United States: DC Metro Area

Firms: enforcement and litigation

Firms: prosecution and strategy

Arent Fox LLP

“Problem solvers not fee generators” describes the IP guardians at Arent Fox, who collectively maintain a full-blooded trademark, copyright and rights of publicity practice. “The firm has many great, practical and down-to-earth lawyers who are go-to’s for pillars of industry.” Testament to the depth of its DC bench, the outfit has six individuals placing in the WTR 1000 rankings this year. At the top of the deck is Anthony Lupo – a beacon of light for household-name entertainment, fashion, retail and e-commerce brands. “Clients really love Tony; he brings a lot of personality, skill and hard work to the practice, and delivers true to his word.” A leading licensing and IP transactions specialist, Michael Grow is another heavyweight. Highly rated alongside the pair are Ricardo Fischer, Cristina Carvalho, Christopher Norton and James Davis II. Fischer acquits himself with distinction as head of the trademark practice; a seasoned international operator, his followers in Europe and Latin America – as well as the United States for outbound work – are legion. “Sharp, dedicated, pragmatic, service minded and forward thinking, Ricardo is the ideal person to partner with.” Cut from a similar cloth, Carvalho is admitted to practise in Brazil and the United States, representing marquee clients Petrobras and Mars with poise and precision in IP-driven commercial transactions. Norton has generated immense value for the group and its clients through his contributions to improving efficiency in large-scale portfolio management. Meanwhile, Davis is the set’s top anti-counterfeiting, online brand enforcement and internet law specialist.

Buchanan Ingersoll & Rooney PC

When it comes to brand building and product launches, Buchanan Ingersoll & Rooney is excellent at the precision front-end risk analysis required to make a fresh impact worldwide. This is a boon for clients such as Noosa Yoghurt, one of the fastest growing yoghurt brands in the United States, which Bassam Ibrahim represents with respect to global clearance, strategy, registration and enforcement. Ibrahim took the helm on the trademark side as part of a recent restructuring of leadership in the IP group. He oversees a practice that is impressively comprehensive and distinguished by rich expertise in trademark selection, clearance, registration and enforcement. With a 360-degree understanding of the business of brands, he excels at executing commercially aligned IP strategies effectively. Ibrahim forms a great team with Bryce Maynard, a talented and versatile trademark professional with significant litigation experience on his CV. As well as Noosa Yoghurt, they co-represent Bush Brothers and Company and Rao’s Specialty foods; active in diverse industries, the food sector is one they know particularly well.

Cooley LLP

Cooley provides gold-standard guidance to a sizeable set of high-calibre clients including some of the world’s leading brands in technology, cars and food. The DC team took a hit when Peter Willsey departed for Brown Rudnick, but “Brendan Hughes is building something great with Nick Bolter” – a top-rated London-based lawyer who recently became head of the firm’s global trademark practice. As a litigator, Hughes “can swoop in and save the day”. “He’s extremely skilled – when you have him on the other side, you know he’s not messing around, but he’s someone you can have a beer with when all is said and done.” Hughes also has an excellent counselling manner, keying in to companies’ risk profiles and giving tailored strategic advice.

Dickinson Wright 

Debuting in the DC chapter this year, Michigan firm Dickinson Wright has a strong trademark line-up in the capital. The recently expanded local group takes its cue from Nicole Meyer, a master of all trades when it comes to brands. Her patrons include a global fresh produce leader, for which she does everything from prosecution and counselling to anti-counterfeiting and enforcement, and the world’s third-largest cruise line, NCL Corporation, for which she handles a global portfolio. Her greatest talent is helping companies to increase their international protection and giving strategic advice on which jurisdictions it makes sense for them to branch into. What is more, she is skilled at anticipating client needs and proactively meeting them.

DLA Piper

Global firm DLA Piper has a large set of high-quality IP attorneys stationed in DC who support brand owners in many meaningful ways. Setting the tone is US IP and technology group co-chair Ann Ford – a go-to for top names in the communications, media, retail and fashion sectors with which she is deeply familiar. Ford is steeped in all aspects of IP procurement and development but comes into her own in transactional matters, such as IP restructurings and co-branding initiatives. Partner Thomas Zutic specialises in trademark law focusing on prosecution, portfolio management and enforcement. He is endorsed for the speed with which he spots issues and solves problems. Of counsel Ryan Compton has “vast experience and is fast and efficient in US trademark prosecution”. He is rigorous on portfolio management and has finely honed licensing skills.

Drinker Biddle & Reath LLP

Drinker Biddle & Reath collaborates closely with clients across the trademark lifecycle. Its lawyers are not just in the job of filing trademark applications but are vital strategic and business partners from the earliest stages of product and brand ideation. Lawyers such as Jennifer Dean, who chairs the trademark group, are accustomed to taking calls from CEOs for spontaneous advice on the broader direction in which they are heading and how to use their intangible rights to achieve their goals in rapidly changing markets. Dean is an accomplished team leader and works closely with other excellent partners – Chicago’s Ira Kalina, for example – to offer large brands the complete range of services.

Dykema Gossett PLLC

Dykema’s trademark skill set is well rounded thanks to the varied backgrounds of its lawyers, who bring USPTO, in-house and policy consulting experience to the table. Collectively, they are well prepared for anything that comes through the door – be it a large portfolio in need of care and attention, a significant licensing deal or challenging litigation. As head of the trademark practice, Jennifer Fraser has cultivated a culture of immediate responsiveness, ensuring that the whole group is comfortable with a 24/7 manner of working. This makes it ideally placed to deal rapidly with emerging global issues. A former examining attorney, Fraser knows how to navigate prosecution obstacles and investigate fraudulent activities before the USPTO. She is also an ace on enforcement. In senior counsel Marsha Gentner, Fraser has someone to consult with on prosecution anomalies and TTAB proceedings. Gentner has over 30 years’ experience in prosecution and litigation and is a strong strategic sounding board for colleagues and clients alike. Eric Fingerhut adds considerably to the firm’s depth of expertise in global filing and portfolio management, as well as litigation. He is creative in seeking solutions and resolving trademark problems in an effective, non-contentious manner.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP 

Stunning success sums up the past 18 months in Finnegan’s trademark practice. Notable litigation highlights have been plentiful, including the representation of Combe Incorporated in a district court appeal against a TTAB decision involving feminine-care brand VAGISIL. The team put together powerful surveys, marshalled a massive amount of evidence in a short timeframe and quickly got to grips with cutting-edge legal issues. Another high point was representing Dean Guitars and the estate of “Dimebag” Darrell Abbott in a copyright and unfair competition case involving Lanham Act, invasion of privacy and other state law claims over a lightning bolt graphic on Dimebag’s Dean from Hell guitar; the side secured a victory on summary judgment. In both cases Douglas (Chip) Rettew led the charge. “Chip is a very savvy advocate who is universally respected as a positive force in litigation and an up-front, reasonable guy.” He is also “very supportive of everyone” in a way that helps clients get results and colleagues advance their careers. Testament to this are WTR 1000 debutants Anna Naydonov and Margaret Esquenet, both of whom supported Rettew in Dean Guitars. Naydonov has whetted trial skills and knows how best to fight and resolve disputes. Esquenet is a copyright authority with a deep knowledge of trademark law, too. “Margaret is great to discuss emerging issues and overall IP protection strategy with. She is very willing and quick to learn about business realities and devise approaches that work for her clients.” Not just a litigation heavyweight, Finnegan is the complete package as a trademark offering and many top brands engage it for all their IP matters. For instance, Danny Awdeh and a team that includes of counsel Christie Baty Hudgins represent Six Continents Hotels in connection with worldwide clearance, prosecution, counselling and enforcement – activities that have taken on increased importance as a result of the company’s brand portfolio expansion, recent advertising campaign launches and numerous acquisitions. “One of the best trademark lawyers there is,” Awdeh “masterfully balances legal risk with commercial solutions and can meet very aggressive deadlines to successfully launch new brands”. Hudgins has many years of experience catering to the portfolio needs of large and prestigious names. As do Naresh Kilaru and Christopher Foley, who team up to protect Caterpillar’s complex IP portfolio. Illustrative of the scale of this task, it can involve filing more than 1,000 trademark applications in a single year, as well as numerous TTAB and other international tribunal proceedings. “Naresh is great for the most sophisticated trademark matters affecting your key brands. His skills are formidable; in litigation, for example, he demonstrates a complete knowledge of the facts and the law and is able to think on his feet. Through creative strategies and aggressive discovery, Naresh can negotiate favourable outcomes before cases proceed to trial. He is a fierce advocate but keeps clients’ business interests in mind through a case. On the portfolio side, he is outstanding and gives common sense, commercially guided answers to complex questions.” Experience and breadth set Foley apart – his expertise encompasses all IP rights and he works artfully across the contentious/non-contentious divide. Brett Heavner is another versatile operator who can cover a lot of ground for patrons. On behalf of Xiaomi, for example, he handles patent and trademark prosecution, manages global brand enforcement and undertakes IP due diligence. Like many of his colleagues, he comes in for vociferous praise: “Brett knows exactly what you need and how quickly and then he makes it happen – he’s incredibly client oriented. His advice is always well thought out and he’s very knowledgeable about global trademark practice. He provides commercial guidance tailored to your risk profile.” Focused on trademarks and false advertising, but complete within the IP arena, Mark Sommers is the key contact for the likes of Yamaha, Petco, LG Electronics and Subaru of America. His recent work for Philips is especially worth a mention as it involves several long-running disputes and many opposition and cancellation actions. “Mark is responsive, dedicated, reliable, intuitive, proactive, practical and gifted. He blends sophisticated legal skills with plain street smarts and keeps his eye sharply trained on key long-term goals and overall business visions.”

Foley & Lardner LLP

Foley & Lardner’s DC-based trademark lawyers have developed a strong niche in the pharmaceutical industry. Capitalising on the firm’s robust US Food and Drug Administration practice, Norm Rich and Katherine Califa provide well-rounded international trademark clearance, prosecution and enforcement advice to life sciences players including biopharmaceutical company Alkermes. They link up well for brand owners in other sectors, too, and are working extensively for Global Payments on day-to-day clearance, prosecution and enforcement, as well as major rebranding efforts. Rich puts himself in his clients’ shoes and operates more like a businessperson than a lawyer, often working with company presidents and CEOs. He is excellent at breaking down complex legal issues and framing his advice in a way that allows for easy commercial decision making. Califa takes ownership of her projects and cares deeply about doing a thorough job; she is also incredibly responsive.

Gerben Law Firm PLLC 

Gerben Law is a discerning choice for trademark clearance and prosecution. Highly specialised in the discipline and unstinting in its dedication to quality, it works efficiently and cost-effectively across the board. Moreover, the rates are affordable and work is often done on a flat-fee basis. The team does not shy away from any industries either. With a varied client base, all visitors – whatever their sector or size – are treated to a personal service and benefit from careful strategic thinking. The volume here is high, but it is no trademark filing mill. You can tell that the advice Josh Gerben gives is good by the fact that his clients rarely end up in litigation; he understands how brands and businesses operate in the real world. Eric Perrott is a sought-after expert on USPTO practice, the ins and outs of which he knows far better than most. Online brand enforcement is another of his fortes.

Gibson Dunn & Crutcher LLP

Scarcely rivalled when it comes to high-profile, big-ticket, complex litigation of any kind, Gibson Dunn brings the heat in IP infringement cases. DC-based Howard Hogan has been on a run of good form recently, his work on behalf of Facebook and Oculus VR against ZeniMax being particularly impressive. After suffering a potentially product-ending defeat in a jury trial, Facebook and Oculus turned to Hogan for defence in post-trial proceedings. As a result, the Lanham Act portion of the verdict (amounting to $250 million) was vacated and ZeniMax’s motion for a permanent injunction preventing the sale of Oculus headsets was denied. Hogan can clearly go the distance and pull out unbelievable results, but a major part of his success can be attributed to a talent for fighting off disputes and facilitating early wins. He has also identified multiple ways in which bad actors take advantage of internet and new media tools to deprive trademark owners of the value of their investment – and how to stop them. Acting for Next Investments, he recently obtained an order forcing six Chinese banks to turn over the records of more than 250 Chinese accounts belonging to a ring of counterfeiters.

Hogan Lovells

The globality of the Hogan Lovells trademark practice sets it apart even among other international players. With leading lawyers in US, European and Asian markets, it is in pole position to safeguard the rights of multinational brands. A sector-led approach across the firm facilitates penetrating commercial advice, particularly to those in the automotive, consumer, diversified industrials, energy, life sciences, technology and retail industries. The DC office is home to trademark authorities Timothy Lyden, who features in the prosecution and strategy gold tier. “Tim is an amazing trademark lawyer and a delightful person who really cares about his clients. He is incredibly thoughtful, so if you want to put together a great global strategy for your brand, he is an outstanding choice. His technical lawyering skills are some of the best in the business.” Also highly rated is Anna Kurian Shaw, who manages an exceptionally busy litigation caseload with flair. She has been taking the lead on behalf of long-term patron Ferrero in a trade dress litigation relating to its Kinder Joy product.

Holland & Knight LLP

Holland & Knight’s unique selling point is its ability to secure positive outcomes for clients protecting and enforcing brands in difficult foreign markets such as China, India and sub-Saharan Africa. This is global trademark savant Paul Kilmer’s domain. Few, if any, individuals have their finger on the pulse of international legal developments as keenly as Kilmer; he founded and chairs the 301 Trademark Working Group, which plays an important role in US trade policy and global IP protection, and serves as vice chair of INTA’s emerging issues committee. His associate Dan Neustadt has built his own reputation as a well-rounded trademark lawyer. Coming from a litigation background, he continues to handle disputes alongside his global clearance, prosecution and portfolio management practice.

Hunton Andrews Kurth LLP

With more than 20 partners and large and experienced associate and paralegal teams spanning multiple offices, Hunton Andrews Kurth is primed and ready to serve the total needs of marquee brands wherever, whenever and however. The firm receives enhanced coverage in the WTR 1000 DC chapter this year with the inclusion of IP group co-head John Gary Maynard III, who has an impressively broad practice encompassing search, clearance, filing, licensing, enforcement and litigation. He runs large and complex projects efficiently, cost-effectively and with finessed strategies. For one of his financial patrons, he has developed a comprehensive enforcement matrix as its online presence has grown. Maynard assumes his place in the rankings alongside long-time inductees Edward Colbert and Susan Smith. In adversarial proceedings, Colbert knows just what tone to strike and how hard to push. Dextrous and decisive in the courtroom, he is also a deft counsellor and transactional attorney, and a regular confidant to Mattel, holding company InterActive Corp and the World Baseball Softball Confederation, among many others. Teaming up with patent and trademark litigator and counsellor Smith, the pair successfully represented Dish Network in a trademark infringement action brought by a former retailer over the ‘dishnet.com’ domain name and trademark rights, securing summary judgment in favour of their client on the eve of trial.

Jones Day

Jones Day is a force to be reckoned with in high-stakes IP litigation and is ready, willing and able to tackle the most complex patent and trademark suits. Co-leader of the practice John Froemming is the firm’s trademark celebrity. “An amazing trial lawyer, he has this ability to focus in on his clients’ business needs and how best to serve them in a litigation context. He runs things lean so everyone working for him knows what their role and contribution is; his teams are like well-oiled machines.

Kelly IP 

Elite boutique Kelly IP has a lot going for it, including a collaborative team of service-minded lawyers, vast experience on all aspects of brand business, highly professional paralegals and a combination of lower rates and more flexibility than bigger outfits. Unsurprisingly, it garners superlative feedback from diverse stakeholders in the IP market. “Kelly IP never disappoints. It is more streamlined than big law firms and works efficiently as a team. Although compact, it has tremendous resources including UDRP specialists and amazing paralegals. It also represents exceptional value for money.” Talisman David M Kelly is “one of the best there is at coming up with creative solutions that precisely fit a brand’s needs. He is strategic, thoughtful and responsive, and continues to raise the bar for what it means to be an excellent external partner.” “He has an uncanny ability to immediately reach the right conclusion on something – he doesn’t need time to process things.” Moreover, “he isn’t at all flamboyant and doesn’t make it all about him”, meaning that his equally brilliant colleagues thrive too. “David and Lynn M Jordan are foremost experts on the intersection of trademark law and free speech so are relied on by many major media and entertainment companies. Their approach is always practical but grounded in an encyclopaedic knowledge of case law and decades of on-the-ground experience. They are also fierce and sophisticated advocates for their clients.” “Stephanie Bald is an invaluable part of her clients’ internal teams and is perfect in the trusted adviser role. Her responsiveness and professionalism are top notch and you can always count on her to deliver a great result regardless of the issue.” A former TTAB administrative trademark judge who brings immense oppositions and cancellations expertise to the team, Linda K McLeod is a “wonderful person and attorney who is always well prepared”. “She is admirably committed to educating and helping younger lawyers.” Add Rob Litowitz to the mix and the WTR 1000 features all five founding partners. Litowitz recently linked up with Bald to handle a complex case for Bugatchi Uomo Apparel against German company Bugatti, which involved serving the complaint under the Hague Convention for international service whereupon the German authorities denied service. In a case of first impression, Litowitz and Bald – together with German co-counsel – persuaded a German court that this was an erroneous decision, thereby allowing the US lawsuit to proceed.

Kilpatrick Townsend & Stockton LLP

“Kilpatrick Townsend works with a lot of top clients on big brand projects,” which it is well placed to do thanks to vast resources in the trademark area. With more than 110 lawyers, it is one of, if not the largest, specialised groups in the United States. Collectively, the team covers all trademark specialties and sub-specialities, enabling it to make the most of every available tool to deliver success. The biggest names in DC are David Mayberry and Alli Pawlenty-Altman. Mayberry, who serves as co-leader of the trademark and copyright team, focuses on trademark, unfair competition and false advertising litigation, as well as TTAB proceedings and arbitration. Together with Pawlenty-Altman, a domestic and international counsellor par excellence, they tackle worldwide enforcement for a leading name in the hospitality sector. “Allie can handle an immense volume of work while somehow remaining easily available – this ability probably stems from her time at Amazon. She knows what her clients want and what pressures they are under – when they are stressed, she brings a level of calm that is priceless.”

McDermott Will & Emery

McDermott Will & Emery’s brands team is firing on all cylinders right now. The support that management have given to the practice over the years is paying off, with a recent explosion of non-brand-related work from trademark clients feeding other departments. Some soft IP groups at other firms struggle with being viewed as a service practice, but this is not the case for John Dabney et al. Gold-rated Dabney serves as head of the global trademark litigation practice and by all accounts does a wonderful job. “He knows all the details of his cases but has the agility to tell highly persuasive stories to a trier of fact. He staffs cases leanly, is efficient and provides great business advice.” Robert Zelnick is another formidable lead trial counsel with an excellent record – and glowing reviews. “Robert stands above others with his uniquely practical and hands-on approach. He interfaces with rights holders on a commercial level and utilises McDermott’s deep pool of resources well; when an inter-firm referral is required, he stays engaged, but also brings in consistently strong attorneys.” “Everyone you deal with at the outfit is responsive and thorough, giving you the confidence to push through to your objective.” Mary Hallerman plays a key role in the success of the group thanks to her faculty for guiding case strategy and case management. Steeped in the food and beverage sector, she invests the time to learn the history of her clients and how their products are marketed. Former USPTO trademark examiner Richard Kim is an anchor of the prosecution and portfolio management practice.

Morgan Lewis & Bockius LLP

The trademark portfolio management practice at Morgan Lewis has skyrocketed in recent years. The group has found a way to do high-level work cost-effectively thanks to a well-drilled team and dedicated administrative support unit, which is responsible for invoice processing among myriad other tasks, freeing up partner time for more strategic thinking. Engaged in such thinking with great results in IP value creation are Anita Polott and Karen Butcher. The pair are working on behalf of Anthem – by membership, the largest health benefits company in the United States – with respect to all its domestic and international trademark needs. In sync with rights holders, Polott is forward thinking when it comes to efficiency and pricing. Butcher’s talent is optimising companies’ IP positions and brokering deals. A lot of the portfolio growth has come about as a result of client activities in the transactions market, with which Dana Gross is heavily involved. In recognition of his sterling deal work, he was recently elected to the partnership. Extensive teamwork has helped take the practice to the next level; Butcher, Gross and Kristin Altoff all deploy to ensure Edgewell Personal Care receives a well-rounded trademark and domain names service globally. Meanwhile, Butcher, Altoff and Rebecca McDougall link up to provide incisive brand strategy advice to Diageo, with McDougall bringing internet and social media expertise to the mix. Morgan Lewis is one of the few large commercial firms with robust trademark prosecution, transactions and litigation practices. Flying the flag in DC for the litigation side is Kevin Fee, who has a knack for zeroing in on what is most important in a case from a business perspective.

Muncy, Geissler, Olds & Lowe, PC

Fairfax, Virginia boutique Muncy, Geissler, Olds & Lowe has a lot of momentum in the prosecution area; its low overheads make for a cost-effective service while deep experience in the partnership guarantees satisfaction in terms of quality. Listening to clients, understanding their needs and then flexibly tailoring work and service for a precise fit are what Jeffrey Kaufman and Roberta Bren excel at. Kaufman is a former trademark examiner and previously led Oblon’s trademark practice – quite simply, he has vast experience in USPTO methods. Brands feed off his creativity and enthusiasm. “Roberta is a straight shooter and always maintains a focus on your best interests. She doesn’t tell you what you want to hear but what you need to know to make informed business decisions.”

Nixon Peabody LLP

Nixon Peabody offers bread-and-butter prosecution cost-effectively and with highly skilled paralegals but is not just grinding out filings and responding robotically to office actions; its forte lies in strategic brand management and enhancement. Showing the way when it comes to the realisation of brand value is Jeffrey Costellia, who counsels and manages the portfolio of Alibaba Group among other leading companies. He excels in his role as co-leader of the IP division not only as a result of his excellent work, but because he cares passionately about mentoring up-and-comers in the profession and about important issues such as diversity and inclusion. David May also stands out for his dextrous solutions to prosecution puzzles, his mindfulness of the impact that actions in one jurisdiction can have in another, and his investment in getting out to meet his clients face to face. In his international practice, he has been enforcing the rights of a restaurant chain in difficult markets, including China; he is also behind an e-sports push at the firm.

Perkins Coie LLP

Since his arrival in March 2015, Fabricio Vayra has not only grown Perkins Coie’s DC trademark group but has considerably amped up the firm’s national practice. Vayra is a dynamo – brand owners never regret giving him their entire budget for US and international trademark work, having him take care of strategy and run the show. His deep in-house counsel experience means that he puts clients first and thinks of their business. “Fab brings a practicality to legal problems. He gets what clients are concerned about because he has lived that life. He knows that there is more to be concerned about than just budget pressures – there are political complexities to deal with, for example.” “He doesn’t feel like you should have to run through him as a gating timekeeper and isn’t worried about others taking his station in life” – a refreshing attitude and one which has allowed others around him to flourish. Vayra continues to be a top authority in internet governance and policy.

Pirkey Barber PLLC 

Pirkey Barber is getting smart in terms of updated docketing systems, flat-fee billing arrangements and other transparency, efficiency and cost-effectiveness enhancers – all of which are helping it to remain one of the top trademark outfits in the United States. More important though is the talent on its bench, which runs deep. Flying the flag in the DC metro area is Tara Vold, a trademark, copyright and advertising expert who delivers crisp results in portfolio management, enforcement and litigation. A creative thinker, she is a great fit for those with unconventional marketing strategies.

Riebling IP PLLC 

Pulling work away from some of the battleships of the legal market, Riebling IP has the wherewithal to handle large-scale global portfolios, sweeping enforcement campaigns and time-pressed clearance efforts. Aggressive in safeguarding client rights, excellent at giving gut checks, as sophisticated as its larger competitors in terms of technical infrastructure, well networked internationally and great on price, the boutique is on a roll – culminating with its debut in the WTR 1000 DC rankings for 2020. In charge is Peter J Riebling, a trademark, copyright, unfair competition and advertising devotee with nearly three decades of experience representing top brands. He has got a lot of exciting stuff on his CV – his bio can be checked online – and is a dynamic lawyer who is positioning his clients and his firm smartly for the future. He is increasingly called on to advise on privacy matters.

Rothwell, Figg, Ernst & Manbeck, PC

Rothwell Figg’s excellent domestic and international reputation among brand owners and foreign associates stems from its quality and efficiency. The esteemed DC boutique knows all the best manoeuvres to obtain ironclad trademark protection at the UPSTO and how to get the most out of international contacts when filing around the world. Especially on the patent side, as well as in trademarks, the outfit is fleet of foot in administrative disputes and court litigation. Taking the lead where brands are concerned is Leo Loughlin, a persuasive force who can overturn trademark office refusals swiftly – something he has recently done for a diverse group of companies, including Valentino, Synthon and Ferrero. Correspondents abroad love working with him, finding him “incredibly helpful and responsive and quick and clear in his advice”. “Not only is he an effective and efficient attorney, he is also a genuinely charming person and a pleasure to work with.” It is not all about Loughlin though, as Anthony Figg, Steven Lieberman and Marty Zoltick – all familiar names to those with patent interests – make equally strong contributions. Trademark-focused associate Davide Schiavetti also deserves a mention for his support of Loughlin. In recognition of its depth, the group makes its first appearance in the WTR 1000 this year.

Smith, Gambrell & Russell, LLP

National commercial firm Smith, Gambrell & Russell has 30-plus IP specialists between its Atlanta, DC, Jacksonville and New York offices, and can handle all protection, enforcement and litigation matters across the full spectrum of IP rights. The ensemble’s most experienced trademark expert is James Bikoff, a veteran who has set benchmarks and established trends in both online and offline enforcement. A frequent writer and speaker on IP topics, someone who has participated in various legislative efforts and a major contributor to associations such as the American Bar Association (ABA), INTA and the European Communities Trademark Association, Bikoff is respected by all as a thought leader. His colleague in DC Bruce McDonald has an interesting and varied practice, which sets him apart. Fluent in Russian, he has conducted US IP work for the Russian government and various Russian companies, represents pharmaceutical originators in licensing negotiations and registers, enforces and litigates trademarks.

Steptoe & Johnson LLP

Acting on behalf of a colourful catalogue of clients in all major industries, Steptoe & Johnson makes light work of trademark prosecution briefs. It also brings comfort when trouble brews and has an enviable track record of success in litigation and enforcement, to which it has recently added in significant ways for prestigious brands. One such example is Moët Hennessey, which draws support from Michael Allan, William Pecau and Rachel Hofstatter on trademark infringement, grey-market goods and counterfeiting issues. One of the team’s value adds is the rigorous training that it provides to US customs officials in respect of Moët Hennessey’s famous marks. Steptoe has long been a leader at the US International Trade Commission and remains busy there on patent and Lanham Act matters. In one recent case, it successfully defended Shougang Group against allegations brought by US Steel. Taking the lead was Allan, supported by Pecau and Boyd Cloern in DC, and international trade lawyers from the Beijing office. Allan litigates with confidence and poise in all forums and is a leading light in the fight against fakes. Pecau is hailed as a “zealous advocate who approaches litigation issues practically and who has a huge breadth of experience.” Some of the best feedback is reserved for Hofstatter: “Her guidance is superb and her track record is amazing. She is extremely diligent, responsive and professional, and very patient in answering numerous questions from non-experts about the trademark process.”

Sterne, Kessler, Goldstein & Fox PLLC 

In terms of civil trademark litigation and anti-counterfeiting activity, 2018 and 2019 were banner years for eminent DC IP specialist Sterne Kessler. Particularly eye catching was its work for Juul, an innovator and market leader in the US vaporiser arena, which takes an aggressive stance on enforcement. The company has found an able running mate in Monica Riva Talley, chair of the trademark and brand protection practice. “Monica listens carefully to her clients, understands their concerns and is excellent at calibrating her tone with – and approach to – third parties appropriately. She is deeply thoughtful regarding trademark law and runs an impressive team that can handle a large workflow without ever letter matters drop.” She wins pitches left, right and centre and brings diverse groups of experts to talk to potential clients; it is clear that Sterne Kessler has a collaborative culture. The firm is also innovative and technologically sophisticated, with, for example, proprietary mobile apps, which it uses for time capture and docket clearing. Unrivalled in terms of design patents expertise, Tracy-Gene Durkin has a granular knowledge of trademark law to boot. She clears, protects, manages and enforces the marks of WP Company’s media properties, including The Washington Post. This involves clearing and protecting trademarks for innovative software products developed by the company’s research, experimentation and development team, which is crucial in the context of WP’s expansion. She has taken several best practices from the designs area to the trademark area, such as running the practice in a streamlined and efficient manner by employing well-trained and experienced paralegals.

Sughrue Mion PLLC

Sughrue is prolific in prosecution before the USPTO and internationally, maintaining one of the largest trademark filing practices of any US firm. No one-trick pony, it is also adept at counselling clients on brand strategy, conducting IP due diligence and negotiating licensing and other deals, as well as enforcement rights. The forceful boutique has “an absolute superstar” in Jody Haller Drake, a prosecution and TTAB proceedings ace who has testified in court as a USPTO procedure expert. One gold-ranked California peer describes her as “the best of the best in terms of detail-orientedness and big-picture thinking”. Another authority is former TTAB administrative trademark judge Gary Krugman, a heavyweight of USPTO practice and of the DC IP community.

Venable LLP

Positive developments have created a buzz around the Venable office right now. In late 2018, Rebecca Liebowitz and Andrew D Price were elevated to co-chairs of the trademark, copyright and licensing group, a role to which they have brought tremendous verve and energy. What is more, they are doing everything necessary – and much more – to uphold the firm’s tradition of excellence in portfolio management and brand development and optimisation. Both lawyers garner excellent feedback from the market: “Rebecca provides detailed and comprehensive counsel and support. She never puts a foot wrong or your rights at risk and she is a great pleasure to work with due to her exceptional diligence and expertise.” “Liebowitz engenders trust because she doesn’t sugar coat advice; she is very direct and commercial.” “Andrew is truly a first-rate attorney – frankly, one of the best there is. He has an excellent analytical mind and provides practical and helpful advice that seamlessly blends legal and business aspects. He is great to discuss global issues with.” Their work is wide ranging, interesting and topical; Liebowtiz has been demonstrating impressive versality acting for Perdue Farms, protecting and enforcing its rights, creating IP value, expanding its portfolio and advising on social media, advertising, marketing and sweepstakes matters. For Price, a major highlight has been managing the TIME’S UP brand in its high-profile global launch to address sexual harassment and gender inequality in the workplace. He has also been representing the American Bar Association. The dynamic duo take up their leadership positions alongside Justin Pierce, who chairs the IP division. Pierce is a former head of trademarks and brand protection at Sony Mobile, where he ran an award-winning team, and is therefore ideally placed to give commercially resonant advice. Another major development at the outfit has been its combination with Fitzpatrick Cella, which has brought amazing depth to the IP practice as a whole. The move saw Edmund Haughey join the ranks, giving the side a hugely experienced and versatile litigator for both its patent and trademark practices.

Winterfeldt IP Group

Recently established in October 2017, Winterfeldt IP has quickly earned a sterling reputation, debuting in the WTR 1000 for 2020. Clients profess to be “incredibly impressed by the strategic nature of the advice” that they receive and state that the group’s brand guidelines and licensing expertise are invaluable. “Winterfeldt IP is a truly trusted legal partner and it is a great comfort having your brands and trademark rights in its hands.” The star of the show is Brian Winterfeldt, who has made the boutique a go-to for serous ICANN and internet policy advice. “Brian has an incredible depth of knowledge regarding policy and politics and is completely up to date on all developments in this challenging area.” “He is forward thinking and hugely strategic and the team that he runs is excellent at its execution.” Also worth highlighting is his commitment to pro bono work; sources draw particular attention to his efforts on behalf of the LGBTQ+ community. Joining Brian in the rankings this year is Jennifer Gore, who arrived at the firm in January 2019. The former director of registrar services and industry engagement at ICANN has a knowledge base that brand owners are more keen than ever to tap into, encompassing data management, cybersecurity, regulatory compliance and enforcement.

Other recommended experts

Keith Barritt has a talent for resolving long-running trademark disputes, with all parties walking away happy. He is also an expert on pharmaceutical trademarks. More broadly, the Fish & Richardson lawyer does just about everything relating to brands – and does it well. “Peter Brody is a highly skilled first-chair litigator and superb team leader. He has an excellent track record and is very cost-effective, too.” The Ropes & Gray partner is a go-to on pharmaceutical trademark issues. with direct-to-consumer advertising of prescription drugs a growing trend in the United States, companies are calling him in to advise on advertising strategy. Through this type of counselling, he stays close – more so than other litigators whose relationships tend to be fairly episodic. “Lisa Dunner is an incredibly smart trademark lawyer who is great to interact with on all levels.” Dunner Law’s managing partner stands out in part for her extensive extra-curricular engagement in trademark practice; she has served as chair of the ABA IP section and as a member of the USPTO public advisory committee. Clients go to her for well-informed counsel regarding brand strategy. That Roger Furey has a trademark and IP background and serves as firm chair shows how critical the brands practice is to Katten. Patrick Jennings is enthusiastically endorsed by foreign associates. During the WTR 1000 2020 research cycle, the Pillsbury Winthrop Shaw Pittman lawyer picked up spontaneous recommendations from Brazil, Canada, Israel and the United Kingdom. “Pat gives quick, very specific advice that goes to the heart of matters.” “He is extremely commercial in his approach and very effective as a former USPTO examiner.” Since moving from Jones Day to K&L Gates in the spring of 2018, Susan Kayser has settled in well. The nationally reputed litigator and counsellor has a lot going on but never drops the ball. Recently, she successfully represented Procter & Gamble in defending the exclusivity of billion-dollar brand GILLETTE. She also continues to serve as primary US trademark and copyright counsel for Abercrombie & Fitch. Time and again, Karol Kepchar of Akin Gump Strauss Hauer & Feld has delivered in TTAB proceedings. Outside her oppositions and cancellation practice, she undertakes litigation and licensing work, and is a noted expert on cybersquatting. Lathrop GPM lawyer Sheldon Klein is distinguished by the breadth of his expertise, which encompasses trademark, copyright and unfair competition law, as well as advertising and social media. Moreover, he works dextrously across the contentious/non-contentious divide, meaning that he can handle anything a brand owner needs. His disputes practice has been busy of late; he secured a permanent injunction for Mason-Dixon Polling & Strategic Consulting against MD Strategic Consulting in an infringement case concerning a federal service mark and has been representing International Dairy Queen in an opposition to protect its BLIZZARD mark. Joseph Lewis, a partner in Barnes & Thornburg’s Pennsylvania Avenue, DC office, serves the portfolio needs of some prestigious names, including Le Cordon Bleu International. Testament to the quality of his work and service, as well as his valued business thinking, his relationships are invariably long term. Timothy Lockhart takes the reins of Willcox & Savage’s trademark practice. Active globally through an extended network of carefully selected foreign associates, he maintains a thoroughly international counselling, prosecution, litigation and licensing set. “Tim is a business-oriented attorney who looks to make things happen. He is time and budget sensitive and very proactive, too; he is not just sitting at a desk waiting for you to come back to him, but rather provides a special level of care without it affecting cost. Tim is someone you can trust to really add value.” Deborah Lodge is a key member of Squire Patton Boggs’s integrated international trademark practice. Her combination of trademark, internet and privacy expertise is compelling for brands that want a single contact to cover all the bases. She acts for Chuck Norris on global licensing and merchandising matters. John McElwaine’s business savvy and practical approach makes him a tremendous resource for any CEO. “He is a trusted adviser you can call up to discuss anything with, whether related to trademark and copyright law or not. His firm, Nelson Mullins, has many excellent attorneys and great resources in all legal fields, and John has always been great at identifying the best people to assist clients in other areas when needed. He has tremendous integrity – there is no finer person you can work with.” Hae Park-Suk is steeped in USPTO practice; before entering the private sphere, she interned at the trademark office, then served as a law clerk there, and finally qualified as a trademark examiner. The Nixon & Vanderhye lawyer gets rave reviews: “Hae is incredible and the ideal partner. Her responses and opinions are comprehensive, clearly written and informative as to risk. Her turnaround time is amazing and she is always available to answer any questions; her patience and knowledge are evident when explaining difficult points.” “John Rynkiewicz is one of the most thorough attorneys around. His command of trademark subject matter and commitment to excellent service are first rate. He is more than just a great technician – he is a practical and strategic adviser to evolving businesses.” He practises at Arnold & Porter. Potomac Law Group’s Janet Satterthwaite is as versatile as trademark lawyers come; she gives holistic advice throughout all phases of the brand lifecycle. Counselling clients on internet and domain name matters is one of her strongest niches. She was recently joined by gold-rated Julia Anne Matheson, a “big name in the industry who is really down to earth and someone you absolutely want in your corner”. “Julia is extremely trustworthy and excellent all-round.” A muscular national trademark outfit, Davis Wright Tremaine has a strong presence in the capital – courtesy of David Silverman. The communications industry, including radio and TV broadcasting, is his thing, acting for the likes of Shenandoah Telecommunications Company and the Golf Channel with respect to clearance, prosecution and enforcement. Mark Tidman stays current on legal and business developments affecting a range of markets and dispenses forward-looking counsel that helps patrons stay ahead of trends. The firmwide chair of Baker & Hostetler’s esteemed IP group, he practices in all areas of trademarks for a diverse company following. Steven Wadyka is an engine of Greenberg Traurig’s enforcement and anti-counterfeiting practice. He has rendered vital support to Underwriters Laboratories and Eaton Corporation and is excellent on a strategic and resource management level – a team player who links up well with other GT professionals such as Chicago-based Mark Galis. Stacey Watson has unbeatable in-house experience on her CV, having served as trademark counsel to both Walmart Stores and Verisign. Previously working at large firms, she now takes the lead at Markery Law – an all-female attorney boutique with a focus on prosecution and portfolio management. In July 2019 Brown Rudnick unveiled a high-profile trademark signing in DC: Peter Willsey, who moved from Cooley. A dextrous all-rounder when it comes to brands, Willsey takes up his position as chair of the global trademark, copyright and advertising group.

Individuals: enforcement and litigation

  • Danny M Awdeh - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Edward T Colbert - Hunton Andrews Kurth LLP
  • John J Dabney - McDermott Will & Emery
  • John G Froemming - Jones Day
  • David M Kelly - Kelly IP 
  • Anthony V Lupo - Arent Fox LLP
  • John C McElwaine - Nelson Mullins Riley & Scarborough LLP
  • Linda K McLeod - Kelly IP 
  • Douglas A Rettew - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Mark Sommers - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Fabricio Vayra - Perkins Coie LLP
  • Stephanie Bald - Kelly IP 
  • James L Bikoff - Smith, Gambrell & Russell, LLP
  • Peter M Brody - Ropes & Gray LLP
  • Ann K Ford - DLA Piper
  • Michael A Grow - Arent Fox LLP
  • B Brett Heavner - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Howard S Hogan - Gibson Dunn & Crutcher LLP
  • Susan M Kayser - K&L Gates LLP
  • Naresh Kilaru - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Gary D Krugman - Sughrue Mion PLLC
  • Rob Litowitz - Kelly IP 
  • Leo M Loughlin - Rothwell, Figg, Ernst & Manbeck, PC
  • David J Mayberry - Kilpatrick Townsend & Stockton LLP
  • John Gary Maynard III - Hunton Andrews Kurth LLP
  • William G Pecau - Steptoe & Johnson LLP
  • Peter J Riebling - Riebling IP PLLC 
  • Janet F Satterthwaite - Potomac Law Group PLLC
  • Anna Kurian Shaw - Hogan Lovells
  • Tara M Vold - Pirkey Barber PLLC
  • Steven J Wadyka Jr - Greenberg Traurig LLP
  • Peter J Willsey - Brown Rudnick LLP
  • Robert W Zelnick - McDermott Will & Emery
  • Michael J Allan - Steptoe & Johnson LLP
  • James R Davis II - Arent Fox LLP
  • Margaret A Esquenet - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Kevin Fee - Morgan Lewis & Bockius LLP
  • Eric T Fingerhut - Dykema Gossett PLLC
  • Jennifer Fraser - Dykema Gossett PLLC
  • Mary Hallerman - McDermott Will & Emery
  • Rachel M Hofstatter - Steptoe & Johnson LLP
  • Brendan J Hughes - Cooley LLP
  • Karol A Kepchar - Akin Gump Strauss Hauer & Feld LLP
  • Sheldon H Klein - Lathrop GPM
  • Joseph D Lewis - Barnes & Thornburg LLP
  • Bryce J Maynard - Buchanan Ingersoll & Rooney PC
  • Bruce A McDonald - Smith, Gambrell & Russell, LLP
  • Anna Naydonov - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Justin Pierce - Venable LLP 
  • Anita B Polott - Morgan Lewis & Bockius LLP
  • Susan A Smith - Hunton Andrews Kurth LLP
  • Mark Tidman - Baker & Hostetler LLP

Individuals: prosecution and strategy

  • Danny M Awdeh - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Jody Haller Drake - Sughrue Mion PLLC
  • Patrick J Jennings - Pillsbury Winthrop Shaw Pittman LLP
  • Lynn M Jordan - Kelly IP 
  • David M Kelly - Kelly IP 
  • Paul F Kilmer - Holland & Knight LLP
  • Anthony V Lupo - Arent Fox LLP
  • Timothy Lyden - Hogan Lovells
  • Julia Anne Matheson - Potomac Law Group PLLC 
  • John C McElwaine - Nelson Mullins Riley & Scarborough LLP
  • Linda K McLeod - Kelly IP 
  • Andrew D Price - Venable LLP 
  • Mark Sommers - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Brian J Winterfeldt - Winterfeldt IP Group
  • James L Bikoff - Smith, Gambrell & Russell, LLP
  • Karen Butcher - Morgan Lewis & Bockius LLP
  • Tracy-Gene Durkin - Sterne, Kessler, Goldstein & Fox PLLC 
  • Eric T Fingerhut - Dykema Gossett PLLC
  • Ricardo Fischer - Arent Fox LLP
  • Ann K Ford - DLA Piper
  • Jennifer Fraser - Dykema Gossett PLLC
  • Joshua Gerben - Gerben Law Firm PLLC
  • B Brett Heavner - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Susan M Kayser - K&L Gates LLP
  • Richard Y Kim - McDermott Will & Emery
  • Gary D Krugman - Sughrue Mion PLLC
  • Rebecca Liebowitz - Venable LLP
  • Timothy J Lockhart - Willcox & Savage, PC
  • Leo M Loughlin - Rothwell, Figg, Ernst & Manbeck, PC
  • David J Mayberry - Kilpatrick Townsend & Stockton LLP
  • John Gary Maynard III - Hunton Andrews Kurth LLP
  • Christopher Norton - Arent Fox LLP
  • Hae Park-Suk - Nixon & Vanderhye PC
  • Allisen Pawlenty-Altman - Kilpatrick Townsend & Stockton LLP
  • Justin Pierce - Venable LLP 
  • Douglas A Rettew - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Peter J Riebling - Riebling IP PLLC 
  • John P Rynkiewicz - Arnold & Porter
  • Janet F Satterthwaite - Potomac Law Group PLLC
  • Monica Riva Talley - Sterne, Kessler, Goldstein & Fox PLLC 
  • Fabricio Vayra - Perkins Coie LLP
  • Tara M Vold - Pirkey Barber PLLC
  • Peter J Willsey - Brown Rudnick LLP
  • Thomas E Zutic - DLA Piper
  • Kristin Altoff - Morgan Lewis & Bockius LLP
  • Keith A Barritt - Fish & Richardson
  • Roberta S Bren - Muncy, Geissler, Olds & Lowe, PC
  • Katherine Califa - Foley & Lardner LLP
  • Cristina Carvalho - Arent Fox LLP
  • Ryan Compton - DLA Piper
  • Jeffrey L Costellia - Nixon Peabody LLP
  • James R Davis II - Arent Fox LLP
  • Jennifer L Dean - Drinker Biddle & Reath LLP
  • Lisa A Dunner - Dunner Law PLLC
  • Christopher P Foley - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Roger P Furey - Katten Muchin Rosenman LLP
  • Marsha G Gentner - Dykema Gossett PLLC
  • Jennifer Gore - Winterfeldt IP Group
  • Dana Gross - Morgan Lewis & Bockius LLP
  • Edmund J Haughey III - Venable LLP
  • Christie Baty Hudgins - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Brendan J Hughes - Cooley LLP
  • Bassam N Ibrahim - Buchanan Ingersoll & Rooney PC
  • Jeffrey H Kaufman - Muncy, Geissler, Olds & Lowe, PC
  • Sheldon H Klein - Lathrop GPM
  • Joseph D Lewis - Barnes & Thornburg LLP
  • Deborah M Lodge - Squire Patton Boggs
  • David L May - Nixon Peabody LLP
  • Bryce J Maynard - Buchanan Ingersoll & Rooney PC
  • Rebecca McDougall - Morgan Lewis & Bockius LLP
  • Nicole Meyer - Dickinson Wright 
  • Daniel Neustadt - Holland & Knight LLP
  • Eric Perrott - Gerben Law Firm PLLC
  • Norm Rich - Foley & Lardner LLP
  • David M Silverman - Davis Wright Tremaine LLP
  • Susan A Smith - Hunton Andrews Kurth LLP
  • Mark Tidman - Baker & Hostetler LLP
  • Stacey Watson - Markery Law LLC