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: prosecution and strategy

Bronze - Individuals: prosecution and strategy

Bronze - Individuals: enforcement and litigation

Confident in their expectations of an excellent 360-degree IP service, companies with diverse portfolios make a beeline to McCarter & English, a regional firm with a well-built, 100-strong team of lawyers, technical specialists and patent agents. Acutely aware of the business difference that distinctive brand identities can make, its trademark practitioners dispatch all types of brand management, enforcement and monetisation instructions – and do so globally – with a sure hand. Praise abounds for executive committee member and New York managing partner Margarita Wallach, who does “impeccable work exemplifying outstanding attention to detail”. She works in diverse sectors, but is especially tuned into branding issues in the food and beverages industry. She has a likeminded colleague in James Donoian, with whom she regularly brainstorms. Donoian never lets emotions take over and is always steady and reasonable; his judgement unclouded, he solves problems through deep and creative thinking. Making his inaugural appearance in the WTR 1000 for 2021, Mark Giarratana focuses on patent and trademark litigation and is endorsed as a “responsive and engaging professional who is truly curious about clients’ businesses and products”. He is based in nearby Hartford, Connecticut.

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 copyright 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 US Patent and Trademark Office, 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

At McCarter, our more than 375 lawyers in nine offices deliver innovative solutions to our clients nationwide. For 175 years, we have been trusted business advisers to our clients, which include Fortune 100, mid-market and emerging growth companies. We have in-depth knowledge of the business issues affecting the industries we serve, including the consumer, financial, healthcare, life sciences, manufacturing and technology sectors. We understand our clients’ businesses, stay on top of their frequently changing industries and markets, and implement 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. McCarter’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 and consumer goods. We have 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, they also help clients to build and strengthen their valuable market position. We are 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 our clients. As a result of representing both national and international clients, we have extensive experience addressing infringement and related matters (eg, distribution, licensing and manufacturing) that cross international borders, including effectuating multi-jurisdictional litigation and enforcement. We are leaders 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 Uniform Domain Name Dispute Resolution Policy 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. We are 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. We are 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 ensure effective and efficient IP counselling.

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