitioners: “Every single one of its lawyers is really incredible.” “What makes its group of all-stars super-competitive is that you receive a world-class service at a significantly reduced rate – you get so much for your money.” Serving a roster of the world’s most prestigious brands – such as Twentieth Century Fox, BBC, Aston Martin, Yahoo! and Disney – it saw several other household names flock to its doors of late, including The Hershey Company and BMW. “One of the finest trademark lawyers in the world”, David Kelly
leads a “superb team that has excellent knowledge of substantive and procedural law, with a stunning track record in delivering great results”. “Kelly is terrific in TTAB disputes and a tough litigator. Strategic and effective, he has a solid grasp of all the issues.” His “succinct advice, robust advocacy and negotiation skills are all invaluable”. A former TTAB judge, the “confident, courteous and reasonable” Linda McLeod
is “stellar at handling oppositions and cancellations”, as well as appeals before the Federal Circuit. “She has reviewed hundreds, if not thousands, of trademark office cases and possesses a very sharp legal mind – if you need a heavy hitter, she’s the person to call.” The “wonderful attorney” is “deeply familiar with all aspects of trademark law” and “always achieves the optimal outcome in any situation”. She continues to support Travelers in the protection of its famous red umbrella logo; as do Robert Litowitz
and Lynn Jordan
. Litowitz is “a fearless and tireless advocate” and “an undeniably brilliant legal writer”. “He commands respect and with his pragmatism he can get businesses to back away from the ledge in heated situations.” “An extremely reliable and responsive attorney”, Jordan is “incredibly experienced, helpful, friendly and cost effective”. The final member of its partnership is Stephanie Bald
, “a jack of all trades who does a fabulous job in everything. She possesses a business-minded outlook, her fundamental understanding of the law is top-notch and, importantly, she is a real joy to work with.”
Kilpatrick Townsend & Stockton LLP
Home to an “exceptionally fine group of attorneys and support staff”, IP leviathan Kilpatrick Townsend & Stockton delivers a prodigious offering across the country. Its sizeable network is highly advantageous for the DC litigation team, led by enforcement doyen David Mayberry
. He wins widespread acclaim for his diligence and meticulous trial preparation, as well as his gentlemanly affability. With a keen ability to anticipate issues far down the runway, he also devises creative settlements and is a dab hand at arbitration.
“The trademark lawyers at Mayer Brown are incredibly responsive and their attention to detail is unparalleled. They have an unmatched level of customer service, but importantly they are also solid in substance.” The DC office wins accolades for its “sound advice when navigating the difficult world of the Internet Corporation for Assigned Names and Numbers (ICANN), where many issues are of first impression”. This is Brian Winterfeldt
’s forte, since the “charming and charismatic” lawyer “knows everything related to the Internet”. “He is extremely smart and hardworking, and willing to do anything for his clients.” “As long as you have his ongoing guidance, you can rest assured.”
McDermott Will & Emery LLP
The Washington bureau of full-service juggernaut McDermott Will & Emery is home to a respected troupe of trademark practitioners, who provide “exceptional legal advice, have a great deal of IP knowledge and are very responsive”. Its dynamic branding group works in sync with its esteemed alcohol and beverages regulatory practice to cover all bases at the crossroads between the two. It handles a plethora of branding issues for The Absolut Company; Richard Kim
and Robert Zelnick
have led on this instruction for years. A former USPTO examiner, Kim is “business focused and always looking for creative solutions”. His “incredible efficiency and knowledge” in the prosecution sphere ensure “concise and timely advice”. Zelnick’s soup-to-nuts practice has seen him defend The Absolut Company’s famous Kahlua brand from numerous infringers. One peer states: “He is fantastic and the reason for that is simple – he wins his cases. I’d much rather see him on my team than on the other side.” Another widely applauded litigator, John Dabney
is a “highly thorough and effective advocate, whose clients rely on him to remain competitive in their industries”. His persuasive argumentation recently convinced the court to award summary judgment in favour of new patron Tyson Foods in a hotly contested trademark infringement case. Last but certainly not least is Joanne Ludovici
, whose “particularly strong” and broad IP practice includes managing numerous worldwide portfolios. She is also the firm’s resident due diligence and licensing expert.
Morgan Lewis & Bockius LLP
Although now one of the largest law firms in the world after its merger with Bingham McCutchen, Morgan Lewis & Bockius has maintained the seamless collaboration between offices that it has long prided itself on – except now it boasts a greater depth of talent than ever before. Its “strong all-round trademark team” is “well organised and on top of its game”. The nation’s capital is the base of operations for many key practitioners, including team captain Karen Butcher
. “A leading branding lawyer, particularly in connection with corporate IP transactions”, she sagely guides multinationals through the structuring of their IP groups. “She is a pleasure to work with and makes you feel like you are the only client in the world.” Another transactional guru is founder of the international trademark practice Michael Clayton
. He has notched up countless trial victories over the years and sits on the International Trademark Association’s panel of mediators, demonstrating his flair for resolving disputes both in and out of the courtroom. Kevin Fee
has a laser focus on contentious matters; he recently defended Toys “R” Us against a trademark infringement claim and represented Citigroup in relation to infringement of its famous CITI marks. Although Anita Polott
deals with a steady stream of portfolio work, her contentious chops are also a claim to fame. Of late, she valiantly fought the corner of Kmart Corporation in International Trade Commission (ITC) proceedings. Peers aver: “She is fantastic in disputes and knows the law inside and out.”
Muncy, Geissler, Olds & Lowe, PC
Muncy, Geissler, Olds & Lowe brought on board a host of IP practitioners from Oblon in 2016. Home to a number of former USPTO examiners, it is especially astute on the prosecution front. Former TTAB judge Beth Chapman
can navigate its procedural complexities with her eyes closed; she knows what it takes to exploit marks to their fullest. TTAB matters are likewise effortlessly handled by the “wonderful and professional” Roberta Bren
, a prior examiner who is “very efficient and client centric”. Well-rounded Jay Hines
manages complex cross-border portfolios with aplomb and speaks extensively on the Madrid Protocol. Finally, Jeffrey Kaufman
frequently provides thoughtful responses to digital branding queries; but with over 30 years of trademark and copyright experience under his belt, he is also fully competent across the soft IP spectrum.
Nixon Peabody LLP
Nixon Peabody plays host to a heavy-hitting non-contentious practice – it actively manages over 20,000 marks – which works hand in hand with a formidable enforcement group that has evolved naturally from the myriad prosecution instructions it attracts. The result is “a premier IP practice which brings first-rate trademark knowledge to the table – and they do it without overcharging”. Those compliments also apply to David May
, who provides invaluable support from the selection and adoption of new marks all the way up to their worldwide enforcement. He is also well equipped to deal with unconventional trademark disputes over unfair competition, false advertising and trade dress issues.
A merger between Pirkey Barber and the nimble and cost-efficient Vold & Williamson in early 2016 saw the formation of an even more effective trademark operation working under the former’s name. “Engaged, sensitive to business concerns and a joy to work with”, Tara Vold is “a stellar trademark attorney”. Although she cut her teeth on litigation, her sweeping knowledge of trademark law makes her “a go-to resource in the rapidly evolving field of intellectual property”. “Her understanding of domain names issues and her strategic advice are top class.” Fellow partner Paul Williamson started out his distinguished career as a trademark attorney at the USPTO and has since become a dogged enforcer of clients’ brand assets. One commentator avers: “He is one of the finer trademark practitioners in the United States and I have nothing but the utmost respect for him.”
Squire Patton Boggs (US) LLP
In 2014 Patton Boggs and Squire Sanders merged, creating an operation with extensive international reach and strong enforcement capabilities. Deep non-contentious know-how is also on tap with the versatile Deborah Lodge
at hand. The technology and communications industries are familiar territories for her and she is also well attuned to matters arising on the digital landscape, especially in the domain name space. Lodge takes a level-headed, holistic approach to the protection of brand assets, assisting with prosecution, enforcement and marketing concerns.
Steptoe & Johnson LLP
General practice Steptoe & Johnson is “top-notch in the trademark sphere”. It houses a formidable contentious squad and meets and exceeds the needs of big names such as Burberry and Louis Vuitton. Luxury brand specialist Michael Allan
recently prevailed for the latter in a multi-layered trademark infringement, dilution, counterfeiting and unfair competition suit. His strategic counsel is also in high demand and he handles offensive and defensive brand protection for Burberry. He co-chairs the team with William Pecau
, another dexterous litigator. “Pecau’s enormous volume of experience gives him the ability to identify the most important issues and to forge convincing arguments in the courtroom.” He and Rachel Hofstatter
helped the Federation of the Swiss Watch Industry FH to resolve an opposition to the mark SWISS REIMAGINED, to ensure that designations of Swiss origin meet the federation’s certification standards. Also a go-to for prosecution, Hofstatter is “very pragmatic and always responds in a timely manner, and has substantial knowledge of US trademark law”.
Sterne, Kessler, Goldstein & Fox provides high-level strategy woven with a results-driven and multi-disciplinary approach to brand development that looks beyond the traditional scope of trademarks. Its combined advertising and anti-counterfeiting practice takes a big-picture view across the contentious/non-contentious divide to devise innovative solutions to branding woes; while the seamless cooperation of its trademark and IT practices came in handy for fashion designer Tory Burch in a high-profile ITC action brought by Converse over allegations of trade dress infringement. “First-class practitioner” Monica Riva Talley
secured a favourable settlement for her client in the case. She is a first port of call for myriad other household names – including Verizon, for which she cleared hundreds of new marks over the past year. A leading authority on design protection, Tracy-Gene Durkin
is “really active in this area of the law, having written and spoken extensively on the subject. She excels at the overlap between design patents and trademarks”.
Sughrue Mion PLLC
Boutique Sughrue Mion “does a fantastic job and is well versed in all phases of trademark law. It understands that work in this field is not done in a vacuum and as such it gets real-world results”. Its practitioners “know what they are talking about and have a good grasp of the complexities of US trademark law”. Its excellent relationships with foreign counsel also make international assignments a breeze. Head honcho Jody Haller Drake
is “an outstanding litigator who is thoughtful, creative and strategic”. “She is a good common-sense thinker and her A-to-Z practice covers branding work from all angles. Her opinions are always reliable because she knows the law backwards and forwards.” A former examining attorney, she also handles opposition and cancellation actions before the TTAB with consummate poise. “Practical and reasonable” Gary Krugman
is another TTAB virtuoso, having authored influential treatise Trademark Trial and Appeal Board Practice and Procedure
. “His experience as a former TTAB judge has solidified his skills in inter partes
proceedings” and he has “a broad and comprehensive knowledge of trademark law”. Rounding off the group is Stephanie Wade
, a shrewd manager of global brands with over three decades of dedicated experience in the field.
Commercial player Venable is home to a robust and multi-talented trademark group. “Its extremely strong team is responsive, efficient and gets the job done.” Its trademark counsel model translates into a high-quality, cost-effective service with the clever use of non-partner experts. Meanwhile, vital tasks are supervised by discerning partners, including trademark chair Mark Harrison
. “One of the true trademark minds in the country”, he is “the one you go to for answers because of his wealth of experience”. The “stellar lawyer” serves many high-profile clients, such as Yale University. Rebecca Liebowitz
also assists the leading educational institution. She and Harrison are “timely and courteous, and never drop the ball when it comes to the protection of brand rights”. “Superstar” Liebowitz is “especially well versed in cross-border mandates. She shines in foreign prosecution and knows all the rules and procedures of numerous countries”. “Superb strategist” Andrew Price
“can quickly identify key issues and look for risks, options and solutions with remarkable skill”. He recently concluded a landmark settlement for the American Bar Association (ABA) in relation to its core brand indicia. Completing the esteemed group is Justin Pierce
, who previously served as in-house counsel at a leading multinational. His wide-ranging experience – from anti-counterfeiting and domain name disputes to IP-related governmental affairs work – grants him “a mile-high view on branding matters”.