Margarita Wallach

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

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.

Margarita Wallach's Profile

Margarita Wallach is co-leader of the trademark group, office managing partner of the firm’s New York office, and a member of the firm’s executive committee.

Ms Wallach advises clients on the creation, development and protection of their intellectual property. She litigates trademark, trade dress, unfair competition, anti-counterfeiting and copyright infringement cases in the federal courts. Ms Wallach worked on the successful appeal of a seminal case involving a famous colour trademark in the apparel industry. She has also litigated trademark infringement and unfair competition cases involving food and beverage products, cosmetics, fine jewellery, designer apparel and perfume. She successfully litigated an anti-counterfeiting case against a ring of fine jewellery counterfeiters resulting in judgments of more than $30 million in favour of the jewellery manufacturer.

Her practice is focused on consumer brand development. She represents small to mid-sized consumer product companies that have grown to become among the most successful consumer product companies owning world-famous brands. Ms Wallach has long-established relationships in the food, beverage and fashion industries with investors, manufacturers, distributors, marketing companies and other advisers, which can be a great asset to her clients.

Ms Wallach represents leading consumer products companies in advertising and digital media matters. She drafts advertising agency agreements and conducts legal compliance reviews of advertising campaigns and defends against false advertising and unfair competition claims.

She prosecutes and maintains international trademark portfolios and implements global protection strategies to stop the manufacture and distribution of counterfeit products. Ms Wallach assists patrons in investigating and seizing counterfeit products illicitly manufactured by counterfeiters. Through registration of trademarks with local customs offices and close cooperation with government officers, counterfeit products are seized and ultimately destroyed, ensuring that her clients’ brand equity is protected. She assists on best practices to prevent the counterfeiting and the importation of grey goods.

Ms Wallach negotiates and implements international IP licensing programmes and a variety of agreements such as advertising, marketing, manufacturing and distribution agreements.

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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