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United States > Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Trademarks: non-contentious (including prosecution, portfolio management and licensing)
  2. Leading lawyers

Leading lawyers

  1. 1
    • William Borchard - Cowan, Liebowitz & Latman, PC
    • David Ehrlich - Fross Zelnick Lehrman & Zissu, P.C.
    • Mark Engelmann - Fross Zelnick Lehrman & Zissu, P.C.
    • Ann Ford - DLA Piper LLP (US)
    • Glenn Gundersen - Dechert LLP
    • David Kelly - Kelly IP LLP
    • Julia Anne Matheson - Finnegan, Henderson, Farabow, Garrett & Dunner LLP
    • Frank Politano - K&L Gates
    • James Rosini - Kenyon & Kenyon LLP

The ‘top-notch’ boutique Finnegan, Henderson, Farabow, Garrett & Dunner LLP is highly rated for its domestic and international trademark portfolio management and prosecution expertise. The ‘very responsive’ team ‘knows the law inside out’ and provides ‘very business-oriented advice’. The ‘brilliant strategist’ Julia Anne Matheson continues to handle the domestic trademark portfolio management for Starbucks and its affiliated companies, and supports the client with its pre-acquisition due diligence investigations. Christopher Foley acts for Caterpillar regarding a wide range of trademark matters for its international brands, including the prosecution of more than 1,400 pending applications worldwide. Brett Heavner assists Xiaomi with the management of its trademark portfolio in more than 100 countries, and has been advising on enforcement strategies to deal with gray market imports. Other clients include Bridgestone Firestone, Charming Charlie, Forum Pharmaceuticals, and Fuente Cigar. Mentioned lawyers are based in Washington DC, and the practice also has practitioners in Boston and Atlanta.

The ‘outstanding’ boutique Fross Zelnick Lehrman & Zissu, P.C. is recommended for its US trademark prosecution expertise and has extensive experience protecting global brands. The practice also does anti-counterfeiting work for clients in a variety of industries, including entertainment, luxury goods, pharmaceuticals and financial services. Work highlights included assisting Michael Kors with its brand expansion project into Chile, acting for Tiffany & Co regarding its global brand protection, including the coordination of prosecution work in China and Russia, as well as defending the Batman family of trademarks for DC Comics, including opposition proceedings before the TTAB. The team also provides pro bono IP services for Lawyers Without Borders. David Ehrlich handles trademark portfolios for clients in the electronics, life sciences and retail sectors. Other recommended lawyers include Mark Engelmann, David Donahue, James Weinberger and Cara Boyle, who are all based in New York.

The ‘very strong’ practice at Kilpatrick Townsend & Stockton is praised for ‘excellent legal and industry knowledge’ as well as ‘valuable advice with very short response times’. San Francisco-based Anthony Malutta heads a large team, whose expertise spans clearance and prosecution, anti-counterfeiting and gray market strategies, as well as ex parte and inter partes reviews at the TTAB. David Mayberry in Washington DC acts as Marriott’s primary outside trademark counsel, including in the management of its portfolio of international hotel and hospitality brands. Atlanta-based Tywanda Lord and Christine James represent UPS in matters of trademark protection and enforcement. Gregory Gilchrist in San Francisco provides trademark counseling and enforcement for Levi Strauss. Other clients of the practice include Amazon, Bank of America, Dolby, Expedia, Instagram, Snapchat, and the InterContinental Hotel Group.

The ‘extremely responsive and commercial’ team at Arent Fox LLP is particularly noted for its work in the media and entertainment industry, but it also has many clients in the technology, fashion and food sectors. Practice head Ricardo Fischer and Cristina Carvalho and San Francisco-based Sarah Bruno assist key client Mars with portfolio management and other trademark matters in the Americas, including advice on the client’s acquisition of the Iams and Eukanuba pet food brands. Anthony Lupo acts for Discovery Communications regarding various trademark matters, including global branding initiatives and licensing deals. Michael Grow assists Warner Bros. with various trademark matters, including licensing programs and opposition proceedings before the TTAB. All named lawyers are based in Washington DC except where otherwise stated.

The ‘very strong’ team at Cowan, Liebowitz & Latman, PC in New York ‘combines legal expertise with an excellent understanding of the underlying market issues, providing smart and pragmatic advice’. The ‘very experienced’ William Borchard acted for several fashion companies, including J. Crew and Ann Taylor, and assisted Empire State Realty Trust with the protection of its Empire State Building brand. The ‘pragmatic problem-solver’ Mary Kevlin assists Major League Baseball Properties as well as its constituent clubs with the management and enforcement of their brands for use on a wide variety of merchandise and services. Jeffrey Epstein has particular expertise in the fashion industry and Deborah Squiers is noted for her work in the financial, beverage and educational sectors.

DLA Piper LLP (US)’s practice group has ‘a clear understanding of complex trademark laws, helping clients make informed decisions concerning their IP assets’. It manages the trademark portfolios of clients in a variety of industries, has niche expertise regarding certification marks, and has been advising many clients on the IP aspects of corporate and commercial transactions. Chicago-based Mark Feldman and Keith Medansky are ‘extremely focused and proactive, with excellent legal acumen and practical knowledge’. Practice head Ann Ford in Washington DC assists Dannon with trademark portfolio management, prosecution, licensing and enforcement. Other clients include Accenture, ESPN, Hyatt, Jamba Juice, Nike, and safety organization UL.

Dechert LLP’s team handles trademark clearance, registration and enforcement for several longstanding clients in a variety of industries. The ‘very talented’ practice head Glenn Gundersen in Philadelphia has been acting for many well-known Swiss luxury watch brands, including Breitling, Ebel, and TAG Heuer. He has also assisted The Ivy League with the prosecution and enforcement of its brand, including actions against several apparel producers. In addition, the practice has represented Apple in several opposition and cancellation proceedings before the TTAB. Other clients include Zara and Towers Watson.

K&L Gates handles global trademark portfolios for domestic and international clients in a variety of industries, including food and beverage, and retail. The team assists Tri-Union Seafoods with the protection of its Chicken of the Sea brand, and is primary trademark counsel to B&G Foods, managing its portfolio of more than 700 trademarks worldwide. It also assists TripAdvisor with trademark searching, clearance, prosecution and enforcement matters, and has provided IP due diligence and analysis regarding two recent acquisitions of non-US entities. Other clients include AT&T, The Coppola Companies, and Wrigley. Frank Politano in Newark and Susan Hollander in San Francisco are the names to note.

The ‘outstanding’ David Kelly leads the team at Kelly IP LLP in Washington DC, which provides ‘clear, commercial advice’ and is ‘highly knowledgeable, friendly and client focused’. Robert Litowitz, Stephanie Bald, Linda McLeod and Lynn Jordan have been handling numerous prosecution, opposition and cancellation proceedings for an impressive cross-sector client roster. Their work in the media and entertainment sector is particularly notable, with clients including Disney, Fox and the BBC. The team also has notable experience within the automotive, financial services, and pharmaceutical sectors, working with clients such as Aston Martin, Harley-Davidson, Travelers, and AstraZeneca.

Kenyon & Kenyon LLP’s practice head James Rosini in New York is noted for his emergency rebranding expertise. His team has handled complex rebranding work for several clients, including Abbott Laboratories, AIG and Citigroup, conducting trademark clearance and filing across multiple jurisdictions. The firm also provides ongoing portfolio management to major brands such as Walmart, Olympus and SAP. In the Washington DC office, Edward Colbert and Susan Smith are the names to note.

McDermott Will & Emery LLP is praised for its ‘fantastic service’ and ‘great industry knowledge’, particularly in the alcoholic beverages sector. Richard Kim in Washington DC acts for The Absolut Company and other Pernod Ricard subsidiaries regarding trademark portfolio management, licensing, enforcement and dispute resolution. Jorge Arciniega in Los Angeles has been counseling XIX Entertainment on several branding, licensing and marketing matters. Chicago-based practice head Jennifer Mikulina assists Allrecipes.com with the protection of its brand around the world, and handles the trademark prosecution and enforcement matters for outdoor brand Granite Gear. Other clients of the practice include Hitachi, Univision Communications and Lockheed Martin.

Baker McKenzie LLP’s team, led by Dave Davis in Chicago, is praised for ‘combining IP expertise with a multi-jurisdictional outlook and a wide global footprint’. It handles the full array of trademark matters, including global trademark portfolio management, major rebranding projects and transactional due diligence. Lisa Rosaya and Pamela Church in New York have been assisting key client Unilever with trademark prosecution, opposition and cancellation proceedings, as well due diligence. Rosaya also handle Pinterest’s global trademark portfolio and advises on the enforcement strategy. Other clients include Dita Eyewear, the C.S. Lewis Company, and Brooks Brothers.

Bracewell LLP has strong clearance, prosecution and enforcement capabilities, and regularly advises on branding and advertising issues related to product launches. Practice head Erin Hennessy, who is based in New York and Seattle, acts for HTC regarding trademark clearance for all new HTC mobile devices, and handles enforcement matters in North and South America. She also assists D’Angelico Guitars with the building of its brand equity through the development of brand protection and enforcement programs across the globe.

The team at Cooley LLP provides advice that is ‘prompt, commercially focused, and tailored to client’s needs’. It earns many mandates from clients in the technology sector, for which it handles a number of global portfolios and advises on matters related to international brand protection, including trademark selection, registration and enforcement. San Francisco-based John Crittenden acts as primary counsel to Lonely Planet, Tesla Motors, RadPad and Kamut International, including in relation to trademark prosecution and representation in disputes. Further names to note are Peter Willsey in Washington DC and Janet Cullum in New York.

Covington & Burling LLP’s practice, led by San Francisco-based Simon Frankel and of counsel Ronald Dove in Washington DC, has particular expertise advising on the trademark aspects of corporate transactions, and handles trademark prosecution matters for a variety of clients. Of counsel Kathleen Gallagher-Duff manages the trademark portfolio of the National Geographic Society and assisted with the IP and licensing aspects in the negotiation of a joint venture agreement with 21st Century Fox. Of counsel Marie Lavalleye manages the trademark portfolios of Spirits International and the Business Software Alliance, and acted for Merck Sharp & Dohme in TTAB proceedings regarding the Deca Durabolin trademark.

Dentons’ team provides a ‘high-quality service in a speedy and cost-efficient manner’. It assists clients with the management of their global trademark portfolios, has a strong anti-counterfeiting practice, and supports corporate and commercial transactions with IP advice. A highlight was assisting BCL-ED with the establishment of the new brand ED by Ellen DeGeneres, including advising on a worldwide trademark filing strategy, an online protection strategy, an anti-counterfeiting program, a licensing program, and agency and distribution agreements. Other clients include Opera Software, Schwartz & Benjamin, and the Hain Celestial Group. Monica Richman in New York is praised as ‘very knowledgeable, highly responsive, thoughtful and practical’.

Fitzpatrick, Cella, Harper & Scinto’s ‘client-focused and business-oriented’ team undertakes the full spread of trademark work, from searching and clearance, to IP due diligence, to handling opposition proceedings before the TTAB. New York-based practice head Timothy Kelly has been the assisting the bearing manufacturer Schaeffler Group with the protection of its brands, including anti-counterfeiting work. Nina Shreve, who is also based in New York, is noted for her work in the pharmaceutical and fashion industries. Other clients include PVH Corp, Bear USA and Cluett Peabody & Co.

Foley & Lardner LLP’s ‘exceptionally talented, efficient and responsive’ team provides strategic advice to clients in the sporting, fashion, financial services and automotive industries. Milwaukee-based co-chair Mark Diliberti has been advising Harley-Davidson on sponsorships, licensing and advertising strategies, and also assists the Milwaukee Brewers Baseball Club with trademark clearance and enforcement, as well transactional matters. Andrew Baum in New York assist Hermès with brand protection, including the successful registrations for the designs of its Kelly and Birkin handbags. Since publication, Jeffrey Greene has moved to Fenwick & West LLP.

Greenberg Traurig, LLP’s brand management practice, led by Susan Heller in Los Angeles, is particularly noted for its work in the technology, entertainment, fashion, and luxury industries. A longstanding client is Ralph Lauren, which it assists with trademark clearance, prosecution, enforcement, and transactional matters. Other clients include Katy Perry, Jennifer Lopez, Nikon, and Godiva Chocolatier.

Jones Day provides ‘high-quality’ trademark prosecution services for many big brands. The ‘very strong’ team is praised as ‘fast and efficient’. Cleveland-based Meredith Wilkes is praised for her ‘practical strategy advice’. She has been assisting fast-food company Wendy’s and wire and cable manufacturer General Cable Corporation with trademark prosecution and licensing matters. Washington DC-based John Froemming and Susan Kayser have been acting for Abercrombie & Fitch regarding its trademark portfolio management and enforcement. Other clients include L Brands, Kind Group, Educational Testing Service, and the Wikimedia Foundation.

Kelley Drye & Warren LLP’s ‘very good’ team regularly advises clients in the luxury goods, fashion and beverage sectors, conducting clearance, licensing and trademark enforcement for numerous well-known brands. Practice chair Andrea Calvaruso in New York is praised for her ‘pragmatic approach that avoids over-lawyering matters that do not warrant it’. She acts for Avon, Bacardi, Foot Locker, Gucci, Miss Universe and Ralph Lauren in matters including portfolio management, trademark enforcement and proceedings at the TTAB. The practice has recently grown with the integration of New Jersey-based boutique Ward & Zinna and its principals John Ward and Michael Zinna.

King & Spalding LLP’s team advises clients on domestic and international trademark protection and also has a robust anti-counterfeiting practice. New York-based Kathleen McCarthy and Bruce Baber, who is based in New York and Atlanta, have been assisting Coca-Cola on its trademark needs for many years. Other clients include Kimberly-Clark, Home Depot and Madison Square Garden.

The ‘very good’ team at Knobbe Martens Olson & Bear LLP acts for clients in a variety of industries, including entertainment, fashion, and food and beverage. Highlights included assists NBCUniversal in numerous rush trademark clearance projects, such as for the Fast and Furious movie franchise and the renaming of existing productions in the client’s theme parks. The firm has also assisted Monster Energy in building a portfolio of more than 5,200 registered trademarks to protect its valuable brands in the US and internationally, and represents the client in cancellation and opposition proceedings before the TTAB. Recommended partners include Jeff Van Hoosear, Salima Merani and Diane M. Reed in Orange County.

Norton Rose Fulbright US LLP regularly assists clients with the trademark matters associated with corporate transactions, including conducting due diligence investigations and negotiating licensing and joint venture agreements. It also handles domestic and international portfolio management and is also involved in numerous opposition and cancellation proceedings before the TTAB. Minneapolis-based practice head Timothy Kenny has been advising FICO on global strategy, trademark prosecution and enforcement, and opposition and cancellation proceedings. Austin-based Alicia Morris Groos has been assisting NRG Energy with the management and enforcement of its global trademark portfolio. Other clients include Yorktown Technologies and Georgia-Pacific.

The ‘very good’ trademark boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago acts for clients from a variety of industries. Jonathan Jennings and Phillip Barengolts are praised as ‘very talented and efficient’. Thad Chaloemtiarana assists the automotive industry parts supplier BorgWarner with prosecution and enforcement for its worldwide trademark portfolio, including anti-counterfeiting raids and seizures in numerous countries. Robert Sacoff acts for Acer with regard to trademark prosecution and opposition proceedings before the TTAB. Other clients include AMD, BP America, and Medline Industries.

Steptoe & Johnson LLP’s team in Washington DC covers the full range of trademark and trade dress protection services and is frequently involved in cancellation and opposition proceedings before the TTAB. William Pecau and of counsel Rachel Hofstatter assist the Federation of the Swiss Watch Industry with the protection of its trademarks, including handling an opposition before the TTAB against the registration of the mark SWISS REIMAGINED for watches by Reflexion Research. Other clients include LVMH, Regions Bank, and Cleveland Indians Baseball Company.

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