The Legal 500

The ‘outstanding’ trademarks team at Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is led by David Kelly in Washington DC, and includes 11 partners, who ‘are helpful, friendly and go the extra mile’. The team is notable for its depth and breadth of experience, geographical reach, and industry knowledge, with a practice ranging from routine to complex matters. In Washington DC, Julia Anne Matheson ‘responds promptly, gives a thorough assessment of the issues and provides accurate information and direction on how to proceed’. The hugely experienced and well-respected team, which includes recommended lawyers Jonathan Gelchinsky and Brett Heavner, is praised as ‘responsive, creative in their solutions, and extremely knowledgeable in their field’. The team assists Starbucks with its domestic portfolio, handling routine clearances relating to the company’s time-sensitive seasonal promotions, and also acts for The Walt Disney Company (and related companies Pixar, The Disney Channel, and ABC Television), The Association of Tennis Professionals (ATP), Caterpillar, XConnect Global Networks, and Shenzhen TRONY Science and Technology Development. It recently gained The NFL Players Association as a new client.

Boutique firm Fross Zelnick Lehrman & Zissu, P.C. is particularly strong in US litigation, international prosecution and litigation, and US counseling and prosecution, making it ‘the best for trademark work in the US’; it is ‘timely, thorough, tuned into both the industry and clients’ needs, and of the highest quality while being cost-efficient’. The IP team is made up of approximately 40 lawyers and is based across two offices in New York and Washington DC. Its prestigious client list includes Tiffany, Chanel, Miss America Organization, LEGO, Bristol-Myers Squibb and Novartis. Clients are quick to praise a range of lawyers in the team, including Mark Engelmann in New York, who is ‘thoughtful, extremely knowledgeable and very client focused’ and provides ‘sage advice’ that clients can ‘always rely upon’; and Craig Mende, also in New York, with areas of expertise including litigation and copyright.

Covington & Burling LLP has a wide-ranging client base that speaks volumes of its expertise in a number of key industries. In 2010 the practice expanded into cutting-edge domain name work for a number of high-profile companies, while remaining strong in sectors such as life sciences, sports, media and luxury goods. The team of five partners has expertise in all non-contentious trademark matters, from global registration, maintenance, oppositions, and cancellations to policing programs. Work highlights included advising Microsoft in relation to its trademark and domain name portfolio, and managing the worldwide trademark portfolio for the National Geographic Society. Recommended lawyers include co-chair of the firm’s global trademark and copyright group, Laurie Self, who is noted for her work with Microsoft and has expertise in domestic and international IP policy. Special counsel Kristina Rosette is recommended for her work with USA Track & Field and her expertise in cyber fraud and domain name matters. Also in Washington DC, Kathleen Gallagher-Duff is noted for her work for King Pharmaceuticals, recently advising on its $3.6bn agreement to be acquired by Pfizer. Other key clients include SPI Group, United States Soccer Federation, Merck & Co, and Promontory Financial Group.

K&L Gates has a well-established trademarks practice experienced in matters ranging from international enforcement to selecting and clearing individual marks. The firm covers a number of industries, including construction, travel, healthcare, publishing and technology. The trademarks team, with over 40 lawyers, includes highly recommended former in-house counsel Frank Politano in Newark, who has expertise in copyright, unfair competition and entertainment law. In Boston, David Byer is experienced across a number of industries, including publishing, manufacturing, entertainment and electronics, and is noted for his work with Expedia and Polartec. Work highlights included managing the worldwide portfolio of 2,500 marks for International Game Technology, and handling global search and clearance for Wrigley and brands such as Starburst, Skittles and Orbit. Other key clients include Hotels.com, TripAdvisor, AT&T, HTC, T-Mobile, Corbis and Resco Products.

The ‘talented and dedicated’ trademarks team at Kenyon & Kenyon had a busy 2010 between taking over a number of multinational client portfolios and working on major global rebranding deals. James Rosini heads the team from New York, and has more than 30 years’ experience, offering ‘knowledge, the ability to explain what is likely to happen, and efficient and effective practical advice’. He is supported by Edward Colbert in Washington DC, who is an ‘excellent resource’ and a high-class team that is ‘efficient and very responsive’, and delivers ‘pragmatic advice on top of a high level of legal skill’. The firm took over the handling of trademark portfolios of clients including Walmart, Analog Devices, AIG and Olympus, and led a number of high-profile projects; these included the name change of General Motor’s financial division to Ally Bank, and AIG’s global rebranding to Chartis Insurance, which involved clearing the name in 180 jurisdictions across the world. Other key clients are the Tampa Bay Rays, Citifinancial, Amicom, SAP, Sony, Woolworth & Kenny, and Akzo Nobel.

Arent Fox LLP is a leader in its field when it comes to media and entertainment matters. The team of 30 partners acts for a great breadth of high-profile clients in this area, as well as assisting clients in the life sciences, electronics, consumer products and fashion industries. The talented Anthony Lupo co-chairs the entertainment/IP group from the firm’s head office in Washington DC, and has particular experience in entertainment and gaming matters. The team is primary counsel for a number of household names including Mars, and also assisted in the launch of the Discovery Communications brand in a number of countries. It is also primary entertainment and IP legal counsel for Pixar and The Walt Disney Company, advising on clearance, registration and licensing matters, while other key clients include Apple, Google, LG Electronics, Diesel, Geox, Benetton and Lacoste. The team was also recently retained by Qualcomm.

Clients are in agreement that the trademarks team at Baker & McKenzie is ‘excellent’ and ‘unique’, and is well equipped to deal with the most ‘challenging’ of domestic and international work. Aside from its breadth, the team is also praised for its ‘deep industry knowledge’ and ability to remain ‘responsive and sensitive to clients’ needs and budget’. The ‘experienced and practical’ John Flaim leads the global team from Dallas and primarily focuses on litigation. He is supported by New York practice head Pamela Church, who comes highly recommended by clients and is ‘knowledgeable, enthusiastic and pleasant to work with’. The group is equipped to deal with clients from all industries, and is particularly noted for its management of Unilever’s global trademark portfolio, which comprises over 155,000 marks. Other key clients include Fed-Ex, Schlumberger Technology Corporation, StudioCanal, The Body Shop International, Vodafone and Wendy’s International.

Cowan, Liebowitz & Latman, PC is a ‘respected name in the field’, highly regarded for its domestic and international work. The team of 20 attorneys and seven trademark administrators manages the international trademark portfolios of clients from a diverse range of industries, including Major League Baseball Properties, The Donna Karan Company, Columbia Pictures, Morgan Stanley, Sotheby’s, and the US portfolios of international companies such as Barclays, Ferrari and Intercontinental Hotels. Other key clients are The National Audubon Society, The Metropolitan Museum of Art, Columbia University and The Salvador Dali Museum in St Petersburg, Florida. Notable individuals include the hugely experienced and ‘excellent’ William Borchard in New York, who has been an ‘expert in this field for many years’ and specializes in internet and domain name matters.

The level of service provided by the team at Dechert LLP is ‘exceptional’ and ‘top notch’. The team of 18 partners is based across the US, and is noted for providing innovative and practical ways of protecting a company’s marks. Advising clients in industries ranging from hi-tech electronics to alcoholic beverages, it is skilled at dealing with high volumes of work, turning around search reports and rendering opinions ‘in a matter of days, with thorough analysis and sound advice’. Glenn Gundersen leads the team from Philadelphia and is ‘an absolute specialist’. Prestigious clients include leading apparel retailer Zara USA and the Ivy League. Work highlights included trademark clearance work for L’Oréal, and representing Diageo in a number of matters.

The team at boutique firm Fitzpatrick, Cella, Harper & Scinto, based in New York, Washington DC and California, has expertise in the electronics, clothing, pharmaceuticals and publishing sectors, among others, advising a range of well-known clients. The firm has 11 partners spending at least half their time on trademarks matters, with the team led by Edward Vassallo in New York, who has expertise in the mechanical, computer and chemicals spaces. Also of note is hugely experienced founding partner Lawrence Scinto. Longstanding clients include Canon and IBM, while other representative clients include Batmark, Frederick Warne, RUHOF, Phillips-Van Heusen, Calvin Klein and Tommy Hilfiger.

Fulbright & Jaworski LLP’s trademarks team has a global reach, with a number of offices across the US and overseas, and advises some of the world’s leading brand names. The team undertakes the full range of non-contentious work, and also has a strong grounding in litigation, which further assists with transactions, licensing and policing matters. Sector strengths include chemicals, biotechnology, telecommunications and consumer products; the firm manages the global IP portfolios of a diverse range of leading US companies, including the Home Depot, UnitedHealth Group, General Mills, Brinker International and Farmers Group. Key lawyers include New York-based Mark Mutterperl, who is also experienced in litigation and false advertising matters.

Ballard Spahr LLP’s ‘unbelievably attentive and responsive’ trademarks team includes 18 partners working from eight offices across the US, and covers a wide variety of sectors including biotechnology, pharmaceuticals and electronics. Noted for its ability to ‘use lower-cost resources to the fullest extent possible’ but still provide ‘timely, cost-effective and practical advice’, the team acted on numerous transactions over the course of 2010, including representing The Mother Teresa Center in negotiations regarding a best-selling book and The Council of the Americas/The Americas Society on numerous matters. Key lawyers include of counsel Corey Field in Los Angeles, who has extensive music industry experience, and Philadelphia-based Lynn Rzonca, who divides her time between litigation and advisory work.

Cooley LLP’s well-regarded trademarks practice has particular expertise in the technology, life sciences and software sectors. The team of 22 lawyers, including four partners, currently manages around 17,000 trademarks for clients ranging from start-ups to Fortune 500 companies. Peter Willsey chairs the practice group from Washington DC, and has particular expertise in internet and domain name matters. The firm handles the worldwide trademark portfolio of Bluetooth SIG, which includes counseling, clearance, prosecution, policing and enforcement matters around the world. It also assists in the management of Facebook’s mark, while other key clients include LinkedIn, Bare Escentuals and Lonely Planet Publications.

DLA Piper LLP has a 25-strong team in the US dedicated to managing trademarks across the globe. The firm’s great geographical reach assists its ability to manage of global portfolios for large multinational companies, and its prestigious client list includes Christie’s, Covidien, ESPN, Genentech, Harley-Davidson, Pfizer, The Associated Press and Verizon Wireless. Ann Ford leads the team from Washington DC, and specializes in communications and media law. In 2010 the team was retained by one of the world’s largest associations of investment professionals to implement a worldwide brand protection strategy and manage its global portfolio, and it also manages the Lance Armstrong Foundation global trademark portfolio. It made a number of strategic partner hires in 2010, including New York-based Frank Ryan from Nixon Peabody LLP, who is ‘highly capable, knowledgeable, and very conscious of understanding and achieving clients’ goals’.

The trademarks team at Dewey & LeBoeuf LLP is small but specialized, with the bulk of the work being done from the New York office. The non-contentious group is led by Stanton Lovenworth, who has more than 30 years’ experience and has particular expertise in technology licensing. The team has experience across a broad range of industries, including technology-driven transactions. In 2010 the group represented The Walt Disney Company in its acquisition of Palo Alto-based Tapulous, a leading developer of music games for the iPad, iPhone, and iPod Touch, which involved trademark elements. Other clients include eBay, Starbucks, Hewlett-Packard and Dell.

Foley & Lardner LLP’s six-partner trademark, copyright and advertising team is based across the US and covers a wide range of industries, including apparel, cosmetics, healthcare and telecommunications, with Jeffrey Greene heading the group from New York. It is retained as lead trademark counsel by a number of leading multinational corporations, including Citigroup; it regularly provides strategic and day-to-day advise on the institution’s global portfolio, which includes more than 5,000 applications and registrations in over 100 countries. The team is also lead trademark counsel for Hermès International, Monster and Nokia, and also advises Mattel, Motion Picture Association of America, Time Out New York and Yahoo!.

Kelley Drye & Warren LLP’s ‘fantastic’ trademarks practice has expertise in the full range of industries, including media and entertainment, fashion, retail, security and real estate, and assists a number of well-known clients with portfolio management matters worldwide. The team of six ‘knowledgeable’ partners is led by Andrea Calvaruso in New York, who is praised as ‘smart, reliable, trustworthy, knowledgeable and responsive’. The ‘superb’ Nancy Lutz is also singled out for praise, for her ‘unbelievable grasp of domestic trademark law and her impressive knowledge of international matters’. Clients also speak very highly of the group as a whole; ‘service on all requests is excellent’. Key clients include The Miss Universe Organization, Foot Locker, Polo Ralph Lauren, Avon and Bacardi.

Kilpatrick Townsend & Stockton’s team of 55 ‘highly skilled’ trademarks lawyers is mainly based in Atlanta, and undertakes the full range of work from watching services to multinational clearance and filing programs. The hugely experienced Bill Brewster leads the group from Atlanta, and is supported by recommended lawyers Jason Vogel and Stephen Feingold in New York. Aside from the firms’ merger, the team has recently grown with a number of associate hires across the US, giving further breadth to an already large team, and it ‘goes above and beyond and gets things done quickly’; ‘no firm comes close to how quickly the firm works on trademarks clearance work’. Clients include Citi, Dwyer Group, Furniture Brands International, Genesco, Krispy Kreme Doughnuts, Marriott, Merrill Lynch and Spectrum Brands.

King & Spalding LLP’s trademark prosecution and strategic counseling practice includes eight partners well versed in assisting clients on a worldwide basis. The team is mainly based in Atlanta with support from New York and Houston, and deals with a wide variety of sectors. The IP practice group is lead by chair Courtland Reichman, who, as well as handling patent litigation work, manages a number of valuable marks for the country’s leading companies. The team acts as primary outside trademark counsel for The Coca-Cola Company, handling protection and enforcement matters as well as strategic advice. The very experienced Steve Schaetzel acts for UPS, advising on protection, enforcement and prosecution matters.

Knobbe Martens Olson & Bear LLP is a well-regarded boutique with a strong bench of trademarks lawyers with expertise in a variety of technologies and notable international ties. The team is led by managing partner Steven Nataupsky, supported by recommended partner and head of brand protection Jeff Van Hoosear in California, who is an expert in both domestic and international marks. Dual qualified barrister/attorney Lynda Zadra-Symes also comes recommended. Specialisms of the team include cleantech, nanotechnology and plant biology, and it also has extensive experience in media and entertainment; it has represented The Walt Disney Company and is currently advising Bob Hope Enterprises and Quentin Tarantino. Other clients include Frontier Scientific, Hansen Beverage Company, Masimo Corp, Partners in Leadership, Ranbaxy and 99¢ Only Stores.