McCarter & English LLP

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Recommended - Firms

Richly resourced in the IP space, McCarter & English designs and implements total solutions for rights holders thanks to an interdisciplinary approach which sees experts in different areas of IP law collaborate to protect, enforce and monetise clients’ diverse portfolios. Strengthening brands at a global level through finely calibrated multi-jurisdictional strategies is a forte of the group, which takes its cue in this regard from Susan Okin Goldsmith, a New Jersey partner with a sage business head on her shoulders and abundant experience across the trademark lifecycle. Intricate and interesting instructions frequently land on her desk due to her “thoroughness, creativity and efficiency”; she is currently representing Multi Access at the TTAB in the US leg of a global battle over rights to the mark WONG LO KAT for a Chinese herbal tea sold in the United States for over a century. Michael Friscia is another seasoned team member who also makes regular – and winning – appearances at the TTAB. A prosecution maestro, Friscia handles the global portfolio of a top toy and collectibles company and takes care of the Graceland portfolio on behalf of Elvis Presley Enterprises. They are joined in the WTR 1000 this year by special counsel Kelly Garrone, who has done much to advance the team’s profile on all contentious and non-contentious fronts. The top trial lawyer on deck is Scott Christie, whose recent victories include a multimillion-dollar damages award plus legal costs award for a leading residential and commercial pool company.

Bronze - Firms

Combining a mastery of brand building, IP management and value creation with cultivated litigation skills, McCarter & English aligns itself as a key partner to rights holders across the trademark lifecycle. Many of its lawyers have fine-grained patent and brands knowledge and field a diverse array of challenging instructions, which keeps them sharp and ready for anything. This is certainly true of Keith Toms, an “extremely strategic lawyer” who is enthusiastically endorsed by clients and peers alike. One source comments: “Keith is fantastic to work with on contentious and non-contentious matters. He is extremely proactive and gives precise opinions with just the right level of information to enable effective decision making. On top of that, he is great value for money.” Also highly recommended, Lori Shyavitz is “excellent on prosecution and disputes. Her grasp of substantive trademark law is truly amazing, as is her strategic judgement; she does an incredible job for her clients”. Dyed-in-the-wool litigators Lee Carl Bromberg and Erik Paul Belt are prime picks for lead counsel roles. Throughout his 40-year career, Bromberg has won numerous important verdicts, netting clients millions of dollars in the process. Belt has handled many cases of first impression and has whetted trial skills as a result.

Bronze - Firms: prosecution and strategy

Bronze - Firms: enforcement and litigation

The IP group at McCarter & English has seen a dramatic increase in load recently, but has never come close to being overwhelmed: with more than 100 IP lawyers, technical specialists and patent agents across its regional office network, the firm has the bandwidth to take on and run many large projects concurrently. On the trademark side, global portfolio management and development assignments and multi-jurisdictional enforcement briefs have kept New York-based trademark group co-chairs Margarita Wallach and James Donoian busy. Wallach is a close ally for company management teams and functions much like an in-house general counsel would; she’s great at putting herself in others’ shoes and has a strong empathetic sense, and so puts great care into her work. Sources back this up: “She continuously strives to understand her clients’ ever-evolving growth objectives so that she can apply her mind to the most important issues. She demonstrates the deep subject-matter knowledge you’d expect, but also outstanding communication skills.” Donoian is a destination of first choice for many in the fashion, apparel, retail and finance industries; brilliant on many trademark fronts, but particularly enforcement, he also does a brilliant job harnessing the firepower of the wider firm to drive favourable results. Based in Hartford, Connecticut, Mark Giarratana is another name to keep on the radar; patent infringement litigation is an important part of his practice, but he’s fully equipped for major trademark disputes as well as brand management.

Firm Profile

McCarter & English LLP is a firm of more than 375 lawyers with offices in Boston, Hartford, Stamford, New York, Newark, East Brunswick, Philadelphia, Wilmington and Washington DC. For 175 years, McCarter’s clients have come first, with an emphasis on their business objectives and priorities. The firm understands its clients’ businesses, stays on top of their frequently changing industries and markets, and implements strategies that will lead to success.

IP overview

The IP practice at McCarter is ranked among the 100 largest IP practices in the United States, according to IP Law360. The group has more than 100 IP lawyers, technical specialists and patent agents. The IP group’s deep bench has attracted a wide range of companies throughout the world, which are diverse in both geography and industry. The firm protects everything from celebrity designer brands to sport and haute couture footwear, pharmaceuticals, food and nutrition brands, cosmetics, airlines, consumer goods and personal care products. The group has great strength in representing clients in high-profile trademark litigation and technically complex patent litigation.

Trademarks, copyright and trade secrets

Building and protecting a company’s brand and image are essential to business success. The IP group strategically implements domestic and international programmes to advance clients’ brand identity and reputation. The trademark attorneys not only handle global brand portfolios from the inception of a client’s intellectual property, but they also help clients to build and strengthen their valuable market position. The firm is experienced in protecting famous brands from infringers regardless of where they reside and litigating IP matters in courts in the United States and throughout the world, including obtaining injunctive relief, asset restraints and other remedies for its clients. As a result of representing both national and international clients, the IP group has extensive experience addressing infringement and related matters (eg, distribution, licensing and manufacturing) that cross international borders, including effectuating multi-jurisdictional litigation and enforcement. The firm is a leader in trademark protection, anti-counterfeiting, technology-related transactions, patents and litigation.

McCarter is attuned to the special trademark issues faced by pharmaceutical and biotechnology companies and is experienced in guiding them through the process. As new technologies continue to stretch the boundaries of traditional copyright law, the IP team provides expert counsel to clients on employing copyright to protect their valuable assets (eg, intangible data) and represents clients in licensing transactions. The team advises clients on the requirements for an effective trade secret protection programme and on protection against unfair competition by former employees or business partners, as well as by competitors. Our experience in litigating trade secret and unfair competition cases gives clients an advantage when disputes arise.

Global brand strategists

McCarter’s partners are known in more than 70 countries for developing and executing unique global brand strategies. Over the past 30 years, team members have developed an extraordinary network of attorneys, government officials, customs officers and law enforcement personnel who help get things done for the firm’s clients. Partners have decades of experience establishing worldwide programmes to protect valuable IP rights, including trademarks, trade dress and product designs, trade secrets and copyright. The group has specialised capabilities for dealing with issues relating to the Internet, including dealing with cybersquatters and internet counterfeiters on a cost-efficient basis; working with domestic and foreign companies to deal with foreign-based websites and public auction and social media platforms; conducting successful lawsuits and UDRP actions against domestic and foreign website owners; and developing proprietary forensic tools for tracking both the success of takedown programmes and offending URLs, including when they resurface. The firm is known as the ‘go to’ firm in dealing with these types of IP issues around the world.

Patent prosecution and IP litigation

McCarter’s patent attorneys and professionals have industry experience and graduate degrees in relevant science and engineering fields. McCarter’s IP group is active in all facets of the high-tech and life sciences sectors, including biotechnology, pharmacology, chemistry, nanotechnology, optoelectronics, robotics, medical devices, telecoms, advanced control systems, green technologies, biometrics, software, consumer products and a range of defence, aerospace and energy technologies. McCarter’s technical expertise extends across all disciplines, providing a depth and breadth of experience that ensures effective and efficient IP counselling.

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