Andrews Kurth Kenyon LLP
Andrews Kurth Kenyon has hit the ground running in the trademark world after absorbing the entire line-up of IP specialist firm Kenyon & Kenyon. The former boutique’s lawyers have settled in nicely and now enjoy a significantly enhanced platform from which to do business. A leading light on the trademark front, James Rosini
has certainly made the most of this transition and over the last year has added dozens of names to his already star-studded client list. Of late, he has been lending his talents to the likes of the Cousteau Society and Walmart, as well as Goldman Sachs, which he has been helping in the branding and defence of its first consumer-facing product. “A superb counsellor, Rosini offers excellent, business-oriented advice and is mindful of your specific interests. Both for prosecution and contentious mandates, he thinks strategically and can anticipate upcoming issues.” Alongside him in the New York office is Howard Shire
, “a wonderful lawyer and person” who has handled numerous high-stakes branding disputes; his deep courtroom experience also bolsters his negotiation and mediation skills. Jonathan Reichman
is similarly “a delight to work with” and “a safe pair of hands for trademark matters”. Especially well versed in the entertainment sector, he has a gift for protecting rights associated with fictional characters.
Arnold & Porter Kaye Scholer LLP
Arnold & Porter merged with Kaye Scholer at the start of 2017, with the synergy between the two firms resulting in an IP team with an exceptional range of soft skills. As a prime example, the latter firm’s focus on the crossover between intellectual property and pharmaceuticals has been enriched by the regulatory expertise of the Arnold & Porter crew. Paul Llewellyn
and Louis Ederer
’s shared knowledge of the fashion and spirits industries is another overlapping sweet spot. Llewellyn is “a fantastic litigator and counsellor who is incredibly astute”. “He has a complete understanding of his patrons’ businesses and objectives, and excels at achieving positive results in an expeditious manner.” He has lately been busy serving a slew of blockbuster clients, such as the Hershey Company, GlaxoSmithKline and Pfizer. Ederer is likewise a courtroom virtuoso. Although adept across a wide array of industries, his forte lies in the apparel and luxury goods space. His right hand in key disputes is Matthew Salzmann
, who makes his debut in the WTR 1000
this year: “Both of them are highly conversant in IP law and do a first-rate job.”
Baker & Hostetler LLP
“A prominent name in the United States for trademark matters”, Baker & Hostetler plays host to a full-bodied branding ensemble that can untangle even the most perplexing snags. The New York contingent in particular is “extremely well known for its anti-counterfeiting prowess”. This reputation emanates chiefly from Heather McDonald
, the chair of the International Trademark Association’s Anti-counterfeiting Committee for the 2016-2017 term. “Very smart and capable”, “she has an outstanding reputation and brand owners always speak highly of her. McDonald has such a palpable passion for her work and is simply terrific.” Working alongside her is Robert Horowitz
, another highly esteemed IP maven. “As clever as he is friendly”, he has “a firm command over trademark law and provides practical advice”, testament to his abilities and experience, Horowitz has aided Sony in sophisticated clearance, prosecution, enforcement and transactional instructions since 1982.
Baker Botts LLP
Baker Botts’ “impressive responsiveness, expertise and experience” are just a few of the many reasons rights holders flock to it in droves. Trademark matters are bread and butter for its well-rounded IP group, but it always adopts a panoramic branding outlook to ensure no stone is left unturned. The “hardworking and intelligent” Suzanne Hengl
takes this approach to heart: her varied practice straddles the contentious/non-contentious divide and she resolves branding issues with trademark, copyright, design and advertising law all in mind. She anchors the New York station and “has done a superb job of keeping clients happy here”. “Knowledgeable, timely, efficient and pleasant to work with”, Hengl is “an excellent person to bounce ideas off – she sees the bigger picture and gets how all the pieces of a problem fit together”.
Cowan Liebowitz & Latman PC
“One of the best trademark outfits in the United States”, Cowan Liebowitz & Latman is “an exceptional IP boutique that serves many leading brands”. “It is a huge player on the prosecution side, as it houses a raft of skilled professionals, which grants it a reservoir of expertise that few can match.” The group also boasts an enviable record in litigation and has been central in a myriad of important cases. “The consistency of its lawyers and its longevity speak volumes to its quality.” The firm rises to the exclusive gold tier in New York this year; meanwhile, several of its practitioners enter the WTR 1000
listings for the first time, including Mary Donovan
who re-joined the firm in 2017. “Highly regarded throughout the IP community and well connected with local counsel worldwide, she is cost-conscious, responsive and resourceful. Moreover, she is extremely hands-on and possesses excellent judgement.” Similarly, her colleague Jeffrey Epstein
“stays very informed and goes above and beyond with his timely service. He pays scrupulous attention to detail and is especially knowledgeable about the fashion and retail sectors.” Fellow prosecution and counselling specialist Joel Karni Schmidt
is one of the brightest and most experienced trademark attorneys around and is known for his pragmatic advice, robust negotiation skills and commercial acumen. One peer reports, “He is a really thoughtful professional and has a knack for choosing battles wisely and steering clients away from unnecessary confrontations.” On the other side of the equation is Christopher Jensen
, who “has a tremendous background in IP litigation – he is brilliant when it comes to resolving disputes”. Richard Mandel
is another contentious maven: “He is highly effective and always civil – a rare combination of qualities.” “A consummate professional, he is exceedingly sharp and able to devise innovative arguments.” Mandel and Jonathan King
have been pulling out all the stops for the National Tobacco Company in a series of oppositions and cancellations spanning over 13 years. When teaming up they “are the best of the best and achieve exceptional results, time and time again.” King has also been busy over the last year coordinating surveys on behalf of multiple defendants in the much-talked about International Trade Commission (ITC) suit filed by Converse. For the same case, Kieran Doyle
took charge of investigating a century’s worth of third-party use evidence. Doyle is known to be “knowledgeable and easy to deal with, he adopts a pensive and nuanced approach”. Eric Shimanoff
recently enjoyed a significant victory for the Empire State Building after successfully proving that its image is a famous mark that would be diluted by another brand’s proposed logo. William Borchard
aided him in this endeavour. “Shimanoff and Borchard are creative, responsive, diplomatic, methodical and effective – they meet and exceed the highest standards.” Refined strategist Mary Kevlin
provided support on the Empire State Building brief too. She has been a main point of contact for Major League Baseball, along with Lawrence Greene
. The two form a dynamic duo and are “incredibly dedicated, dogged in the pursuit of client objectives, great at managing their staff and all-around beacons of excellence”. Maryann Licciardi
and Kevlin recently convinced the Trademark Trial and Appeal Board (TTAB) that the WORLD SERIES marks – owned by the Office of the Commissioner of Baseball – had attained a ‘very high level of fame’. Licciardi is applauded for “her proficiency in dispute resolution. She vigorously defends her clients’ interests and is able to push for sophisticated terms of co-existence”. She rolls up her sleeves in both contentious and non-contentious matters, as do Deborah Squiers
and Meichelle MacGregor
. “Thorough, inventive and reliable, Squiers always goes out of her way to provide top-notch service, with a sense of humour and an appreciation for business needs.” “She has an up-to-the-minute understanding of all issues in this area of the law and gives actionable and reasoned advice.” MacGregor is likewise “aware and appreciative of corporate goals”. She is “to-the-point and incredibly strategic. She excels at breaking down complex problems and understands how to take a practical stance to get a situation moving. In addition, her communication skills are superb”.
Curtis, Mallet-Prevost, Colt & Mosle LLP
International outfit Curtis runs its IP practice – which has been diversifying and gaining ground rapidly in other jurisdictions – out of the Big Apple. Brand owners come for its worldwide reach and ability to get winning results, but they stay for its client-centric outlook and attentive care. Michael Graif
heads the IP practice: “For all phases of trademark prosecution, enforcement and counselling, he provides excellent advice in a professional and timely manner.” “Well versed in this field, he is especially good at highlighting all the potential outcomes of any action.” One previous opponent states: “Despite being on the other side to Graif, he is always courteous and professional – his amicable demeanour enables you to reach mutually beneficial resolutions”. Transactions whizz Eric Stenshoel
is another recipient of much applause. “First and foremost a great person, he has an in-depth understanding of IP law. He can easily manage multi-jurisdictional prosecution and litigation, and is able to take advantage of decisions or arguments used in other countries.” “He is business-minded and thorough, but simultaneously knows how to cut to the point to find a solution.” The detail-oriented and practical Stenshoel “replies promptly and is easy to work with; he makes complicated issues easy to understand”.
Davis Wright Tremaine LLP
What separates Davis Wright Tremaine from the rest of the pack is its sprawling, nationwide footprint and incredible depth of expertise across an extensive range of industries, including, but not limited to, the media, entertainment, technology, fashion and food and beverage sectors. Its trajectory remains resolutely on the ascendant, as reflected by its rise in the WTR 1000
US national rankings. The “fabulous firm” is acclaimed for its “excellent trademark expertise – especially in its New York office”, the team here “instils a very high level of confidence thanks to its timeliness and sound, commercially pragmatic advice”. Alexandra Nicholson
and Roxanne Elings
are the leading lights of the outfit: “They are extremely efficient, strategic and responsive”, and are “absolute pleasures to deal with”. A go-to for media clients and equipped with wide-ranging knowledge of the digital technology field, Nicholson is “one of the world’s most well-known and esteemed IP practitioners”. “She possesses excellent people skills” and “her five-star bedside manner makes clients loyal to her and opposing counsel respect her – it also makes her persuasive in litigation, meaning that disputes are resolved swiftly”. Nicholson keeps on top of emerging issues and “her comprehensive global awareness and complete grasp of trademark prosecution rules in many different countries means she can suggest creative approaches to your registration and protection goals”. Elings is also widely venerated: “There are very few practitioners out there with as deep an understanding of complex multi-jurisdictional trademark matters as her. She is able to draw upon her immense experience to shape cross-border strategies in relation to prosecution, enforcement, licensing and commercialisation.” One peer raves: “She is really fantastic and among my favourite lawyers. A highly capable litigator with a substantial deal of legal knowledge, she has a way of getting to the heart of any problem, and is additionally at the very top of the market for anti-counterfeiting matters.” Marcia Paul
supplements the firm’s contentious efforts with her distinguished courtroom acumen. “She is amazingly astute in issues concerning the media sector. She understands how clients in that area operate and the wider business implications involved, so can offer real-world advice.”
Debevoise & Plimpton LLP
Debevoise & Plimpton operates at the apex of the branding market. It provides “the absolute best in trademark advice and counselling”, but is most known for its stellar contentious practice, which is full of “talented individuals who possess years of experience and completely comprehend the issues at hand”. It has been a banner year for the firm: in addition to the plethora of high-profile, ground-breaking cases it has been juggling, it has enjoyed a number of lateral hires and internal promotions. Sophisticated, pioneering branding disputes are the forte of the “amazingly smart” David Bernstein
, who is “a leader of the trademark world – he is the one you turn to when you have a fight you cannot lose”. “Unfailingly alert, responsive, creative, solution-driven and highly articulate”, “he is probably on everybody’s shortlist for bet-the-company litigation”. Bernstein is “undoubtedly one of if not the best trademark lawyer in the country; he has such endless energy and talent”. The praise he receives from his peers is equally emphatic: “Going up against him is quite an eye-opening experience. He exudes authority and really does live up to his reputation as an all-star litigator.” Another states, “I cannot say enough good things about him – in addition to his skills, he is honest, friendly and plays by the book”. Fellow contentious expert Jeremy Feigelson
often works alongside Bernstein in critical battles. As the firm’s cybersecurity and data privacy practice chief, he is a master of IP matters that are closely tied to the Internet and new technologies.
Dorsey & Whitney LLP
“Dorsey & Whitney is a first-rate firm, full of awfully smart and really nice professionals who have a keen business sense.” Its New York wing is one of the side’s main attractions: “Its lawyers understand that it’s not about playing blame games, but rather about solving matters expeditiously and cost effectively. Their approach is refreshing as they get the key issues at hand and, if you go up against them, it will be a fair fight.” On the back of effusive praise from peers and clients, the firm climbs into the silver tier nationally, while top counsellor Sandra Edelman
joins the gold tier for New York. “A real leader of the New York trademark bar”, she is “incredibly smart and committed. With a deep understanding of trademark law, she gives pragmatic and all-inclusive guidance.” “Edelman can dig into issues on an academic level and is a terrific resource – she has helped to advance the trademark practice as a whole.” Acting at the behest of household names such as The Lego Group and MasterCard, Robert Wasnofski
is another heavy hitter in the branding unit: “skilled at litigation and counselling, he is well versed in the practicalities of the law and outstanding at relationship building.” “Conscientious, committed and hardworking, he pays a ton of attention to his clients. He excels at seeking out business resolutions expeditiously, as opposed to fighting legal battles.” However, when the situation calls for it, Wasnofski can litigate with the best of them. The same can be said of Bruce Ewing
. He supervises the New York office’s trial department and cuts a dash in all forms of commercial disputes that clash with intellectual property. “Responsive, knowledgeable and thorough”, Sarah Robertson
offers the full gamut of trademark services. “She is a trusted adviser whose counsel is both practical and thoughtful.” Susan Progoff
rounds off the ensemble. Hailed for her “excellent substantive know-how and fast response times”, she is “a longstanding and well-respected member of the profession who is attentive, efficient and business savvy”.
Fitzpatrick, Cella, Harper & Scinto provides assured guidance to trademark owners, especially in multifaceted disputes. It is “an excellent litigation shop” that can deflect incoming infringements and vigorously shield its clients’ long-term interests. Pasquale Razzano
is the pillar of the practice and is “held in very high regard for his contentious abilities”. He exploits over 40 years’ worth of trial and IP experience to ensure that rights holders are covered from all angles.
Foley & Lardner LLP
“The calibre of Foley & Lardner’s lawyers is consistently high; they are all very intelligent and do a top-notch job for many leading rights holders.” “A superb attorney”, Jonathan Moskin
exemplifies this high standard. He has fostered deep relationships with his clients, who seek him out for his extensive litigation experience. In 2016 he secured a favourable and sizeable verdict for Herman Miller in a trademark and trade dress infringement case concerning its famous EAMES and AERON chair designs. The well-known furniture manufacturer was awarded $8.4 million in damages, making it one of the largest trademark trial verdicts in recent years and among the biggest damages awards ever for trade dress infringement.
Fross Zelnick is a formidable force on the US and global trademark landscape: “It has one of the best, most comprehensive trademark practices in the world.” The sterling law firm has “the deepest bench of trademark attorneys around and unparalleled talent”; all of its “very cerebral and academic” lawyers “operate at the pinnacle of trademark work, both for prosecution and litigation”. Lydia Gobena ''understands her clients’ businesses and works diligently to protect their interests”; “she is a wonderful attorney with an extensive knowledge of trademark law”. Gobena renders “the highest level of cross-border advice”. Carlos Cucurella is “incredibly sharp and a marvellous attorney. It’s almost as if he has downloaded the trademark statutes from multiple jurisdictions around the world into his brain.” Peter Silverman excels at crafting worldwide enforcement strategies. Similarly, Richard Lehv is a dab hand in contentious engagements; he can take even the most egregious infringers to task before the courts. Fuelled by a steady stream of sophisticated cases, the firm’s litigation group has been firing on all cylinders. This is in large part thanks to James Weinberger, John Margiotta and firm president Craig Mende: “They are fantastic attorneys with a huge breadth of coverage between them.” Weinberger is “a discerning practitioner with a sizeable TTAB practice”; he is “extremely bright and has a good handle on domain name disputes”. Earning extensive admiration from his peers, Margiotta is “brilliant at focusing on the most important issues and strong in the luxury goods arena”. “He is very clever and has a promising future ahead of him.” The resourceful and creative Mende is “an extremely talented trademark and copyright litigator”. One patron comments: “Since working with him, our expenses have been reduced exponentially. Our IP assets have been protected and risk – across marketing, social media and advertising – has been proactively managed.” David Donahue puts in winning performances for the group too; the standout trial attorney is exceptionally knowledgeable and experienced. Like Mende, former firm president Roger Zissu is better known for his first-rate copyright practice; however, his many years operating at the vanguard of IP law have seen him accumulate a wealth of trademark know-how as well. A deft portfolio caretaker, Cara Boyle can juggle thousands of marks with ease. Allison Strickland Ricketts handles equally copious workloads. “She digs deep into US Patent and Trademark Office (USPTO) procedures and keeps abreast of the latest developments and policies” – “she knows the mechanics of the USPTO back to front”. The “noteworthy and highly engaged” professional is also au courant with international dealings, especially with regard to the Madrid Protocol. Likewise, Nadine Jacobson has a flair for issues that stretch beyond US borders. She is “super smart, meticulous, energetic, innovative, business-focused and always on top of the latest legal developments. She picks up on the small details but never loses sight of the big picture”. Janet Hoffman is similarly “a superb international lawyer”; meanwhile, David Ehrlich specialises in domestic instructions – “he has a really sound understanding of US prosecution”. By the same token, Susan Upton Douglass is “a master of trademark prosecution”. However, she also impresses in heated disputes: “She knows how to get IP assets protected and her arguments will always be well articulated and have substance.” Admitted to practise in New York and Illinois, Lawrence Apolzon is hailed for his complete client service; his sage counsel is applied throughout the trademark lifecycle. “Smart, tough and fair” Barbara Solomon is “an amazing litigator who keeps opponents on their toes.” “A phenomenal resource” and “simply awesome”, she is “readily approachable, insightful and keenly aware from both legal and business perspectives”.
Goodwin Procter LLP
Goodwin Procter strikes the right balance between raw litigation talent and strategic business nous. Although it confidently assists brand owners in reaching their goals both in and out of the courtroom, it is most celebrated for its appellate practice and its ability to tackle the most advanced subjects before the Supreme Court. Ira Levy
can often be found at the forefront of these highly sophisticated suits. “His reasonableness and pragmatism allow you to work together to reach a good resolution, but he is also an excellent, aggressive litigator when he needs to be. With his reputation, others know that he can turn up the heat, giving him leverage in negotiations.” “He understands what it is his clients are trying to achieve and is successful at pressing their goals in a cost-effective manner.” Flanking him is Jessica Rothstein
, “an invaluable, proactive partner whose legal guidance invariably arrives at a moment’s notice. You can comfortably rely on her experience and instincts, which allow her to provide pinpoint advice in situations that are far from clear cut”.
Greenberg Traurig LLP
“Tenacious and diligent, Greenberg Traurig’s lawyers always seek the best results for their clients.” Alive to business concerns and full of shrewd professionals, any IP quandary can be safely handled by this firm. The set prides itself on its holistic, nationwide approach, but the New York bureau is, in particular, a key branding hub. Proficient in prosecution, enforcement and transactions, Alan Sutin
and Daniel Schloss
provide tailored care for many leading brands; for example, they handle clearance, prosecution and strategy for the likes of Ralph Lauren, Godiva Chocolatier and Jennifer Lopez. “Sutin and Schloss have unerring judgement, tremendous legal acumen, vast experience and immense capabilities. They are excellent attorneys of impeccable character and integrity.” A lure for Japanese IP rights holders, Masahiro Noda
is also a target for praise: “He is always a first port of call, as he appreciates business objectives. He gets to know his clients’ pain points so that he can make his legally accurate advice tailored to specific customers.” Skilled across the trademark spectrum, Noda principally focuses on enforcement, but also has a flourishing anti-counterfeiting practice.
Kilpatrick Townsend & Stockton LLP
“A powerhouse in the trademark space”, Kilpatrick Townsend never fails to impress. Year-on-year gains – both in terms of staff numbers and workload – have only reinforced the notion that the firm is a superlative choice for world-leading rights holders. Asia practice co-leader Christopher Woods
is a founding partner based in New York. “A really nice and knowledgeable person, his specialty is cross-border trademark work, especially in China. He is skilled at resolving disputes, including in arbitrations, which his clients appreciate.” Likewise, Lisa Pearson
“has worked on many litigation issues, and her work product is highly praised by in-house counsel”. “A really creative and thoughtful attorney, she has handled – and won – some amazing cases.” Their colleague Marc Lieberstein
is “a superb trademark litigator”; despite a reputation as a “practical and solid lawyer” he is absolutely in his element when it comes to sophisticated transactions and licensing arrangements. “He has a fantastic reputation across the United States and boasts a stellar list of clients.” Primarily focused on prosecution and portfolio management, Jason Vogel
“has a masterful grasp over international trademark issues. He works really hard, knows his way around this field and gets great results.” Having accumulated experience on the counselling and litigation fronts, Georges Nahitchevansky
has a wide-ranging repertoire of skills at his disposal. He is revered for his piercing insight into branding problems in cyberspace – “he is an authority on internet-related questions”. Stephen Feingold
is also intimately familiar with the digital realm, as well as with matters concerning trademark, copyright and advertising law. He splits his time between overseeing convoluted IP spats and dealing with transactions.
King & Spalding LLP
King & Spalding specialises in unwieldy trademark and copyright suits that are frequently publicised among the top IP decisions in the United States, both in terms of size and significance. It regularly finds itself acting on behalf of mega brand owners such as Google, the Coca-Cola Company and Rolex; all three multibillion-dollar companies have lately been represented by Bruce Baber
and Kathleen McCarthy
in a number of critical disputes. Baber helped to found the outfit’s respected IP group: “He has distinguished himself as a tremendous lawyer, both on the trademark and copyright sides, and repeatedly demonstrates his quality through the cases he handles.” “He is simply brilliant.” The “extremely bright” McCarthy is also widely lauded. “She is very well thought of in the community and clients love her personal touch, perpetual responsiveness and pragmatism.” One client notes: “She is one of the smartest problem solvers I have ever interacted with. She navigates trademark law across multiple industries and has the ability to deliver a critical perspective on how you might address a problem specific to your business.”
Kirkland & Ellis LLP
An icon on the soft IP landscape, the “fantastic” Kirkland & Ellis houses “a first-class trademark litigation team capable of handling incredibly high-profile matters”. “Its cohesive group is super thorough and you always have to be fully on your game when you face its lawyers”. One peer professes: “It is among the most well-known firms in this domain and I feel fortunate that I have never had to go up against it in a fight.” Widely described as “a genius in this field”, Dale Cendali
is the fulcrum around which the branding practice turns; she “has a premier reputation and is a recurring name in all the largest, most sophisticated disputes”. “Smart and eloquent”, she is “really something else when it comes to litigation” – “nobody will ever question why you hired her”. “What’s astounding about her is that she has argued numerous times before the Supreme Court and yet is unassuming and humble – she pairs her legal brilliance with a human touch.” Cendali has “built a fabulous team around her”, including the “very impressive” Claudia Ray
: “Together, they are essential partners whose quality of work is unparalleled. Their rock-solid analysis of legal issues comes with the ability to offer creative, practical and business-focused solutions.” “Ray is terrific and a delight to deal with, she is an awfully strong advocate on behalf of her clients but also reasonable”. In particular, “she has handled several very significant matters at the ITC”. “Although primarily a litigator, she also excels on transactional mandates. Ray understands the subject matter and brings a refreshing attitude that helps businesses reach mutually satisfactory middle grounds.”
Ladas & Parry LLP
Offering a holistic outlook on brand management and lean, cost-efficient staffing, Ladas & Parry is a compelling choice for small and large businesses alike. It has an impressive network of associates to tap into and “many close relationships with a number of firms in Central and South America in particular, which is one of its unique selling points”. Bharati Bakshani
’s practice has a similarly global flavour; she specialises in international trademark prosecution and enforcement, with a flair for issues arising out of India. Lanning Bryer
joins the WTR 1000
rankings this year; he is especially skilled at all things transactional. “He is excellent on due diligence and will often provide thorough pre-merger and post-merger guidance to ensure all the niceties have been taken care of.” Dennis Prahl
is praised for his assiduousness and eye for detail; he prosecutes applications with aplomb and is also a deft strategist. On the flip side of the coin is Ralph Cathcart
, whose métier lies in dispute resolution. He knows how to get infringers to back down but is also gifted at reaching out-of-court solutions.
Leason Ellis LLP
From its White Plains base, Leason Ellis offers “an in-depth service for a broad variety of IP-related issues” at rates far more competitive than most rival firms. Its lean size belies the immense talent housed here, with all its lawyers boasting stellar credentials. As a prime example, Martin Schwimmer
is “an expert in domain name disputes” who helped to create the final version of the Uniform Domain Name Dispute Resolution Policy. “One of the sharpest minds in trademark law in the United States, he has a particularly in-depth understanding of international law.” “His overall performance is top-notch thanks to his deep knowledge, savvy business instincts and ability to keep a level head when others are losing theirs.” Trademark and copyright group head Peter Sloane
is extolled for his comprehensive understanding of the law. “He is efficient, thorough and extremely practical in his guidance.” The main thrust of Sloane’s practice lies in high-level counselling and sophisticated litigation. For the toughest battles, he relies on the assistance of Yuval Marcus
, who chairs the litigation practice. A prolific speaker and author, Marcus has honed his contentious nous across the IP spectrum. Inspiring confidence when it comes to both prosecution and portfolio management, Karin Segall
rounds off the Leason Ellis set. “A reliable and invaluable partner, she is an expert of her field and her advice is informed by common-sense business considerations. She also does an excellent job of working within whatever constraints may be applicable, be they related to timing or budget.”
McCarter & English’s unstinting focus on intellectual property is apparent from its impressive growth: over the last decade, it has rapidly expanded its practice across the country and now boasts over 100 dedicated IP professionals. The firm continues to add big names to its roster, including Timothy J Kelly
, formerly of Fitzpatrick, who jumped on board at the end of 2016. He brings with him a diverse clientele and a vigorous prosecution and litigation practice. His breadth of knowledge and pragmatic mindset have made him a perfect fit with the rest of the team. James H Donoian
has equally broad talents; his percipient insight is exercised when helping brand owners to defend and exploit their intangible assets. He is at his best when formulating enforcement and litigation strategies and has managed numerous global anti-counterfeiting programmes. “A first-class lawyer and terrific mentor”, Harley I Lewin
has “a wealth of litigation know-how”, too. His dedication to his craft is evidenced by his 40-plus years of experience in an array of topics, including non-traditional marks and trade dress.
Orrick, Herrington & Sutcliffe LLP
Orrick benefits from a top-class branding squad that has a laser focus on business goals. Its lawyers are quick to reply and diligent, and can handle any matter thrown their way. The firm’s New York arm houses some of its key trademark players, including Peter Vogl
. “A worthy adversary who runs a strong case”, he recently secured a momentous victory for CoorsTek and C5 Medial Werks in a complex, high-stakes trade dress suit that concerned the protection of the colour pink. Lisa Simpson
is also a polished courtroom operator; her practice spans the range of soft IP topics and she engenders much confidence in the retail, technology, entertainment and pharmaceutical spaces.
Proskauer Rose LLP
A phalanx of seasoned attorneys reside at Proskauer, a firm that is widely acclaimed for its performances in mission-critical trials. A healthy mix of commercial and IP litigators provide cast-iron protection to international brand names. Joining the elite WTR 1000
national gold tier for litigation is the “alert, responsive and committed” Brendan O’Rourke
. He “strikes the perfect balance between trial and trademark experience” and is “wicked smart, incredibly practical and will push you to your limits in a fight”. “A truly amazing litigator, he has the ability to take control of the courtroom. He is passionate and strategic, building rapport with both judges and juries to take total command of a situation.” O’Rourke also “drives your business forward with his excellent understanding of where to draw the line for risk-taking, and whether you should proceed with a litigation or not.” Lawrence Weinstein
wins plaudits for his contentious abilities as well. He has “a vast knowledge of trademark and advertising law” and “can quickly convince even the most unreasonable opponents to change their stance”.
Pryor Cashman LLP
Pryor Cashman is renowned for its excellence in both IP and media work. Its branding practice manages nearly 15,000 marks and continues to flourish, having lately bolstered its client list with a number of hot additions. L’Oréal recently entrusted the set with its US-wide portfolio; the “extremely sharp and knowledgeable” Dyan Finguerra-DuCharme takes responsibility for this herculean task. She is an excellent choice given her extensive experience acting for high-powered brands, including Fortune 100s such as Honda and Richemont International. For these patrons and many others, she does it all – clearance, prosecution, TTAB proceedings and litigation before the courts – with consummate ease. The firm is also celebrated for its dynamic enforcement and licensing work on behalf of global celebrities. Brad Rose has carved out a distinguished niche for himself in this domain. “Responsive, tactical and efficient”, he leads the IP group with gusto. A former examining attorney of the USPTO, Teresa Lee has a keen eye for which registrations and strategies will succeed. “She handles all matters promptly and with the utmost professionalism. Potential issues are invariably dealt with proactively and with minimum drama and expense.”
Sheppard Mullin Richter & Hampton LLP
A fierce competitor on the national stage, Sheppard Mullin is gaining serious ground in the IP field, specifically in trademarks. Famed for its multi-disciplinary approach, it has “a solid core group of attorneys that really impress on difficult litigation suits”. Theodore Max
and Paul Garrity
can be credited with much of the firm’s contentious success: “Both have a strong reputation and are well known for their litigation prowess.” “Max does a superb job of representing major brands, and is especially proficient at fashion-related problems; he also excels on transactional matters. He is a truly first-rate attorney.” The “really smart and astute” Garrity is “an absolute professional who has a robust understanding of the law with regard to trademark, copyright and e-commerce”. “An outstanding litigator”, “he has a flair for simplifying complex situations”.
Skadden Arps Slate Meagher & Flom LLP
Commercial outfit Skadden is recognised for its stunning transactional and litigation groups, both of which impress in the IP realm. Bruce Goldner
heads the Skadden New York unit, in addition to co-leading the firm’s IP and technology department. “An excellent lawyer who deserves special mention”, he oversees all domestic and international clearance and prosecution tasks with alacrity. His colleague Anthony Dreyer
is the first port of call for multi-faceted disputes. “He is an extraordinary lawyer who is passionate and ethical” and is especially well versed in the sports and entertainment industries.
Weil, Gotshal & Manges LLP
Weil, Gotshal & Manges’ IP group is unflinching in the face of game-changing fights and high-stakes transactional briefs. Prominent brand owners frequently come knocking on its door for its sage advice, especially with regard to niche topics such as secondary liability – its thorough understanding of this area helped it to develop intimate relationships with rights holders such as Alibaba and eBay. Co-head of the IP and media practice, Bruce Rich
has lately assisted both online platform giants in key disputes – an articulate advocate, his trenchant arguments always resonate with judges. Alongside Rich, Randi Singer
has also been avidly working on the eBay instruction. She shines brightest in contentious engagements and her pragmatic, adaptable counsel is a boon for the illustrious clientsshe assists.
The commercially savvy attorneys of Winston & Strawn are equipped with a complete understanding of both prosecution and litigation, meaning that their nuanced strategising always takes account of all possible scenarios. Michael Elkin
manages the New York contingent, but also recently became the firm’s vice chair. Complex litigation is meat and drink to him, and he is on home turf when high-stakes trademark and copyright issues collide in the courtroom. Those in the entertainment and digital media domains can rest easy in his eminently capable hands.
“Baker McKenzie gives you access to a one-stop shop that you can trust to handle trademark issues anywhere in the world – you get an extensive and highly qualified network of professionals at your fingertips.” The firm’s New York branding unit is a major draw for household names, such as Moët-Hennessy, Unilever and French Connection. All of these clients – and countless others – are handled by Pamela Church
and Lisa Rosaya
, who are recipients of a torrent of praise: “They provide a first-class IP service in all respects. Extremely knowledgeable and diligent, they are lovely people to work with.” Church “cuts to the chase and thinks of solutions quickly – she can predict what the other side may attempt to do and stay two steps ahead.” “Her sound advice is reliable and easily comprehensible; she radiates on complicated, high-level IP transactions where she can fully demonstrate her thoughtful, creative and strategic mindset, she is an invaluable partner.” Clients likewise extol the virtues of Rosaya: “She consistently displays a level of commercial acumen that enables her to appreciate the practical needs of businesses and advise accordingly; she has also shown great flexibility when it comes to billing models.” “She is exceptionally responsive and organised, meaning that you never have to worry about matters falling to the wayside or missing deadlines and is always professional and effective.” One satisfied patron avers: “I have followed her recommendations with a 100% success rate.”
Global powerhouse Dentons has significantly expanded its international reach in the trademark realm over the last year making substantial inroads into Latin America, Central America and the Asia-Pacific region. In New York, the branding practice is anchored by standout attorney Monica Richman
, who manages the fashion, cosmetics and apparel department. “Well respected by in-house counsel, she takes a holistic perspective on problems and has a laser focus on providing value.” She is “incredibly diligent and handles matters with exceptional grace”. “Richman knows this field inside and out” and “instils confidence as a trusted partner. She is particularly well versed in the fashion and media spaces.” One customer enthuses: “I can say without qualification that she is the most effective trademark attorney I have had the privilege of working with. She is able to keep abreast of your specific business developments and wider industry trends while handling prodigious workloads.”
Fish & Richardson PC
Fish & Richardson’s trademark group has made a concerted effort to expand and consolidate its presence in the Empire State. Locally, new team members and patrons have come on board in the last year and the trademark squad continues to juggle an immense volume of searches and clearance work for big brands. It also remains incredibly active on the enforcement front before the TTAB. Kristen McCallion
is a popular port of call for rights holders: “She wields superb judgement and is extremely strategic. She takes the time to think carefully through all the steps, rather than going through the motions, and sees the bigger picture.” “She’s intelligent, formidable and a pleasure to deal with; there’s no time wasting with her, so you’re able to get to a resolution more quickly.” McCallion has recently been representing RTIC Coolers in a sophisticated case of trade dress infringement. Meanwhile, Catherine Stockell
has lately been devoting much of her time to the needs of Voya Financial. The deft counsellor wins plaudits for her organisational talents and forward-thinking, outward-looking mindset.
Frankfurt Kurnit Klein & Selz PC
“Although better known for its advertising work, Frankfurt Kurnit Klein & Selz also offers outstanding trademark advice that comes at more competitive rates than those of other New York firms.” The firm’s dynamic presence in the media and entertainment world pairs nicely with its trademark practice, meaning that rights holders receive the whole package when it comes to brand management. Patrons in the sports industry queue up for its incisive counsel too, and the firm has recently been assisting the National Hockey League (NHL) to protect its league and team brands on behalf of NHL Enterprises. This task falls under the responsibility of trademark group co-chair Catherine Farrelly
, who “really understands this area of the law and what she’s doing”. “Whether it concerns sensitive search and clearance matters or coordinating foreign counsel on multi-jurisdictional disputes, you can always rely on her pragmatic guidance.” The set was significantly bolstered in 2016 with the addition of Donna Tobin
; she leads the practice alongside Farrelly. Known for her nimble courtroom step, Tobin is a clear and concise orator whose cogent arguments frequently find favour with judges; she also doubles as a dexterous counsellor.
Katten Muchin Rosenman LLP
Katten Muchin Rosenman wields considerable clout on the national trademark scene and the New York team has been one of the principal drivers of its success. The apparel, sports and beauty industries are its key areas of focus, as are transactional mandates, all of which falls within the remit of Karen Artz Ash
– “a fantastic lawyer with an abundance of expertise in all facets of trademark law and licensing, especially in the fashion sector”. One patron avers: “She is certainly the best person to call for any complicated or sensitive situation. Her sharp and creative mind creates solutions that are consistent with your risk tolerance. It’s unbelievable how quickly she will grasp complex topics and then provide her recommendation without missing a beat.” “A real life saver”, Ash “has seen all the problems that have come up before and really gets what in-house lawyers are looking for”. Her colleague Jan Tamulewicz
features in the WTR 1000
for the first time this year. “He speaks directly and plainly and his communications are to the point.” With “an excellent knowledge of trademark law concerning international protection”, he is “a genius when it comes to European matters. Tamulewicz is a master strategist who excels at juggling the sort of really advanced problems where 30 different things are going on at once.”