United States: Massachusetts

Firms

Day Pitney LLP

Growth was the central thread in Day Pitney’s 2019 narrative – the firm brought new lawyers on board giving partners better delegation options and freeing up their time for strategic thinking; it landed new clients in areas such as sports, entertainment and fashion, thereby diversifying its focus from traditional (and continuing) strongholds of consumer brands and financial services; and it enhanced its presence in the transactional space by taking on more licensing, co-branding, sponsorship and M&A due diligence instructions. The attraction for hires and brand owners include the set’s quick and nimble approach to enforcement and, in prosecution, a nuanced understanding of what assets must be protected to best serve clients’ business objectives. In charge is Carrie Webb Olson, a relationship lawyer who cares deeply about the people she represents and their trademarks. She partners closely with in-house counsel and marketing professionals to help brands tell their stories in the most impactful way. “Carrie is fantastic being not only extremely knowledgeable about trademark law but also incredibly easy to work with. As a counsellor she has an excellent bedside manner.”

Fish & Richardson

“Overall, Fish is one of the top IP outfits in the United States and, more to the point, is extremely strong on the trademark side.” Although several of its number recently moved to Orrick, it continues to stand tall in Boston with a local line-up of smart attorneys who combine brands expertise with good business judgement and an efficient approach to full trademark lifecycle management. What is more, they are well integrated at all levels of the nationwide firm so clients get easy access to an extremely deep pool of resources. Taking the lead is all-rounder Cynthia Johnson Walden. For her patrons she delivers prompt, thoughtful and commercial advice on global brand management and enforcement; for her team she is an outstanding mentor and trainer. Other names to note include Timothy French and Debra Serota. French amazes all with his instant and detailed recall of trademark law and cases, and ability to answer just about any question on the spot. His expertise is broad and encompasses patent, trademark and design law. Serota has previously served as a USPTO trademark examiner and spent a decade in-house at Reebok before joining Fish – experience that serves her extremely well as a counsellor focused on international portfolio management and brand strategy.

Foley Hoag LLP

Foley Hoag will always be an attractive destination for brand owners if Julia Huston is in the fold. She co-chairs the East Coast commercial firm and Lex Mundi member’s IP group and is hailed by local and international sources as a “smart and incredibly hard-working lawyer who really cares for her clients”. Litigation and strategic counselling are her metiers. Also bringing strong leadership in the IP group is Joshua Jarvis, a key contributor to an “exceptional copyright practice” and a lawyer well versed in sophisticated trademark strategy as well as unfair competition law.

Goodwin Procter LLP

Goodwin Procter’s commitment to growth and development in intellectual property is unshakeable; the elite global player is always meaningfully adding to its practice and has recently brought on board a high-level IP trial lawyer in the Bay Area in Darryl Woo and an International Trade Commission (ITC) focused team in DC; it has also promoted New York-based trademark and copyright specialist Jessica Rothstein to the partnership – a smart move given her excellent international connections and deft touch with key clients, including a top investment bank. Meanwhile, remaining an anchor in the dynamic Boston market, Robert Carroll continues to bolster the firm’s reputation for excellence in big-ticket patent, trademark and commercial litigation. When a dispute arises, he is great at seeing around the corner and devising thoughtful strategies well suited to the direction in which matters are likely to turn; he is flexible and adaptable, too, and knows when to be super aggressive and when to strike a more conciliatory tone as a case demands.

Hamilton Brook Smith & Reynolds PC

Treating rights holders to a reliable, consistently top-notch brands service, Hamilton Brook Smith & Reynolds is a popular port of call for companies in the most competitive industries. Among other things, the set stands out for its expertise in trademark search and clearance; deep experience in this area coupled with finely tuned risk sensitivity and an ability to effectively adapt levels of searching to the needs of each client makes it a discerning choice of partner when launching new brands and products into the marketplace. Handling adversarial matters with confidence and poise, too, the firm can be counted on whatever the weather. IP all-rounder Susan Glovksy is wholeheartedly recommended as a lawyer who “intellectually and practically understands the business-criticality of protecting the integrity of mark ownership and use”. “Susan is highly efficient in the use of her own and her clients’ time; she quickly defines the essence of an issue and gives succinct, clear and sage advice.” Concord-based colleague John DuPré is a veteran trademark and copyright protector and litigator who is appreciated for his deft commercial touch.

McCarter & English LLP 

With 120-plus IP and IT lawyers, agents and other professionals, there is nothing that McCarter & English cannot do for trademark owners or technology companies with patent-related needs. Building, maintaining and enhancing strong brands while problem solving innovatively along the way is something that the group has well and truly mastered, its proficiency in all aspects of trademark prosecution, litigation, anti-counterfeiting and commercialisation proving instrumental in this regard. Boston is home to some of the firm’s most dextrous IP litigators, including Erik Paul Belt, Lee Carl Bromberg and Keith Toms. Belt’s and Bromberg’s CVs are stuffed with wins in important patent and trademark cases, including numerous notable jury verdicts. Toms fulfils the roles of litigator, dispute resolver and counsellor perfectly and is cited by the market for his “precision, tenacity, intellect and engaging personality”. Lori Shyavitz leads the line on trademark selection, clearance and protection. Thanks to her broad enforcement, domain name, media and regulatory expertise, she always finds ways to add value.

Morgan Lewis & Bockius LLP

Strategic sophistication is the hallmark of Morgan Lewis’s cultivated practices in trademark prosecution, litigation and transactions. On the non-contentious side, the organisation has been on a tear lately adding major new clients, including a leading national retailer with a huge portfolio and many licensees in different territories. In pitches, Morgan Lewis understands how to showcase not only its quality and experience but also its diversity – leadership at the firm is, for example, being shown by a number of highly experienced female partners. One of these is Rachelle Dubow, “a real dynamo who is excellent at getting large projects running efficiently and turning around a high-quality work product”. Global portfolio management is a big part of her practice, though she is also highly adept at handling commercial IP transactions. Zooming in on the litigation practice, Morgan Lewis has all the right weapons to bring about desired results whatever the nature of a case. An “excellent stand-up trial lawyer and clever strategist with deep subject matter expertise”, Joshua Dalton is in his prime right now. He keeps commercial objectives front of mind when litigating and can resolve matters so that clients can continue in business with minimal restraints.

Nixon Peabody LLP

In-house legal departments are under a tonne of pressure to manage portfolios in a cost-effective way and are counting on their external providers to offer the same services each year for less money; this makes trademark practice tough for a lot of law firms, but Nixon Peabody has been especially smart in its use of technology to drive efficiency and enhance effective communication – it is not a billable event every time a client wants to get in touch and obtain information. Lately, the ensemble’s trademark litigation practice has been picking up a good head of steam thanks to the efforts of lawyers such as Jason Kravitz in Boston. He is great at appraising chances of success early in a dispute and fully informing those he represents of the upsides and downsides of different courses of action; not one of those lawyers who is happy to turn on the litigation machine and let it run, he takes the case assessment role more seriously than most. On top of this, he is a good practical problem solver who gets results without his clients having to spend a lot of money.

Nutter McClennen & Fish LLP

Nutter recently beefed up its IP group by adding a three-partner team from Sunstein; its new lawyers focus primarily on patent law but have trademark chops, too, giving the firm increased bandwidth on the brands side of the practice. This is a boon to Rory Pheiffer and Patrick Concannon, who have been knocking it out of the park recently. Deputy chair of the IP group Pheiffer can cover the waterfront for rights holders given his blend of prosecution and litigation and patent and trademark expertise. He comes in for vocal praise from references: “It is all too easy for a brand to get caught up in over-submitting trademarks, debating countless questions regarding contesting other brands or managing multiple timelines. Sifting through the how, when and where to act is of critical business importance; Rory provides the insight that a local boat captain might provide first-time sailors and has the ability to distil multiple trademark strategies into single cohesive game plans for your brand.” One source adds, “without Rory we would most certainly have left ourselves vulnerable and possibly stopped the process of protecting our rights altogether out of sheer frustration – he would not let that happen and we are the better for it”. Concannon is an authority on the protection of brand value and reputation in the digital realm. He likes to be hands on with his work and clients and does not pass work off to inexperienced attorneys – something which characterises Nutter’s approach more broadly.

Pierce Atwood LLP

Pierce Atwood certainly deserves its debut in the WTR 1000 firm rankings this year. It is the go-to for some heavyweight brands including Caterpillar, whose Solar Turbines portfolio it manages, Bauer Hockey, which it assists on trademark search, clearance, maintenance and enforcement, and Titleist Golf, on whose behalf it litigates. The New England stalwart has a lot of momentum in the IP space thanks to the excellent leadership provided by Finnegan expat Jonathan Gelchinsky. Eschewing a mechanical approach to trademark work, Gelchinsky makes sure to understand clients’ business needs before putting pen to paper when preparing and prosecuting trademark applications; similarly on the enforcement side, he does not employ the standard playbook, but takes actions driven by careful strategic thought to ensure that enforcement steps do not negatively affect the goodwill of his clients’ brands.

Ropes & Gray LLP

The financial services sector is a huge focus for Ropes & Gray across all departments, including intellectual property; the trademark lawyers here are exceptionally knowledgeable about the industry and can be counted on for brands advice that goes right to the heart of business. Recently the team has been diversifying and broadening its reach in cosmetics, beauty, haircare, luxury clothing and accessories, among other consumer-facing areas. For dynamic companies in any industry, Emilia Cannella and Erica Han are “some of the best on the market” and fit the bill perfectly. One client enthuses: “Their breadth of experience really stands out and enables them to guide you on how to best focus your time and energy; they know, for instance, what jurisdictions are going to be important for your business. Emilia is really seasoned and has a fine appreciation of commercial risk. Erica is efficient and provides an A+ grade customer service; she represents the next wave of lawyers coming up in the practice and is great at distilling down complex matters and helping you to understand why you should care about some issues but less about others.” Working with California-based investment firm TSG Consumer Partners has kept Cannella busy of late; she conducts thorough brand diligence for its investments and protects and enforces its own mark. Han manages the entire global portfolio of toy and furniture designer and maker KidKraft and recently assisted the company in connection with the rebranding of its house marks.

Sullivan & Worcester LLP 

Fast-paced companies look to Sullivan & Worcester for instant evaluations of out-of-the-ordinary and brand-threatening scenarios – and for effective strategies to deal with them. Kimberly B Herman is the lawyer they seek out. Highly experienced in the media sector, Herman and her team field urgent requests from producers and others 24/7 and deserve great credit for their rapid response, swiftness and efficiency of action. One niche area of the group’s expertise that brand owners should take note of is tackling issues arising out of gripe sites.

Sunstein LLP 

“Sunstein is well managed and has a collegial group of excellent attorneys – all of whom are utterly responsive and dedicated and genuinely care about their work and in helping clients to succeed.” The leading IP boutique has been on an impressive run of form recently, making significant headway in the pharmaceutical sector by both deepening existing relationships with companies – such as Vertex, which it has represented across the trademark lifecycle for more than 25 years, and clinical-stage biopharmaceutical company Sage Therapeutics, which it assists across the contentious/non-contentious divide – and developing new relationships. At the forefront of this practice are Steve Abreu and Lisa M Tittemore. Abreu recently became chair of the trademark practice and is excelling in the role thanks to his passion for brands and his energy and drive. “Steve is extremely smart and always makes an outstanding contribution to any trademark discussion.” Tittemore also saw promotion this past year and now sits on the firm’s management committee; in addition, she serves as litigation chair. Sources highlight her strategic nous and hail her as an “exceptionally talented attorney who handles difficult situations with equanimity and who is tireless in her efforts on behalf of clients”. Managing Partner Kerry L Timbers is another high-powered litigator on deck with a vibrant practice in both patents and trademarks. He acts for Harvard University on all manner of trademark issues – from cybersquatting to unauthorised use of the institution’s marks on unlicensed merchandise. Like Abreu, with whom he represents Harvard, “Kerry has a great intellect which he applies to find creative solutions to problems”.

Wolf, Greenfield & Sacks, PC

Wolf, Greenfield & Sacks has been incredibly successful in 2018 and 2019 in terms of adversarial action. One good example of the set’s recent work includes running aggressive global enforcement campaigns – with excellent results in China – for a top university. The team, with John Welch taking the lead, has also won a great many TTAB proceedings for diverse companies; Welch is one of the foremost authorities on TTAB proceedings in the United States. The firm’s prosecution and portfolio management practice continues to hum too, with Welch, Christina Licursi and Douglas Wolf all making vital contributions. Licursi, who is highly experienced on the contentious and non-contentious sides, knows her clients’ businesses and risk profiles well and counsels astutely on a commercial level. “Christina is in the highest tier of trademark lawyers in the region. She is a deeply strategic thinker who communicates very effectively not just with in-house counsel but also with companies’ business leaders.” Wolf also comes in for high praise as a “super-smart and hardworking lawyer who is always available, even when travelling”. “Doug is a good-natured, humble lawyer with whom it is easy to partner. He follows up proactively on all matters and gives sound, practical advice. He also ensures that the group is extremely well organised and efficient.” “Across the board, Wolf Greenfield is staffed by extraordinarily talented and experienced IP lawyers who are dedicated to serving their clients’ interests and who maintain the highest-quality standards in their work.”

Other recommended experts

WilmerHale’s Michael Bevilacqua is an experienced trademark counsellor with a deft touch in prosecution, licensing and opposition and cancellation matters. He is also a leading lawyer with respect to technology-driven transactional work. David Byer is an engine of the trademark practice at K&L Gates and a maestro at managing large global portfolios, the go-to representative for Valve Corporation, TripAdvisor and Polartec, to name just a few. Nicole Gage was raised as a litigator but now maintains a substantial prosecution and portfolio management practice. When disputes arise, she adopts a business-focused approach and takes emotion out of the case, working cooperatively with opposing counsel to bring about win-win resolutions. She flies the flag for Foley & Lardner in Boston. Ann Lamport Hammitte anchors the trademark practice at Lando & Anastasi. She is a seasoned expert in brand protection, enforcement and litigation who can step into lead counsel roles with confidence and steer teams to big wins. She is also a registered patent attorney and a good fit for those with diverse portfolios. Sarah Anne Keefe stands out for her deep experience and concomitant ability to solve problems. The Womble Bond Dickinson trademark and copyright group leader is an ace on advertising clearance and dispute resolution and also has deep sector knowledge in the life sciences area. Her team in Boston “communicates clearly, respects clients’ time, is quick to respond and provides an excellent all-round service”. With Deborah Peckham taking care of IP procurement and commercialisation and Mark Schonfeld bringing the heat in IP litigation, Burns & Levinson has a well-rounded patent and trademark practice. FisherBroyles lawyer Lawrence Robins maintains a broad IP practice encompassing trademark, copyright, advertising and unfair competition law. He garners glowing notices from foreign associates who describe him as “responsive, practical, adaptable and candid in his advice”. Daniel Scales takes the reins of Choate Hall & Stewart’s copyright and trademark practice. A strategic counsellor who is bang up to date on brand-relevant international trends and developments – and who has in-house counsel experience on his CV – he is excellent at right-sizing his advice for diverse businesses with different priorities and goals. Aaron Silverstein of Saunders & Silverstein has an uncommon blend of deep technical proficiency and business savvy. He practises all over the world and does a wonderful job of getting his wide network of foreign associates pulling in his clients’ direction.

Individuals: enforcement and litigation

  • David Hosp - Orrick, Herrington & Sutcliffe LLP
  • Julia Huston - Foley Hoag LLP
  • Mark S Puzella - Orrick, Herrington & Sutcliffe LLP
  • John L Welch - Wolf, Greenfield & Sacks, PC
  • Steve Abreu - Sunstein LLP 
  • Erik Paul Belt - McCarter & English LLP 
  • Lee Carl Bromberg - McCarter & English LLP 
  • Robert D Carroll - Goodwin Procter LLP
  • Patrick J Concannon - Nutter McClennen & Fish LLP
  • Joshua M Dalton - Morgan Lewis & Bockius LLP
  • John L DuPré - Hamilton Brook Smith & Reynolds PC
  • Sheryl Koval Garko - Orrick, Herrington & Sutcliffe LLP
  • Jonathan M Gelchinsky - Pierce Atwood LLP
  • Susan GL Glovsky - Hamilton Brook Smith & Reynolds PC
  • Ann Lamport Hammitte - Lando & Anastasi LLP
  • Jason C Kravitz - Nixon Peabody LLP
  • Christina Licursi - Wolf, Greenfield & Sacks, PC
  • Lawrence R Robins - FisherBroyles LLP
  • Mark Schonfeld - Burns & Levinson LLP
  • Kerry L Timbers - Sunstein LLP 
  • Lisa M Tittemore - Sunstein LLP 
  • Cynthia Johnson Walden - Fish & Richardson
  • Douglas R Wolf - Wolf, Greenfield & Sacks, PC

Individuals: prosecution and strategy

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