Mark D Giarratana

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

Bronze - 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.

Mark D Giarratana's Profile

Mark D Giarratana represents clients in all aspects of IP procurement, litigation, licensing and other transactions. He serves as outside counsel for consumer and industrial products companies, as well as life sciences and technology businesses.

Mr Giarratana has litigated numerous IP cases in federal district and appellate courts throughout the country, including patent, trademark, unfair competition and trade secret matters. He has also handled numerous trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the USPTO, as well as takedowns of unauthorised resellers on internet reselling platforms. Notable cases include a trial before the TTAB opposing multiple trademarks directed to product configuration marks, while defending a countersuit in federal court alleging infringement of six utility patents and successfully reaching a favourable settlement of all disputes. Another case involved successfully defending all contested patent claims in an inter partes review before the PTAB while defending against unfair competition and infringement claims in federal court. Another matter involved successfully defending a trademark registrant in an ownership dispute with a foreign manufacturer and obtaining an affirmance by the Court of Appeals for the Second Circuit.

Mr Giarratana is a former chair of the Intellectual Property Law Section of the Connecticut Bar Association.

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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