James H Donoian

Ranked in United States: New York
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

Silver - Individuals: enforcement and litigation

Bronze - Individuals: prosecution and strategy

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.

James H Donoian's Profile

James H Donoian has over 25 years of experience protecting and enforcing IP rights. He counsels international clients on global IP and brand management issues, including bet-the-company cases, global IP and branding strategies, advertising and marketing, US and international enforcement and litigation, and anti-counterfeiting and grey market problems. His focus is furthering clients’ business objectives by protecting and maximising their valuable IP assets, including trademarks, trade dress, copyright, advertising and publicity rights.

Mr Donoian has fought for and successfully defended clients in a wide range of disputes in more than 25 different US courts, handling expedited injunction hearings through trials.

Mr Donoian guides companies in proactively building comprehensive IP protection around new products – covering trademarks, trade dress, copyright, design patents and utility patents – in advance of product launches, to restrict anticipated copying by competitors. He leverages and enforces those rights against others, whether they are competitors, copycats, licensees, distributors or counterfeiters, in the United States and abroad.

Mr Donoian is also responsible for global anti-counterfeiting enforcement programmes, combining traditional and non-traditional claims and remedies to obtain damages, seizures, asset restraints, injunctions and other novel forms of equitable relief. These efforts are often concurrent with criminal actions in the United States and civil or criminal actions in foreign jurisdictions.

Mr Donoian works with clients in various industries, including fashion and luxury brand goods, apparel/footwear, jewellery, toys, sports and entertainment, food and nutritional products, and pharmaceuticals and medical devices, as well as other industrial and commercial markets. His primary focus is the fashion design, luxury and apparel industries. He has featured on panels and authored articles relating to fashion law. He is also a leader of the firm’s design, fashion and luxury group.

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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