Sterne, Kessler, Goldstein & Fox PLLC

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.

Bronze - Firms: enforcement and litigation

Bronze - Firms: prosecution and strategy

IP royalty Sterne Kessler is a premier trademark service provider to a litany of companies with immensely valuable brands. Not only does the firm protect rights to the hilt, it deftly handles intersectional IP matters courtesy of a well-integrated approach across its patent, trademark and other teams; it sees things from all angles, enabling it to better spot opportunities for strategic IP value creation. In terms of intangible qualities, the lawyers here have all the right ones: they are proactive, pragmatic, creative, commercial, flexible and aggressive when required. Exemplifying many of these, Monica Riva Talley is warmly recommended: “Monica is diligent, meticulous and highly adept at enforcing IP rights against hard-to-find defendants. She protects clients’ brands like they’re her own and is brilliant on strategy and communication.” She assists Verizon, Verizon Wireless and Verizon Media with clearance, prosecution and enforcement. Tracy-Gene Durkin is another anchor of the practice. Alongside Talley, she works closely with The Washington Post in connection with both traditional journalism products and innovative software products – a brief to which she is ideally suited as a foremost authority on design and utility patents with deep knowledge of trademark and copyright law.

Firm Profile

Sterne, Kessler, Goldstein & Fox PLLC is a leading IP law firm based in Washington DC that is distinguished by the strong technical experience and knowledge of its lawyers. Sterne Kessler has over 40 years’ experience helping companies strategise, build and enforce worldwide IP portfolios, including preparing and prosecuting patent and trademark applications before the US and foreign patent offices, advising on portfolio strategies (eg, valuation, acquisition and due diligence) and inter partes matters (eg, lawsuits, appeals, oppositions and re-examinations). The firm’s trademark clients enjoy a team-orientated approach to service that is unparalleled in the IP space.

Sterne Kessler’s trademark and brand protection practice is particularly adept at meeting the IP needs of companies that are developing and maintaining strong brands around the world. The firm’s well-thought-out IP strategies guard against patent, trademark and copyright infringers; knock-offs and counterfeiting; online fraud; and idea theft by competitors, insiders, partners and manufacturers – all of which can harm a company’s reputation and brand.

The following distinguish Sterne Kessler from the competition:

  • proactive representation that takes into consideration clients’ business objectives, marketing goals, state of the market and budget to craft the most effective strategy for protecting and enforcing a brand;
  • interdisciplinary protection strategies that include consideration as to whether other forms of IP protection (eg, design patents or copyright) would enhance the client’s market position;
  • a personal approach to representation – Sterne Kessler knows its clients and understands their businesses;
  • complimentary audits of clients’ marketing materials and websites to ensure maximum exposure and proper use of trademarks to maintain the strength of IP rights;
  • aggressive yet efficient programmes to identify and pursue trademark infringements in the marketplace (both real and virtual), including attempts by others to register conflicting marks with trademark offices throughout the world;
  • real-time electronic reporting and budget management for all matters;
  • flexible staffing and support options to work with clients’ in-house teams;
  • successful representation of clients in district court litigation, trademark opposition and cancellation proceedings before the TTAB and in UDRP proceedings;
  • negotiation of licence and coexistence agreements; and
  • organisation of in-house training sessions on IP issues.

Sterne Kessler’s presence in Washington DC is a distinct advantage; the firm’s proximity to the USPTO, the Court of Appeals for the Federal Circuit, the International Trade Commission, the US Supreme Court and Congress means that it is well positioned to help shape the IP landscape. The firm’s lawyers can easily conduct in-person interviews at the USPTO and form substantive professional relationships with examiners, given their regular presence at the USPTO.

While the firm provides a full range of services, it is organised internally around four main practice groups: the biotechnology and chemical group; the electrical group; the mechanical and consumer products group; and the trial and appellate group. In total, more than 400 people are employed at the firm.

Sterne Kessler lawyers and agents are carefully recruited for their technical expertise and industry experience. Most have earned an advanced technical degree (more than 50 hold PhDs), and have significant industry or academic experience across a wide spectrum of technical areas, including electronics, software, biotechnology, clean technology, pharmaceuticals, grid resilience, chemical products and processes, and consumer products. Sterne Kessler lawyers are trained to evaluate intellectual property in the context of clients’ business issues to ensure alignment with company goals.

Among recent awards and accolades, Sterne Kessler has been recognised for excellence in IP law in the following publications:

  • Chambers USA;
  • IAM 1000;
  • Managing Intellectual Property – IP Stars; and
  • Best Law Firms.

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