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
Silver - Individuals: prosecution and strategy
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 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 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.
Bonny B Plosker, a veteran of corporate branding, served as in-house trademark counsel for global media giants Turner Broadcasting System Inc and MTV Networks, where she was charged with protecting prized media brands such as Cartoon Network, CNN, Atlanta Braves, MTV, Nickelodeon and many others. Ms Plosker managed extensive global trademark portfolios with over 20,000 marks, counselled clients in all aspects of trademarks and managed enforcement matters and litigations. She successfully led the major entertainment rebranding initiative from ‘Court TV’ to ‘truTV’, advising on all legal aspects thereof, including evaluating and advising on potential names, acquisition of third-party trademarks and domain names, negotiating and drafting trademark acquisition agreements, registering trademarks and domain names and advising on press releases and announcements.
Ms Plosker now calls on her corporate perspective in her role as outside counsel, guiding clients ranging from global corporations to start-ups and individuals across many industries – including media, consumer products, healthcare, education, gaming and real estate. She specialises in all areas of trademark law, including counselling, search and clearance, global prosecution, portfolio management, inter parties proceedings, dispute resolution, trademark and domain name enforcement, rebranding initiatives and the business of trademark law: licensing. Ms Plosker prides herself on providing sound, practical and cost-effective guidance to her clients.
Potomac Law Group’s ‘New Law’ model takes the best from ‘Big Law’: talented, experienced lawyers supported by the infrastructure critical to sustain a vibrant and successful practice, but without the huge overhead, bureaucracy, billable hours requirements and opaque compensation systems of Big Law. Instead, the firm combines highly experienced, entrepreneurial, collegial and happy lawyers with excellent service and excellent client value. The firm’s lawyers all have at least 10 years of experience.
Ahead of its time, Potomac Law was not disrupted by pandemic, having already perfected a robust distributed work-from-home model for over 10 years with streamlined, secure, cloud-based systems and without the expensive office space, training requirements and bloated support staff that contribute to inflated billable hour rates at comparable firms.
The trademark team of four partners (Bonny Plosker, Janet Satterthwaite and Todd Bontemps, and recent superstar lateral Julia Matheson), all of whom are recognised in WTR 1000, are supported by two of counsel, two senior trademark paralegals, trained docketing staff, core administrative support and multiple litigation paralegals. Our lawyers have well over 100 years of collective experience in global trademarks, copyright, trade dress, false advertising, domain name disputes and international enforcement. They have handled and prevailed in hundreds of opposition and cancellation matters before the Trademark Trial and Appeal Board and have extensive experience litigating trademark, trade dress, copyright and false advertising cases in federal courts across the United States, as well as cross-border disputes implicating courts and tribunals around the world.
Potomac Law attorneys have expertise managing trademark portfolios that vary from a few marks to those exceeding 20,000. The group’s diverse client base ranges from famous brands and Fortune 100 companies to start-ups in evolving areas, such as companies seeking equity crowdfunding or developing new uses for blockchain, and covers all channels including media and entertainment, retail, consumer products, food and beverages (including alcoholic beverages), nutritional supplements, personal care products and cosmetics; bar and restaurant services; educational institutions; real estate and retirement living; life sciences; banking and financial investment services; software and high-tech; and non-profit organisations and associations.
Through years of experience, Potomac’s lawyers have developed an understanding of foreign trademark laws in several key jurisdictions, which enables them to provide sophisticated global branding advice at all levels. They have particularly strong experience in Europe, where they have held leadership positions in MARQUES, the European Trademark Association, and Asia. While the practice compares with any top-end trademark boutique in talent, years of experience and client base, the team is complemented by a full-service firm of over 100 experienced former Big Law, government or in-house attorneys in all disciplines, including a deep patent bench which supports 360-degree IP advice, as well as regulatory, privacy, employment/non-compete, contests and sweepstakes, corporate and M&A, and other areas which often accompany trademark and branding issues.
The firm’s trademark partners have been recognised at the highest levels, such as in WTR 1000 (including National Gold Band), Chambers USA, Managing IP’s IP Stars and Top 250 Women in IP and SuperLawyers. They frequently speak and write about trademark developments for US and international audiences, and are often quoted in publications and news outlets such as Bloomberg News, Associated Press, Washington Business Journal, WTR, ABA Journal, Hollywood Reporter, Buzzworthy.com and CBC (Canada). They are active in local, national and international professional organisations including INTA, the American Intellectual Property Association, the Intellectual Property Owners Association and MARQUES, and maintain valuable relationships with skilled IP attorneys around the world.