United States: Massachusetts

Firms

1
Fish & Richardson PC
Wolf, Greenfield & Sacks, PC
2
Foley Hoag LLP
Hamilton Brook Smith Reynolds
Morgan Lewis & Bockius LLP
Ropes & Gray LLP
Wilmer Cutler Pickering Hale and Dorr LLP
3
Burns & Levinson LLP
Day Pitney LLP
Goodwin Procter LLP
Lando & Anastasi LLP
Nixon Peabody LLP
Nutter McClennen & Fish LLP
Sullivan & Worcester LLP
Burns & Levinson LLP
The soft IP crew at Burns & Levinson adopts an integrated approach in its defence of brands by smoothly blending trademark, copyright and design patent protection together. It provides peace of mind to rights holders looking to expand their position in the market, while budgetary constraints are always considered. Deborah Peckham oversees the IP group as one of its co-chairs. She is “a top-notch lawyer” who does a stellar job of keeping portfolios fighting fit. Segway is just one of the many brands that rely on her sagacious guidance. For heated disputes, Peckham calls upon the “extremely knowledgeable” Mark Schonfeld, who “is able to quickly identify the issues in a case and grasp the differences between different legal regimes”. Anti-counterfeiting continues to be one of the main drivers of his practice, and “he has also become adept at issues relating to grey market products and has achieved great results in that field”.
Day Pitney LLP
Day Pitney’s compact IP squad “punches well above its weight” and often teams up with the firm’s general litigators to serve up stellar courtroom results. With experience that spans all industry sectors and an instinct for taking speedy, decisive action at the first sign of trouble, the Day Pitney practitioners are assured guardians of IP rights. Enforcement in the online space, including domain names, is a particularly fast-growing specialty for the group. Carrie Webb Olson captains the side with zeal. “She is a terrific practitioner who has done a great job of building out the practice.” Her discerning insight into intricately detailed problems is a particular boon for patrons in sticky situations. Moreover, she has made a concerted effort to pass on her knowledge to younger up-and-coming attorneys, which has enabled the team as a whole to operate at a highly efficient level.
Fish & Richardson PC
Fish & Richardson’s “outstanding trademark practice” is a formidable force across the nation, but it is especially prominent in Boston, which is the nexus of its operations. “It doesn’t spew advice out; it simply gives the answer you need, in plain English, expeditiously.” “Its first-class practitioners stand out in litigation in particular – David Hosp and Mark Puzella, among others, are truly superb.” According to one leading brand owner: “Having worked with different counsel across the globe, Hosp and Puzella are by far and away the most knowledgeable, hard-working and talented attorneys I have ever encountered.” “Both of them think issues through thoroughly and are seriously prompt and responsive.” They work closely with Sheryl Koval Garko, who offers significant firepower to any contentious mandate. The three of them have represented some of the largest brands in the world, such as New Balance in the highly publicised International Trade Commission case filed by Converse. “Garko, Hosp and Puzella are so strong on the law; although they can turn it up to maximum gear, they are first and foremost pragmatic lawyers with the client’s best interests in mind.” Similarly, Robert O’Connell wins effusive praise for his “thoughtful and practical approach”. “Simply stated, he is among the most cost-effective, business-oriented lawyers in any specialty.” “He is of incredible value – he matches anybody on expertise and exceeds most, if not all, on responsiveness and efficiency.” On the non-contentious front, Timothy French and Cynthia Johnson Walden attract enthusiastic applause. “French is the Clark Kent of the trademark world: he might slip under the radar as he doesn’t focus on promoting his own practice, but his work quality is really exceptional.” Meanwhile, Walden is “extremely alert, thinks creatively and proactively solves issues that may arise”. Debra Serota straddles the contentious/non-contentious divide with finesse. An impressive decade spent as in-house counsel for Reebok means that she has the unique ability to appreciate the brand owner perspective and has an all-encompassing breadth of experience.
Foley Hoag LLP
“One of the best in Massachusetts for trademark work”, Foley Hoag is “a top-tier firm with high-quality people. They are all terrific and have a depth of expertise”. A recently opened New York unit grants the practice a broader national scope, while locally the team has been upping the ante on a slew of false advertising and trademark suits. The “remarkable” Julia Huston manages the set with a steady hand and is a go-to for prestigious trademark owners. Her judicious insight serves clients equally well in both sophisticated prosecution and enforcement. In addition, “her leadership and litigation skills are superb”. “It’s easy to resolve a dispute with her because she takes a firm but practical stance. Unlike lawyers who refuse to give a straight answer, she covers all the bases and is direct with her responses.” Patrons also hold Joshua Jarvis in high regard as a prosecution dynamo who acquits himself brilliantly in the domain name space. “One of the Foley Hoag stars, Jarvis is extremely knowledgeable and bright. He’s an excellent lawyer.”
Goodwin Procter LLP
Goodwin Procter has carved an impressive niche for itself handling the most intricate, ground-breaking soft IP cases. Hot on the heels of its US Supreme Court victory for B&B Hardware in 2015, it made the headlines again in 2017 for its decisive Supreme Court win on behalf of Varsity Brands in a milestone copyright case. Robert Carroll and New York-based Ira Levy were responsible for both of these cases. “Terrific advocate” Carroll has a glittering track record in contentious mandates. He has the ability to filter down all possible arguments to the ones viable in court and can then use his superior judgement to pick a winning choice – being able to accurately evaluate the benefits of all positions is his main strength. Moreover, he is very scholarly and a great writer.
Hamilton Brook Smith Reynolds
“Hamilton Brook Smith Reynolds is really efficient and cost effective at all tasks related to trademarks.” “It offers the utmost level of client care and the highest quality of work.” Moving into the gold tier this year is the “thoughtful and thorough” John DuPré. “He is a truly safe pair of hands with a wealth of experience in all matters relating to trademarks” and “balances his counsel with practical business concerns”. “Incredibly bright and constantly the voice of reason, he is a really nice person as well – he is simply amazing.” One foreign associate asserts: “He is the crème de la crème of US trademark attorneys.” For heated courtroom conflicts, Susan Glovsky confidently steps in. “Extremely smart, she does a tremendous job of breaking down complicated problems and explaining high-level concepts in an easily comprehensible manner.” “She excels at framing issues broadly to highlight problems that may come down the road and has a strong worldly sense of what is happening not just in intellectual property, but in other markets more generally. She is also awfully responsive and efficient with her time.”
Lando & Anastasi LLP
“Lando & Anastasi understands that its advice serves as part of a client’s greater, overall plan and it gets how matters will impact your business – its price is right and the value is high.” One happy customer enthuses: “I value its team’s honest and straightforward guidance so much that even for other legal work outside its field I would not hesitate to contact them.” Ann Lamport Hammittee is a leading light here. “She creates global strategies not just from a legal standpoint but also from a commercial one, and is always budget aware.” “Never filing a trademark just for the sake of doing so, she provides valuable insight and can stop fraudulent activities at minimum cost; she is also constantly reachable and replies promptly to inquiries.”

McCarter & English has an emphatic presence on the East Coast and New England is a particular stronghold. Its reputable cross-practice fashion group operates throughout its many offices, and several of its central actors reside here in Massachusetts, including Lee Carl Bromberg. His gleaming record includes a win for Christian Louboutin’s red sole trademark in a highly publicised false advertising case. “He does a great job of representing client interests and knows how to resolve issues without any unnecessary actions.” Lori Shyavitz also counsels numerous clients in the fashion and luxury goods world. Adept at developing global enforcement strategies, she deploys her abilities to spectacular effect when managing worldwide portfolios. “A skilled prosecutor and litigator”, Keith Toms is “a go-to attorney who is great value for money”. “Patient and sympathetic at all times. He knows how to navigate through complex legal problems and takes the time to explain complicated issues while eschewing legalese.” Erik Paul Belt rounds off the esteemed set. With his wide-ranging trial experience in IP spats, there is little beyond his skill set when it comes to quashing infringers. He also has a knack for assisting brand owners in building and securing their portfolios.

Morgan Lewis & Bockius LLP
Morgan Lewis & Bockius entered the Massachusetts market in 2014 and quickly gained much traction: last year it made its debut in the WTR 1000 rankings and this year the side ascends into the silver band. The firm has a strong presence coast-to-coast on the trademark scene, but its Boston unit is fast becoming its main vantage point. This is in large part thanks to Rachelle Dubow and Joshua Dalton, who are both recipients of notable praise: “They are first-class practitioners with excellent clients.” One peer states: “Dubow possesses an incredible breadth of knowledge and delivers top-notch guidance.” “She specialises in maintaining portfolios and takes the time to learn about all aspects of your business to provide consistent, sound advice that balances legal risks with commercial rewards. Her attention to detail, responsiveness and overall ability are second to none.” “Dalton has a thorough understanding of the law” and is “very engaged. He makes every effort possible to fully wrap his head around IP matters and delivers exceptional results. He has tremendous client communication and negotiation skills; he always provides clarity on any matter and brings solutions that are carefully thought out”.
Nixon Peabody LLP
Full-service outfit Nixon Peabody cuts an impressive figure on the IP stage and draws on a deep bench of professionals who serve a diverse range of high-end rights holders in need of worldwide strategy and enforcement. It possesses a robust non-contentious practice – and is regularly one of the top filers in the country – but is also sure-footed in courtroom tussles, which are Jason Kravitz’s area of expertise. His storied litigation career has conferred on him a holistic understanding of IP protection; although he has taken on instructions in an assortment of industries, the technology sector remains the main focus of his thriving practice.
Nutter McClennen & Fish LLP
Riding a wave of glowing endorsements, Nutter McClennen & Fish enters the WTR 1000 rankings this year. Although fully capable of enforcing brand rights, it is most prized for its fine-tuned prosecution talents: “Its team of professionals has a sharp attention to detail and a great success rate when it comes to acquiring trademarks.” “A well-polished adviser”, Patrick Concannon is the leader of the pack. “He is wonderful at trademark searches and clearance. He is also very knowledgeable and practical when it comes to structuring and negotiating contracts.” According to one impressed peer: “He really knows his stuff – in terms of raw competence and ability, he’s just got it.” Although principally focused on patents, Rory Pheiffer also garners much acclaim for his branding nous: “He keeps you abreast of the latest legal developments, provides thorough and easy-to-comprehend explanations of complex filing procedures, and executes trademark applications that are appropriately suitable for your situation. On top of all that, he knows how best to collaborate with foreign counsel to tackle international issues.”
Ropes & Gray LLP
“Ropes & Gray is highly regarded and known as a model of excellence in intellectual property.” Its Boston squad is one of its trademark machine’s main cogs; while the DC and New York branches are better known for their contentious responsibilities, here in Massachusetts it has honed its prosecution and transactional capabilities to a fine point. Emilia Cannella’s “wide-reaching IP knowledge and experience” enables her to troubleshoot any problem, which makes her a versatile portfolio caretaker. “She is a standout lawyer who dispenses commercially pragmatic advice. She really knows the law and can be relied on in all things trademark.” “Her solid counsel consistently adds value.” Erica Han performs admirably on the full gamut of trademark guidance and procurement. “She excels in her ability to relate to clients and to convey hard to grasp concepts in a way that business owners can appreciate. Her practical direction matches real-world needs and she is a pleasure to work with.” Her metier is IP-related transactions; she recently assisted adidas when it sold its Mitchell & Ness branch, which included the negotiation of its sub-licence agreements to the NHL and MLS trademarks.
Sullivan & Worcester LLP
Sullivan & Worcester draws on a deep well of experience possessed by its accomplished partners. Combined with its forward-looking, commercial approach, the firm makes for a compelling option for brand owners of all shapes and sizes. Prosecution, counselling and licensing all fall under the purview of squad captain Kimberly Herman. “She is incredibly responsive and is always looking out for your company’s interests.” Herman continues to oversee Vice Media’s brand portfolio, which extends to over 30 countries and continues to grow rapidly. “Sunstein Kann Murphy & Timbers is widely known for its trademark ability and all of its lawyers are superb.” Its branding group has an especially striking command of the pharmaceutical and higher education spaces, although virtually no sector escapes its grasp. As testament to its commitment to intellectual property, it has bolstered its ranks over the last year with a number of new hires. “Renowned in this area of the law and a prominent, active member of the community”, Lisa M Tittemore anchors the branding practice. “She is a good listener and her advice comes from a robust, pragmatic grounding which clients find valuable.” “She is quick to respond, and her business-oriented counsel is clear and easy to understand.” The esteemed Steve Abreu is another principal driver of the group: “Although all of the firm’s lawyers are great, Abreu is one of its most noteworthy practitioners.” “He provides excellent litigation advice and efficient trademark protection.” Alongside Kerry L Timbers, he manages all of Harvard University’s domestic trademark concerns. As another core member of the set, Timbers inspires confidence in brand owners with his perceptive insight into enforcement and contentious issues. He has also been kept busy of late protecting the image of American Consumer Credit Counseling.
Wilmer Cutler Pickering Hale and Dorr LLP
Commercial outfit WilmerHale performs exceptionally on issues at the intersection of corporate and IP law. Its bustling soft IP practice is underpinned by Michael Bevilacqua, who manages thousands of domestic and international trademark registrations and is also a proficient enforcer of rights. He joins the gold tier this year based on “the sheer volume of success he’s had in terms of getting results for clients”. “A consummate professional, he is civil and courteous and has the ability to forcefully prosecute his case while always being respectful. He is just a wonderful guy – if everybody could practise like him, this line of work would be far less stressful.”
Wolf, Greenfield & Sacks, PC
“Gold-quality” boutique Wolf, Greenfield & Sacks is “always a major competitor” in the Bay state. “Its people know the issues and how to resolve them; with a solid understanding of the law, they get how to approach trademark applications and can predict problems that will arise in the future.” “They are sensitive to price pressures and are attuned to dealing with budgetary constraints.” It has been a banner year for the venerated team: it has drastically increased its headcount and opened a new office in New York, which has opened up an expanded geographical base of clients. It recently gained the patronage of Yale University and now takes charge of its global trademark portfolio. Trademark chair Douglas Wolf assumes responsibility for this. “One of those individuals who leads discussions with his perceptive comments”, he “runs the practice brilliantly” and has complete mastery over prosecution matters. “He reacts quickly and never fails to answer requests perfectly.” Also winning many plaudits is John Welch: “The firm’s comprehensive and well-organised practice is very prominent, particularly due to his presence. He is well known for regularly reporting on Trademark Trial and Appeal Board (TTAB) matters on his blog.” “He doesn’t simply relay information; he adds cutting insight, criticises certain results and will engage in a deep dialogue with the community, and that has earned him a ton of respect.” Co-chair of the litigation group Michael Albert completes the troupe. While Welch ably covers all disputes at the TTAB, Albert is an expert in federal court litigation and is a priceless ally to have when the temperature rises. Straddling the patent and trademark departments, he is a font of contentious wisdom.

Individuals: enforcement and litigation

David Hosp - Fish & Richardson PC
Julia Huston - Foley Hoag LLP
Mark S Puzella - Fish & Richardson PC
John L Welch - Wolf, Greenfield & Sacks, PC
Michael A Albert - Wolf, Greenfield & Sacks, PC
Erik Paul Belt - McCarter & English LLP
Lee Carl Bromberg - McCarter & English LLP
Robert D Carroll - Goodwin Procter LLP
Joshua M Dalton - Morgan Lewis & Bockius LLP
John L DuPré - Hamilton Brook Smith Reynolds
Sheryl Koval Garko - Fish & Richardson PC
Jonathan M Gelchinsky - Pierce Atwood LLP
Susan GL Glovsky - Hamilton Brook Smith Reynolds
Ann Lamport Hammitte - Lando & Anastasi LLP
Sarah Anne Keefe - Womble Bond Dickinson (US) LLP
Jason C Kravitz - Nixon Peabody LLP
Lawrence R Robins - Sullivan & Worcester LLP
Mark Schonfeld - Burns & Levinson LLP
Kerry L Timbers - Sunstein Kann Murphy & Timbers LLP
Lisa M Tittemore - Sunstein Kann Murphy & Timbers LLP
Cynthia Johnson Walden - Fish & Richardson PC
Douglas R Wolf - Wolf, Greenfield & Sacks, PC

Individuals: prosecution and strategy

Michael J Bevilacqua - Wilmer Cutler Pickering Hale and Dorr LLP
John L DuPré - Hamilton Brook Smith Reynolds
Julia Huston - Foley Hoag LLP
Robert M O’Connell Jr - Fish & Richardson PC
Cynthia Johnson Walden - Fish & Richardson PC
John L Welch - Wolf, Greenfield & Sacks, PC
Douglas R Wolf - Wolf, Greenfield & Sacks, PC
Steve Abreu - Sunstein Kann Murphy & Timbers LLP
Emilia F Cannella - Ropes & Gray LLP
Patrick J Concannon - Nutter McClennen & Fish LLP
Rachelle A Dubow - Morgan Lewis & Bockius LLP
Timothy A French - Fish & Richardson PC
Jonathan M Gelchinsky - Pierce Atwood LLP
Kimberly B Herman - Sullivan & Worcester LLP
Carrie Webb Olson - Day Pitney LLP
Lawrence R Robins - FisherBroyles, LLP
Lisa M Tittemore - Sunstein Kann Murphy & Timbers LLP
Keith Toms - McCarter & English LLP
David J Byer - K&L Gates
Nicole E Gage - Foley & Lardner LLP
Ann Lamport Hammitte - Lando & Anastasi LLP
Erica L Han - Ropes & Gray LLP
Joshua S Jarvis - Foley Hoag LLP
Sarah Anne Keefe - Womble Bond Dickinson (US) LLP
Deborah Peckham - Burns & Levinson LLP
Rory P Pheiffer - Nutter McClennen & Fish LLP
Debra S Serota - Fish & Richardson PC
Lori Shyavitz - McCarter & English LLP
Kerry L Timbers - Sunstein Kann Murphy & Timbers LLP
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Issue 74