United States: DC Metro Area

Firms: enforcement and litigation

Firms: prosecution and strategy

Arent Fox LLP

Garnering plaudits from sources across the United States and much further afield, Arent Fox cuts a dash on the international brand protection stage. Among the full-service firms, it has one of the largest, best-resourced and most sophisticated trademark teams. DC is an epicentre of its offering and the base of operations for numerous high-profile names, including Anthony Lupo, Michael Grow, Ricardo Fischer, Cristina Carvalho, Christopher Norton and James Davis. In the entertainment, fashion and technology spheres, Lupo is a “true maestro who thinks outside the box and takes pride in providing the best possible service to his clients”. He is looked up to by many as a mentor; as is IP all-rounder Grow, whom a former trainee describes as “one of the best there is”. Fischer provides strong leadership to the trademark group and is an international pathfinder for global brands in the retail and fashion and food and beverage industries; he is a font of insight and analysis regarding Latin American practice, having experienced it first hand as a partner in Venezuela. Managing partner Carvalho is the go-to for top Brazilian companies as well as global brand leaders such as Mars; she has perfected the art of prosecuting marks and managing portfolios across borders. So too Norton, whose efficiency and innovativeness in the practice stand out. Davis gives the firm a potent weapon in the fight against counterfeiters.

Buchanan Ingersoll & Rooney PC

In tending to some 11,000-plus active registrations, Buchanan Ingersoll & Rooney has cultivated extremely well-rounded trademark capabilities; when infringement headaches loom or licensing opportunities arise, for example, it has strategies at the ready for smooth resolution. Worthy of special mention is the ensemble’s proficiency in coordinating brand protection and enforcement initiatives in China. Excellent in his role as trademark team captain, IP section co-chair and trusted counsellor, Bassam Ibrahim comes in for enthusiastic praise: “Sam is extremely responsive and exceptionally helpful in navigating domestic and international trademark issues. He always meets deadlines and gives neat, concise and valuable opinions.” He collaborates frequently with Bryce Maynard, whose principal focus is on litigation, but who does a phenomenal job as an all-round protector. They keep a colourful catalogue of clients – including private equity, consumer products, food and beverages, furniture and energy names, and even a large religious organisation – happy.

Cooley LLP

More than 1,000 companies – including start-ups and worldwide industry leaders – find Cooley’s global trademark support package to be compelling. With rare efficiency, its US and Europe-based practitioners see to the effective care of some 24,500 marks, in the course of which they deal swiftly and decisively with any and all disputes. It is an impressive achievement that this has all gone undisrupted despite the recent reconfiguration of its team, which saw the addition of Jeff Greene in New York and his appointment as head of the global practice. Much of the credit for the seamlessness of this operation must go to Brendan Hughes, who paces the DC contingent. In his own practice too, he has been performing at a high level, as glowing client feedback attests: “Brendan has great judgement and expertise, and can be trusted completely to handle matters – with him, you never have to be concerned about missed issues, facts or deadlines. A smart lawyer with great attention to detail as well as a good business person, he takes a pragmatic approach to resolving conflicts.” Lately he has served as lead trial counsel defending dating app Bumble in a major IP action brought by Tinder owner Match Group in Texas; and for CBD industry player Charlotte’s Web in a California case against AAXLL Supply concerning unauthorised name use and false advertising on the latter’s part. Joining him in the guide this year is special counsel Susan Christoff, who brings incisive expertise on the selection, clearance, adoption, use and management of trademarks to the mix.

Dickinson Wright 

WTR 1000-recommended for prosecution and strategy and enforcement and litigation, Dickinson Wright presents a comprehensive trademark offering in the capital. Better thought of as a strong national platform, though, it has strength in depth in multiple offices and a culture of collaboration that ensures everyone pulls in the same direction: towards the complete satisfaction of clients’ total brand needs. The first name on the team sheet in DC is Nicole Meyer; active internationally through an extended network of reliable contacts, she takes care of worldwide portfolio management with the minimum of fuss. “Nicole understands different legal regimes and is great to have a free exchange of ideas with on international matters. She understands the finer points of the US examination system, which can be fraught with challenges, and provides pragmatic and commercial advice while keeping a keen eye on costs.” Foreign correspondents appreciate this; as do her direct clients, including global software-as-a-service entity Cvent, whose marks she protects and enforces robustly and polices watchfully. She and Jonathan Redway make a great pairing, with Redway supplying deep contentious nous born of many years as a trial lawyer.

DLA Piper

DLA Piper has cracked the code when it comes to IP value creation, with an intuitive faculty for developing, strengthening and monetising companies’ brand identities globally. In a notable development for the DC office and the wider IP group, Ann Ford was announced at the start of 2020 as sole US chair and global co-chair of the IP and technology practice, which is a measure of her ability as both a lawyer and manager; a first port of call for many looking to get the most out of DLA Piper, she was also appointed to the global board in June 2020. Another top name for the contact book is Thomas Zutic, who chairs the local trademark, copyright and media group. He and Ryan Compton practise IP law with a broad compass, but have a forte for complex licensing.

Dykema Gossett PLLC

Not just brilliant on substantive trademark law, Dykema’s IP specialists are worldly wise about brand and business issues more broadly. Among their number are former examiners, policy experts, legal tech whizzes and former in-house counsel, giving the team a diverse composition that translates into a multi-faceted approach to problem solving. Harnessing this effectively in her role as trademark group chair is Jennifer Fraser, whose maturity as a professional is reflected in her pragmatic mindset and assiduous commitment to staying up to date on the legal and industry developments that affect her clients. A winning representative in TTAB proceedings, she has lately continued her successful enforcement of the well-known FALKE house mark for clothing, working alongside senior counsel Marsha Gentner, one of the set’s top global portfolio managers. Eric Fingerhut also contributes much to the vitality of the practice, flexing a refined knowledge of fast-evolving topics, including rights protection on the Internet and domain name strategy and dispute resolution. His recent highlights include a victory for cloud hosting market Holo Limited in an enterprise-threatening trademark suit brought by 19 Tao Vega in the Northern District of California.

Faegre Drinker Biddle & Reath LLP

With 1,300 attorneys and other professionals on deck in 22 locations in the United States, the United Kingdom and China, Faegre Drinker Biddle is in pole position to handle the full range of commercial legal issues on an international scale. Placing brands firmly in their business context, its trademark, copyright, advertising and media practitioners – over 30 professionals at last count – support in-house brand managers in many meaningful ways. Jennifer Dean makes the DC office a destination of choice for quality counsel: “She has vast experience in international brand matters and is a thorough, practical lawyer with a gift for making complex legal processes easily understood by non-experts. Her customer service methods and standards are the best and she really becomes part of your business team more, than just an external representative.”

Finnegan, Henderson, Farabow, Garrett & Dunner LLP 

Measured by one of the best indicators of law firm performance – client satisfaction – it is clear that Finnegan is performing above and beyond even the highest expectations. The eminent boutique is prolific and proficient in all areas of trademark protection and enforcement, without a single chink in its armour. Setting the standard are trademark, copyright and advertising group leader Danny Awdeh and fellow gold-ranked practitioners Douglas Rettew and Mark Sommers, each of whom comes in for effusive praise. “Danny is one of the best trademark lawyers and, actively involved in high-profile policy matters, is working for the betterment of the protection landscape not just for his clients, but for all brand owners in the United States. He tailors strategies to meet specific needs and aligns his advice with clients’ business goals.” “Doug is about as deeply knowledgeable and versatile as they come, and has an engaging manner and personality that set him apart and give him an edge when making presentations to juries.” “Mark blends formidable legal skills with plain street-smarts. He is seasoned and comfortable in the court, and can distil down complicated issues and facts and then smoothly present them, so they are simply understood, reasoned and decided.” One pleasing aspect of Finnegan is the extent to which it lives important values such as diversity and inclusivity; there’s certainly no shortage of outstanding female lawyers on the roster, with Anna Naydonov, Margaret Esquenet and Christie Baty Hudgins all vital engines of trademark success. Naydonov moves up a tier to silver on the enforcement side and debuts on the prosecution and strategy table, reflecting both her quality and ambidexterity. She takes point on the firm’s relationship with Unilever, advising the company on strategic and enforcement matters associated with some of its top brands – work which keeps her mind sharp on issues such as sustainability and social media. Esquenet also moves up in the rankings, thanks to polished performances for prestigious patrons such as the Academy of Television Arts & Sciences, for which she has litigated several actions regarding the EMMY trademark at the TTAB and the China Trademark Office. Hudgins plays a key role in Finnegan’s prosecution practice thanks to her “thorough analyses and expertise growing trademark portfolios internationally”. There’s an abundance of talent at the firm, a deep bench being one of its defining characteristics. Litigation-focused Brett Heavner is “practical, proactive, responsive and results oriented, as well as a clear communicator”. “He takes the time to understand your business and products, and is commercially oriented with an added facility for thinking outside the box.” Naresh Kilaru is a Swiss Army knife of a trademark lawyer, who applies the right skills to the right tasks in an impressive display of efficiency. Together with Sommers and Naydonov, he is representing watch maker Daniel Wellington on major digital marketplace infringement matters. A true team player, he also links up with IP renaissance man Christopher Foley to manage Caterpillar’s sizeable international trademark portfolio.

Foley & Lardner LLP

To give a sense of the scale of its trademark offering, Foley & Lardner has, in the last five years, acted for more than 1,250 clients in connection with clearance and registration efforts in some 100-plus countries; filed nearly 10,000 trademark applications; handled close to 1,500 administrative disputes; and secured over 1,000 global domain names: this is clearly a practice to which it is deeply committed. Responsible for a significant proportion of that activity are DC anchors Katherine Califa and Norm Rich. Califa does “high-quality, clean work on clearance and enforcement and everything in between, which you never have to double check”. “She is an extremely articulate communicator and has a calm disposition, which makes her very effective in negotiations and discussions with adverse parties.” Reflecting the value of Rich’s tutelage, Califa was minted as a partner in February 2020. Not just an invaluable mentor, Rich stands out for his commercial acumen and is heavily invested in clients’ success. Forming a dynamic pairing, they handle all trademark counselling, prosecution and enforcement matters worldwide for Alkermes and Global Payments, among others.

Gerben Law Firm PLLC

“Brilliant in every respect”, leanly run, two-partner outfit Gerben Law Firm – which filed over 1,000 trademark applications in 2019 – prosecutes with an unstinting dedication to quality, but with equal care for efficiency; its clients get optimum results without the excessive bills that are so often a feature at bigger firms. Taking the lead is Joshua Gerben, whose track record seeing applications through to registration and representing parties in TTAB proceedings is pristine. His partner Eric Perrott possesses incredible substantive trademark law knowledge, but isn’t just a boffin; he sees all sides of a matter and applies his sparkling intellect to answer the practical question “How can we do this?” – not “Can we do this?”

Gibson Dunn & Crutcher LLP

High-stakes disputes involving the most sophisticated IP issues are meat and drink to Gibson Dunn. In patent, trademark and other conflicts, its tenacious trial lawyers present resonantly and conduct textbook-worthy cross-examinations to secure momentous victories for clients. A creative but common sense-led advocate, Howard Hogan is superb at framing strategies for complex cases at both the trial and appellate stages. Wins he has recently notched up include the denial of a preliminary injunction motion filed by Outlaw Beverage against client A Shoc Beverage; the expedited schedule this was litigated on posed no problem for Hogan and Gibson Dunn, accustomed as they are to taking swift, decisive action.

Hogan Lovells

An elite player in the international IP community, Hogan Lovells’ enviable global capabilities make it a perfect fit for large-scale cross-border brand protection, acquisition, monetisation and enforcement assignments. Northern Virginia is an important location in its network, as home to WTR 1000 gold-ranked Timothy Lyden – a “wonderful and collegial lawyer” who is “absolutely outstanding at prosecution”. In nearby DC, Anna Kurian Shaw flies the Hogan Lovells flag high in hotly contentious trademark, unfair competition and copyright litigations. She demonstrates her finely whetted trial skills in court, ITC and TTAB proceedings, and shines in cases marked by deep complexities in their points of law.

Holland & Knight LLP

“Holland & Knight provides first-class trademark clearance, filing, prosecution and maintenance services, as well as enforcement support domestically and worldwide.” A key draw for brand-rich multinationals is Paul Kilmer, an “extremely smart and impressive” lawyer with a global view cultivated through an illustrious career as a practitioner, IP mission delegate and educator. Long-term patrons love him not only because he is “very practical as a legal adviser” and has “successfully resolved many hundreds of trademark infringement matters worldwide”, but also because he is “careful with expenses and mindful of clients’ cost concerns”. He has an insatiable curiosity with regard to trademark law and its development, and lives and breathes the practice. Colleague and musician Daniel Neustadt has a first-hand understanding of the creative process, which chimes with clients, whose needs, desires and values he really gets. Also popular is his style of communication, which eschews legalese in favour of plain English. Like Kilmer, he has an investigative streak which helps him find obstacle-free avenues to rights protection.

Hunton Andrews Kurth LLP

A diverse array of challenging international trademark instructions keeps the team at Hunton Andrews Kurth sharp and ready for anything that a brand owner can throw at it. Risk-smart in advising on trademark selection; precise and efficient in preparing, filing and registering marks; organised and technologically adept at managing portfolios; and dynamic through all phases of litigation, the team in DC impresses at every turn. Garnering special praise from the market this year are Susan Smith and Edward Colbert – the former a high-calibre all-rounder, the latter a sure trial hand. “One of the best portfolio partners out there, Susan is extremely personable and a talented and practical lawyer. She is wonderfully cost-effective and doesn’t engage in busy work; she runs things leanly and doesn’t overstaff matters, thereby further avoiding unnecessary billings.” “Edward is smart, reliable, diligent, creative, thorough and experienced – and always has solutions ready. Put more simply, he gets results.” They always have interesting files to tend to and together act for the US Olympic Committee on prosecution, strategic counselling and enforcement mandates; Colbert also represents William Grant & Sons in numerous cases brought by Russian government agencies seeking to take control of the STOLICHNAYA and STOLI trademarks in the United States. They are not the only big names here: IP group co-head John Gary Maynard also enjoys high standing. With expertise in brand management, litigation, online enforcement, domain names and much more, he covers so much ground for clients. Cut from similar cloth, versatile Stephen Demm is entering primetime and joins his colleagues in the WTR 1000 for the first time this year. Neither he nor Maynard sees hard dividing lines between different aspects of trademark practice; they find synergistic ways in which clients can protect their brands, thereby adding tremendous value.

Jones Day

A repository of unshakeable trust for brand owners when infringement issues loom large over their business, Jones Day has a confidence-inspiring track record of putting to bed even the trickiest disputes. The set’s trial readiness creates a threat value that helps to realise the ideal conditions for fruitful settlement; but whether advocacy or negotiation is required, the outcomes driven by John Froemming and his colleagues are invariably positive. Froemming takes full advantage of his 35 years in battle and has proven himself virtually unbeatable at trial. The WTR 1000 also recognises Froemming’s right hand, Jessica Bradley, for the first time this year. “She has an exceptional skillset” for litigating trademark, trade dress, false advertising, unfair competition and copyright cases, and is a vital cog in Jones Day’s sophisticated clearance, prosecution and enforcement practice.

Kelly IP 

Rights holders line up to sing the praises of Kelly IP, an elite boutique that makes it its mission to provide a flexible, agile and cost-effective service without comprising on quality. A collaborative approach proves crucial in this regard – the practitioners here share work freely without stressing about compensation formulas, so clients get the best available skills for their unique assignments. Setting the tone in this regard are founding partners David M Kelly, Rob Litowitz, Linda K McLeod, Lynn M Jordan and Stephanie Bald, who collectively dispense a full-bodied brands service. Kelly is hailed as a cutting-edge strategist who is “prudent and sagacious in his counsel” and a top litigator “who is never rattled and always stays calm”. Brilliant advocate Litowitz has an “excellent ability to lay out clear paths forward and gives concise opinions that afford clients a 360-degree view of their issues, thereby enabling easy decision making”. “He thinks forward and navigates complex matters with skill.” McLeod has the distinction of being a leading and highly decorated TTAB and appellate lawyer; she also plays a key role in the firm as a mentor. Cited as a “leading authority in the entertainment and media field”, Jordan is “unbeatable for her combination of expertise, commerciality, pragmatism, pricing, and rapid turnaround”. “Stephanie Bald has a creative mind that she applies very effectively to novel and complex legal issues. At the same time, she is very conscious of business and budgeting realities, and always keeps these in mind.” The firm has a new face in the WTR 1000 this year in Jason Joyal, a partner who is “deeply knowledgeable about TTAB precedents” and a tremendous brief writer. It is hard to choose from among the team’s recent highlights, as they all have something special about them, but the work being done for Fortune 500 fintech company Fidelity National Information Services stands out for its breadth and scope: here, Kelly, Jordan and Joyal have been handling the company’s growing global portfolio, aggressively enforcing its marks at the TTAB and handling dozens of oppositions internationally. Different configurations of team members undertake similarly wide-ranging roles for a host of famous names, Harley-Davidson, Expedia and Disney among them.

Kilpatrick Townsend & Stockton LLP

The trademark practice at Kilpatrick Townsend is one of the largest and best in the United States; managing some 80,000-plus trademark registrations and applications worldwide, it is also a potent force on the global scene. Zooming in on the DC office brings prosecution and portfolio management star Allisen Pawlenty into view as one of the best of the firm’s 110-plus trademark and copyright experts. “Alli is a wonderful attorney with a broad arsenal of positive skills and attributes. Even in a crowded field of overachievers, she stands out for her ability to manage a near-overwhelming number of matters simultaneously; unflappable by nature, she does it with grace and style. She is an essential ally to her clients and a delightful collaborator for international associates.” Another big-hitter locally, David Mayberry serves as co-leader of the trademark and copyright team; assembling the right people for different client matters, he manages resources with rare acuity. In his own practice, he litigates with aplomb, but is also a good utility infielder when it comes to brand protection.

McDermott Will & Emery

McDermott Will & Emery’s global IP group is comprised of more than 100 experts on three continents, 20 of whom dedicate themselves exclusively to trademarks. Blue-chip brands entrust it with their most important trademark and brand issues, secure in the knowledge of receiving consistent advice along with cogent strategic action plans across borders. Its rainmaker in the US capital is Robert Zelnick, who enjoys a glowing reputation among high-ranking peers: “Robert is a gentleman and a scholar, and has a wonderful way of developing trust with clients quickly. He’s a great trial lawyer as well as day-to-day adviser.” He links up with Christina Martini in the firm’s Chicago office to support Amgen on trademark matters, in the course of which he has developed a knack for overcoming regulatory hurdles faced by the company.

Morgan Lewis & Bockius LLP

Morgan Lewis treats highly valuable brand assets with care, tact and skill, whether managing them globally, litigating them or negotiating over them in deal settings. Its trademark practice is well-developed, rigorous and fully comprehensive in a way that is uncommon among full-service outfits. Attesting to this is the large number of individuals awarded WTR 1000 rankings, including six from the DC office alone – a number matched by only one other firm and bested by only one other. First among equals is trademark and copyright group leader Karen Butcher, a strategist who has carved a niche in IP licensing and ownership structuring. She manages the portfolio of the largest health benefits company in the United States, Anthem, alongside Anita Polott and Dana Gross, in one of many fine displays of effective teamwork. DC IP co-head Polott is well-rounded in terms of her skillset and industry knowledge, and is warmly appreciated for her efficiency. Transactional IP whizz Gross demonstrates amazing attention to detail along with precision drafting skills. Butcher, Gross and Kristin Altoff combine for the benefit of Edgewell Personal Care, whose trademark and domain name matters they handle worldwide. Altoff has played a key role in mentoring Gross and others, and is a bedrock of the group’s success; she helps rights holders in countless ways and has an encyclopaedic knowledge of international trademark law. So too Rebecca McDougall, a lawyer who “cares so much for her clients and won’t sleep until a project is done”. Those patrons include Diageo, which she supports with Butcher and Altoff on clearance, filings and transactions. Kevin Fee is the go-to for big-ticket litigation; the stakes are certainly high in a case he is handling for the American Society for Testing and Materials (ASTM) against Public Resource arising from the latter’s internet posting of ASTM’s copyrighted standards using its trademarks.

Muncy, Geissler, Olds & Lowe, PC

Best known for its technical aptitude and robust patent practice, Muncy, Geissler, Olds & Lowe also navigates trademark issues with steady hand. Especially noted for its prosecution prowess, the set efficiently and cost-effectively secures all the protections that clients need. Pivotal to the brands practice are Roberta Bren and Jeffrey Kaufman, two trademark and copyright devotees with almost 60 years in the game between them. Bren has a practical mindset and gives pragmatic advice that companies can use immediately and without difficulty. Kaufman is an authority on brand protection and enforcement – subjects on which he has accumulated infinite wisdom over the course of a long career which started as a USPTO examiner and took in the role of managing partner of a top boutique; he joined Muncy, Geissler, Olds & Lowe in 2016.

Nixon & Vanderhye PC 

In recognition of its sterling global clearance, prosecution and enforcement work for multinationals and referral popularity among top law firms around the world, Nixon & Vanderhye debuts in the WTR 1000 DC rankings for 2021. In Hae Park-Suk, it has “not only an exceptional expert, but a warm-hearted person who treats everyone with equal courtesy”. “Her responses are comprehensive, informative and clearly written, so that those not well versed in trademark law can grasp the meaning of her research; she sets forth the risks involve – low, medium and high – which is so helpful and important in terms of knowing how to proceed. She is always available and willing to discuss questions, and shows great patience and knowledge when explaining difficult points of law. Moreover, her turnaround time is extraordinary.” “She conducts thorough searches, gives profound suggestions for overcoming objections along with strong-minded, creative solutions and dependable strategic advice, and is extremely committed to servicing her clients’ needs.”

Nixon Peabody LLP

Nixon Peabody’s trademark lawyers have a strong grip on the detail of their work, but never get lost in it – they see the bigger commercial picture and excel at designing overarching brand strategies that are fundamental to the achievement of business objectives. Many premier companies call on Jeffrey Costellia and David May in the DC office for this reason. Alibaba Group, for example, instructs the former to assist with the management of its US portfolio and provide counselling services. Costellia is a Nixon Peabody stalwart, having joined the firm over 20 years ago; since then, he has been instrumental to the success of both its patent and trademark practices. He’s a practically minded, balanced lawyer who gets things done. May, who arrived at the firm at the same time, has a creative approach which serves him well in complex prosecution at the USPTO and in trademark offices around the world. Details of his client relationships can’t be disclosed, but he acts for an internationally popular restaurant chain and a top golf course, among many others.

Perkins Coie LLP

One of Perkins Coie’s USPs in the trademark area is its cutting-insight on internet policy issues as they relate to emerging business models, new technologies, digital media and online brand enforcement. In Fabricio Vayra, the firm has one of the world’s foremost authorities in this area and a lawyer who brings energy and dynamism to every engagement. “Fab always delivers top-quality work product and can efficiently handle high-volume, time-sensitive work. Client focused and business minded, he develops a deep understanding of the companies he represents and their products, enabling him to give commercial advice alongside dependable legal analysis. He is open to feedback, too, so you don’t feel like the relationship is a one-way street.” Not just an internet law thought leader, Vayra is also a well-rounded trademark lawyer who assists industry-dominant companies with all aspects of brand clearance, prosecution and maintenance.

Pirkey Barber PLLC

One of the country’s biggest and best trademark, copyright and unfair competition boutiques, Pirkey Barber is a cornerstone of brand success for many eminent companies. Though most its experts reside in its Austin office, the firm maintains a strong presence in the DC area, where Tara Vold is based. Coordinating multi-layered protection efforts in a way that minimises the risks of third-party trademark issues and keeps costs down is something that she does extremely well.

Potomac Law Group PLLC 

Modern, dynamic, lean, agile, cost-effective – and different – are all accurate descriptors of innovative full-service firm Potomac Law Group. In the trademark area, it has assembled an all-star line-up of hands-on, senior practitioners who offer a stellar service to the likes of Carlsberg Group, Hunter Boot, Twitter and Starbucks. For the first two of those, Janet F Satterthwaite is the key relationship partner. An “honourable trademark lawyer who advocates well”, trademark team chair Satterthwaite is a smooth operator in every facet of the practice. For Twitter and Starbucks, Julia Anne Matheson is the go-to. A veritable superstar and “fabulous international prosecution and strategy expert”, Matheson has considerably amped up the practice since joining at the start of 2020. Other names to keep on the radar are Bonny B Plosker and Todd Bontemps, who make deserved debuts in the WTR 1000 this year. Plosker’s in-house experience – she previously served as senior trademark counsel at Turner Broadcasting System and in-house counsel at MTV – grants her an insider’s perspective on clients’ issues. Bontemps is also pedigreed, having practised at Cooley for nearly 20 years and worked as a member of BP’s in-house team in London. He has a refined understanding of trademark protection, licensing, infringement and counterfeiting issues.

Riebling IP PLLC 

According to one client, Riebling IP gives “high-grade, clear and unequivocal strategic trademark counsel, and does so cost-effectively” – a persuasive combination that underpins its growing competitive edge when it comes to large-scale global portfolio management and contentious proceedings. The genius behind the practice – which has attracted some of the most famous brands in the world – is Peter J Riebling, a “tough, experienced trademark litigator who fights hard and gets superb results”. “It is great that Peter moved from the BigLaw environment to establish his own specialised platform; he excels at handling matters efficiently and keeping clients informed along the way.”

Rothwell, Figg, Ernst & Manbeck, PC

One of DC’s outstanding patent outfits, Rothwell Figg also provides gold-standard guidance on trademark matters. Utilising well-developed docketing and filing systems and taking advantage of a carefully cultivated referral network, the firm prosecutes domestic and foreign trademark applications seamlessly while keeping a hawkish eye trained on possible infringements and shutting them down as and when necessary. The fulcrum around which the practice turns is enforcement ace Leo Loughlin, an “immediately responsive, quick and efficient attorney who is a pleasure to partner with”. Instructions from Italy are a notable thread in his practice; he acts for Valentino on contentious matters, for example.

Smith, Gambrell & Russell, LLP

A string of wins in trademark litigation and advanced know-how on internet-related brand matters ensure that Smith, Gambrell & Russell retains its place in the WTR 1000. At lower charge-out rates than lawyers at many other firms, its practitioners deploy quickly and decisively when infringement issues cause business concerns for clients. Brand owners take comfort from the seasoning of James Bikoff, who has chalked up an enviable track record over 40 years in the courtroom. Bruce McDonald is another veteran advocate with notable accomplishments on his CV in the area of online enforcement.

Snell & Wilmer LLP 

A major player in the western United States, Snell & Wilmer has an increasingly national reputation, fuelled by notable recent developments in its trademark practice: in April 2020, it unveiled new signings John Dabney, Mary Hallerman and Richard Kim, who joined from McDermott Will & Emery. Dabney, who captained his previous firm’s trademark litigation group for a decade, is a hugely experienced lead counsel for federal court actions and TTAB proceedings. He is a voracious reader of trademark news and cases, which shines through in his counsel, and he has a fine sense of when to dial up the aggression. Fellow litigator Hallerman aligns with Dabney in an effective pairing, as illustrated by a recent trade dress infringement victory for Lotte Confectionery, maker of Pepero biscuit sticks, against Ezaki Glico, maker of Pocky biscuit sticks. Hallerman also has a passion for trademark law, to which she devotes her full time and energy. Dabney and Kim also work closely together and share a lot of clients, though Kim’s focus lies in prosecution and counselling. As a former USPTO examining attorney and instructor for new examiners, he understands the agency’s mindset, which helps him to push things along at pace and towards the right conclusions.

Steptoe & Johnson LLP

Steptoe & Johnson is leaned on heavily by a litany of famous brands across myriad sectors. Its popularity stems from a relational, rather than transactional, approach, which sees its lawyers invest themselves in the businesses, products, services and industries of those they represent, partnering closely with them to deliver a tailored service. This is the modus operandi of DC-based attorneys Michael Allan and Rachel Hofstatter, who acquit themselves with distinction in all facets of the practice. Group chair Allan is chiefly noted for his contentious CV, which includes newsworthy representations of many fashion and luxury clients such as Burberry and Louis Vuitton Malletier. Coming in for special praise, Hofsatter “manages complex trademark programmes that would otherwise be extremely time-consuming and labour-intensive tasks to handle in-house with great expertise”. “She is highly skilled and responsive, and her exceptional efficiency shows up in the reasonableness of her bills.” She provides emphatic support to Allan, but leads with equal confidence and poise too.

Sterne, Kessler, Goldstein & Fox PLLC 

Taking an interdisciplinary approach, eminent boutique Sterne Kessler keeps the focus on business enablement and is adept at leveraging different types of intellectual property to advance effective, multi-layered strategies for clients. Crucial to its success in this are the comprehensive capabilities of Monica Riva Talley, encompassing all aspects of brand protection, development, enforcement and commercialisation; and the cross-functional skills that Tracy-Gene Durkin brings to the table as a design patent, utility patent and trademark authority. “Monica is a delight to connect with – a knowledgeable, practical, thorough and responsive professional, who knows how to keep a portfolio strong and product copies to a minimum.” This resonates with many well-known names, including Nasdaq, Canada’s largest agribusiness Richardson International, Extreme Networks and Cirque du Soleil, whose rights and goodwill she protects to the hilt. She works closely with Durkin – for example, in support of The Washington Post. Talley and Durkin are both excellent mentors and educators who provide invaluable support to Sterne Kessler’s future leaders, including former USPTO examining attorney Lauriel Dalier and adroit enforcer Dana Justus – both good contacts for the address book.

Sughrue Mion PLLC

Venerable IP ensemble Sughrue offers a full suite of service options to trademark owners and has a large team that makes light work of pursuing applications through the USPTO, managing the biggest global portfolios and enforcing brand rights across borders. Interested parties would be wise to touch base with Jody Haller Drake, one of the firm’s cleverest and most seasoned trademark minds. She has held top positions in various IP associations and committees – including the AIPLA board of directors – and has insights that elevate the IP discussion in the United States and internationally.

Venable LLP

With a WTR 1000 gold ranking for prosecution and strategy and a silver placement for litigation and enforcement, Venable is in a small class of trademark elite all-rounders in DC. Brand owners find it hard to ignore the firm’s combination of quality and competitive pricing – with astute staffing of non-partner track attorneys instrumental to the latter; and recognise further tremendous value in the dynamism of group IP leaders Andrew Price and Rebecca Liebowitz, the depth of its IP bench and the full-service resources it draws upon. Garnering abundant praise, Price is in his prime and is working wonders for prestigious names such as Pirelli and the American Bar Association. “What sets Andrew apart is his responsiveness, creativity, initiative, business and industry insight and strategic savvy.” “He has this fabulous drive to do the best for his clients and is the perfect choice for US trademark assignments.” Also endorsed unreservedly, Liebowitz is cited for her “rich knowledge of US and international trademark law”. One contact comments: “She has done a fantastic job handling all our trademark matters for many years and has never dropped the ball on anything.” Chair of the IP division Justin Pierce has valuable corporate experience, having headed Sony Mobile’s brand protection function, and is an anti-counterfeiting and enforcement ace.

Winterfeldt IP Group

A compact one-partner, nine fee-earner outfit with a laser focus on brands, Winterfeldt IP has drawn the eyes of many in-house counsel away from bigger firms and quickly earned recognition for its high-quality, personalised service, meticulous attention to detail and cutting-edge insight on internet-related brand matters. An expanded presence in the WTR 1000 speaks to its success: this year sees the firm added to the enforcement and litigation table and awarded with greater representation on the individual listings. The spur to this growth is founding partner Brian Winterfeldt, a foresighted lawyer who understands what clients need and how they want it delivered. He is incredibly responsive and always makes himself available – if you have a business need and you want to talk about it, you can expect him to be at your disposal. Newly minted in the guide this year, Griffin Barnett distinguishes himself as “an industry leader with respect to protecting trademarks online”. “Griffin consistently delivers results against cybersquatters, thanks to his subject-matter expertise and incredible work ethic. He’s a rising star in the trademark and ICANN worlds, and deserves the highest recommendation.”

Other recommended experts

Keith Barritt has profound knowledge of US trademark law, but sees the practical as well as the theoretical sides of a matter. He can always be relied on to act in the best commercial interests of clients when undertaking filings, renewals, oppositions and contract negotiations.” He practises at Fish & Richardson. Ropes & Gray’s Peter Brody is a great choice for heavy-duty infringement litigation in which there’s a lot to untangle. A thoughtful lawyer who carefully reviews performance post-matter, he’s always looking improve even the things he’s already so gifted at – thinking outside the box and clearly and convincingly articulating complex ideas. He has lately been handling a major false advertising and unfair competition case in the pharmaceutical industry against multiple defendants. Staying abreast of everything that’s happening in the trademark world, Lisa Dunner sees the whole playing field in which clients operate. Her practice encompasses all aspects of protecting, maintaining and policing brands, and is hallmarked by a pragmatic, problem-solving approach. Roger Furey has rich IP protection and enforcement experience, which he has cultivated representing clients all over the world. His current focus is on law firm leadership – he serves as chairman of Katten. Arnold & Porter has a new face in the WTR 1000 this year, with Roberta Horton making her inaugural appearance on the enforcement and litigation listings for DC. “Roberta immediately grasps what is at stake and proactively goes above and beyond the brief to bring other issues to attention, along with suggested ways to address them. Demonstrating impressive breadth and depth of knowledge, she gives invaluable advice and practical, efficient solutions.” Arnold & Porter and its clients are well served from a prosecution perspective by John Rynkiewicz, a former USPTO trademark examiner and chief in-house trademark counsel who brings wisdom and experience to difficult protection problems. Pillsbury vet Patrick Jennings is “fair, fast and responsive”, well connected internationally and a global portfolio manager par excellence for the likes of UBS. Always in demand, Susan Kayser takes on a tonne of work, but is never overwhelmed. She treats her clients to a tip-top counselling and litigation service and puts shoulder to the wheel to help them grow globally. Her work for Amazon Technologies has been a significant thread in her recent practice: she acts as primary US and global counsel for several Amazon-owned brands, whose value she has done a brilliant job protecting and enhancing. She is an anchor of K&L Gates’ worldwide trademark group. Akin Gump’s Karol Kepchar has an enviable record at the TTAB and is a noted online enforcement expert. “Sheldon Klein expeditiously delivers superb, cost-efficient work on trademark prosecution, maintenance and conflicts. His efficiency manifests in avoiding unnecessary office actions. He takes a practical, business-oriented approach to the issues presented to him and, with him onside, you can relax in the knowledge your interests are being well taken care of.” The Lathrop GPM LLP lawyer has served as president of AIPLA and is now on the esteemed organisation’s executive committee. International sources acknowledge him as a thought leader in the IP world. Clients are more than happy to endorse Joseph Lewis as “a man of integrity and dedicated lawyer with a gift for uneasy negotiations”. He runs a vibrant practice at Barnes & Thornburg, in the course of which he tends to the portfolio and enforcement needs of Le Cordon Bleu International and many others. Easily contactable, responsive and great at what he does, Timothy Lockhart of Willcox & Savage is popular among Latin American, European and Asian correspondents as a referral choice for US prosecution; while the quality and extent of his network mean that he is enlisted on plenty of outbound work, too. “He looks for creative solutions that prioritise business needs.” An integral member of Squire Patton Boggs’s 100-strong global IP team, Deborah Lodge has a deft touch on strategic branding matters and adds value with her granular privacy and internet law insight. Licensing is a strong component of her practice and something she excels at. Steve Lustig is a new listing this year, thanks to some outstanding customer reviews: “Steve passionately engages in and understands the issues clients face in their industries and leverages comprehensive market knowledge to give an excellent counselling service. He runs his team well – everyone he works with does an excellent job.” He recently joined Panitch Schwarze Belisario & Nadel. Nelson Mullins lawyer John McElwaine “consistently provides stellar advice on trademark, domain name, branding and unfair competition matters. He is a creative and incisive thinker, and highly results focused”. “Mark Tidman is an incredible IP brain with an encyclopaedic knowledge of trademark law and exceptional strategic smarts. Across a wide variety of brand-related matters – particularly those of a more challenging nature – he routinely surpasses expectations in terms of positive outcomes.” He takes the reins of BakerHostetler’s firmwide IP group. Greenberg Traurig’s Steven Wadyka Jr masterminds sweeping enforcement efforts and sees them through to successful conclusions. Linking up well with Chicago lawyers such as Mark Galis, Marc Trachtenberg and Cameron Nelson, he serves as anti-counterfeiting counsel to global safety science company Underwriters Laboratories and global power management company Eaton Corporation. Markery Law’s attorneys view trademark issues through clients’ eyes, enabling them to address specific needs with real precision. The firm was founded by Stacey Watson, who has unbeatable in-house experience. Peter Willsey is a sophisticated brand strategist with a deft touch on internet, domain name and copyright issues. He chairs Brown Rudnick’s global trademark, copyright and advertising practice.

Individuals: enforcement and litigation

  • Danny M Awdeh - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Edward T Colbert - Hunton Andrews Kurth LLP
  • John Dabney - Snell & Wilmer LLP 
  • John G Froemming - Jones Day
  • Howard S Hogan - Gibson Dunn & Crutcher LLP
  • 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
  • Michael J Allan - Steptoe & Johnson LLP
  • Stephanie Bald - Kelly IP 
  • James L Bikoff - Smith, Gambrell & Russell, LLP
  • Peter M Brody - Ropes & Gray LLP
  • Margaret A Esquenet - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Kevin Fee - Morgan Lewis & Bockius LLP
  • Ann K Ford - DLA Piper
  • Jennifer Fraser - Dykema Gossett PLLC
  • Michael A Grow - Arent Fox LLP
  • B Brett Heavner - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Brendan J Hughes - Cooley LLP
  • Jeffrey H Kaufman - Muncy, Geissler, Olds & Lowe, PC
  • Susan M Kayser - K&L Gates LLP
  • Naresh Kilaru - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • 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
  • Anna Naydonov - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Jonathan Redway - Dickinson Wright 
  • Peter J Riebling - Riebling IP PLLC 
  • Janet F Satterthwaite - Potomac Law Group PLLC 
  • Anna Kurian Shaw - Hogan Lovells
  • Susan A Smith - Hunton Andrews Kurth LLP
  • Mark Tidman - Baker & Hostetler LLP
  • 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
  • Jessica Bradley - Jones Day
  • James R Davis II - Arent Fox LLP
  • Stephen Demm - Hunton Andrews Kurth LLP
  • Eric T Fingerhut - Dykema Gossett PLLC
  • Mary Hallerman - Snell & Wilmer LLP 
  • Rachel M Hofstatter - Steptoe & Johnson LLP
  • Roberta L Horton - Arnold & Porter Kaye Scholer LLP
  • Jason Joyal - Kelly IP 
  • Karol A Kepchar - Akin Gump Strauss Hauer & Feld LLP
  • Sheldon H Klein - Lathrop GPM LLP
  • Joseph D Lewis - Barnes & Thornburg LLP
  • Steven D Lustig - Panitch Schwarze Belisario & Nadel
  • Bryce J Maynard - Buchanan Ingersoll & Rooney PC
  • Bruce A McDonald - Smith, Gambrell & Russell, LLP
  • Nicole Meyer - Dickinson Wright 
  • Justin E Pierce - Venable LLP
  • Anita B Polott - Morgan Lewis & Bockius LLP
  • Andrew Price - Venable 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 
  • Hae Park-Suk - Nixon & Vanderhye PC 
  • Allisen Pawlenty-Altman - Kilpatrick Townsend & Stockton LLP
  • Andrew D Price - Venable LLP
  • Janet F Satterthwaite - Potomac Law Group PLLC 
  • Susan A Smith - Hunton Andrews Kurth LLP
  • Mark Sommers - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Brian J Winterfeldt - Winterfeldt IP Group
  • James L Bikoff - Smith, Gambrell & Russell, LLP
  • Roberta S Bren - Muncy, Geissler, Olds & Lowe, PC
  • Karen Butcher - Morgan Lewis & Bockius LLP
  • Katherine Califa - Foley & Lardner LLP
  • Jeffrey L Costellia - Nixon Peabody LLP
  • James R Davis II - Arent Fox LLP
  • Jennifer L Dean - Faegre Drinker Biddle & Reath LLP
  • Lisa A Dunner - Dunner Law PLLC
  • Tracy-Gene Durkin - Sterne, Kessler, Goldstein & Fox PLLC 
  • Eric T Fingerhut - Dykema Gossett PLLC
  • Ricardo Fischer - Arent Fox LLP
  • Christopher P Foley - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Ann K Ford - DLA Piper
  • Jennifer Fraser - Dykema Gossett PLLC
  • Joshua Gerben - Gerben Law Firm PLLC
  • Dana Gross - Morgan Lewis & Bockius LLP
  • B Brett Heavner - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Christie Baty Hudgins - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Brendan J Hughes - Cooley LLP
  • Bassam N Ibrahim - Buchanan Ingersoll & Rooney PC
  • Susan M Kayser - K&L Gates LLP
  • Richard Kim - Snell & Wilmer LLP 
  • Sheldon H Klein - Lathrop GPM LLP
  • Rebecca Liebowitz - Venable LLP
  • Timothy J Lockhart - Willcox & Savage PC
  • Deborah M Lodge - Squire Patton Boggs
  • Leo M Loughlin - Rothwell, Figg, Ernst & Manbeck, PC
  • David L May - Nixon Peabody LLP
  • David J Mayberry - Kilpatrick Townsend & Stockton LLP
  • John Gary Maynard III - Hunton Andrews Kurth LLP
  • Rebecca McDougall - Morgan Lewis & Bockius LLP
  • Nicole Meyer - Dickinson Wright 
  • Anna Naydonov - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Christopher Norton - Arent Fox LLP
  • Justin E Pierce - Venable LLP
  • Bonny B Plosker - Potomac Law Group PLLC 
  • Douglas A Rettew - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Norm Rich - Foley & Lardner LLP
  • Peter J Riebling - Riebling IP PLLC 
  • John P Rynkiewicz - Arnold & Porter Kaye Scholer LLP
  • Monica Riva Talley - Sterne, Kessler, Goldstein & Fox PLLC 
  • Mark Tidman - Baker & Hostetler LLP
  • 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
  • Griffin M Barnett - Winterfeldt IP Group
  • Keith A Barritt - Fish & Richardson
  • Todd Bontemps - Potomac Law Group PLLC 
  • Cristina Carvalho - Arent Fox LLP
  • Susan Christoff - Cooley LLP
  • Ryan Compton - DLA Piper
  • Roger P Furey - Katten Muchin Rosenman LLP
  • Marsha G Gentner - Dykema Gossett PLLC
  • Jeffrey H Kaufman - Muncy, Geissler, Olds & Lowe, PC
  • Naresh Kilaru - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Joseph D Lewis - Barnes & Thornburg LLP
  • Bryce J Maynard - Buchanan Ingersoll & Rooney PC
  • Daniel Neustadt - Holland & Knight LLP
  • Eric Perrott - Gerben Law Firm PLLC
  • Stacey Watson - Markery Law LLC