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McDermott Will & Emery LLP

THE MCDERMOTT BUILDING, 500 NORTH CAPITOL STREET, NW, WASHINGTON, DC 20001-1531, USA
Tel:
Work +1 202 756 8000
Fax:
Fax +1 202 756 8087
Email:
Web:
www.mwe.com

Robert Zelnick

Tel:
Work +1 202 756 8377
Email:
Web:
www.mwe.com
McDermott Will & Emery LLP

Work Department

Intellectual Property Litigation

Position

Robert is a partner and is a nationally recognized intellectual property (IP) lawyer with an established record of success. Robert has focused his practice on trademark, unfair competition, false advertising and copyright matters, where he counsels clients on complex IP issues and serves as lead counsel for major clients in federal trial and appellate courts. He is also a registered patent attorney. For 10 years, he was head of the Firm's Global Trademark Practice Group.
 
Practice Overview:
Manages all aspects of acquisition and enforcement of intellectual property rights, with a focus on litigation of trademark, unfair competition and false advertising disputes, often involving internationally famous trademarks. Represents clients in federal trial and appellate courts throughout the United States, and also before the US International Trade Commission and the Trademark Trial and Appeal Board of the US Patent and Trademark Office.  Advises on advertising, marketing, fair use, comparative advertising claims, right-of-publicity and other issues related to advertising law.  Counsels clients on selection, clearance, protection and licensing of trademarks, service marks, trade names and other indicia of corporate identity. Develops risk-management strategies and protocols, particularly for cutting-edge and outside-the-box marketing campaigns.  Advises on global trademark portfolio management and restructuring to ensure strategic and tax-managed ownership of trademarks worldwide.  Integrates trademark-related planning and advice with corporate, tax, regulatory and other legal aspects of major multi-national corporate mergers, de-mergers, acquisitions, joint-ventures, licenses and other transactions.  Enforces rights related to domain name and trademark use and misuse on the world wide web, and litigates domain name disputes before the Internet Corporate for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (WIPO) and claims arising under the federal Anticybersquatting Consumer Protection Act (ACPA). 
 
Specialized industry practice for food/beverage/alcohol beverage clients, as well as apparel companies, financial services companies nd high-technology companies, among others.  Advise on trademark and advertising issues in conjunction with, and at the intersection of, alcohol beverage regulatory law.  Since 1997, represent the current co-leading global producer of spirits and wines.

Career

Upon graduating from the George Washington University National Law Center in 1990, joined Brinks, Hofer, Gilson and Lione as an associate from 1990-1996.  Joined McDermott Will & Emery LLP as an associate in 1996, promoted to non-equity partner in 1998, and to current position as equity partner in 2001.  While at McDermott, served as Head of the Global Trademark Practice Group from 2001-2010, and in other capacities on the firm-wide Professional Responsibility Committee, Recruiting Committee and Strategic Planning Committee.  Served as an intern to the Honorable Eric G. Bruggink of the US Court of Federal Claims in Washington, DC, in 1989.
 
Writes extensively on issues related to trademark and advertising law, with articles published in The National Law Journal, The American Lawyer, Advertising Age, Inside Counsel, Managing Intellectual Property, Bloomberg Law Reports, Mass High Tech Magazine and other publications.  Frequently quoted on subjects of interest in his area of practice, including in The National Law Journal, Inside Counsel, The New York Times, Forbes, The Washington Post, Bloomberg Business Week, Corporate Counsel and Bloomberg television.  Frequent speaker at national legal conferences and industry association meetings, on topics spanning his areas of expertise. 
 
Served as a testifying expert witness in trademark-related litigation. 
 
Among other accolades and rankings, named a Washington, D.C. “Superlawyer” (top 5% of Washington, D.C. lawyers) since 2012.

Member

International Trademark Association (INTA), with service over time spanning Publishing Boards Committee, Meetings Committee, Advanced Trial Advocacy Subcommittee, Alternative Dispute Resolution Committee, and Corporate Outreach Committee.  Firm awarded “Pro Bono Law Firm of the Year” by INTA in 2013.
Children’s Law Center, Benefit Committee
Bar Admissions: District of Columbia
Court Admissions:  U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Fourth Circuit, U.S. Court of Appeals for the Eleventh Circuit, and various other federal district courts.

Education

George Washington University Law School, JD, with honors, 1990
Lafayette College, AB, Biology, with honors, 1987

Leisure

Enjoy domestic and global travel, cooking, dogs and current events.


United States: Intellectual property

Trademarks: litigation

Within: Leading lawyers

Robert Zelnick - McDermott Will & Emery LLP

Within: Trademarks: litigation

The team at McDermott Will & Emery LLP represents a number of clients active in the alcoholic beverages sector. It recently acted for Brooklyn Brewery in two TTAB matters which respectively sought to cancel registrations by Brooklyn Pour and Brooklyn Brew Shop. Richard Kim, John Dabney and Mary Hallerman led on both matters and all three are currently acting for Creative Technology, owner of the BLASTER brand, in opposition to applications filed by Monster. It is argued that the applied-for trademarks, 'Monster Blaster' and 'Monster Blaster Ravebox', are likely to cause confusion with the client’s own marks. Additional industries of expertise include technology, life sciences, IT and apparel. Dabney serves as co-head with Chicago-based Jennifer Mikulina. Jorge Arciniega is a name to note in Los Angeles while Robert Zelnick is also recommended. Named attorneys are based in Washington DC unless otherwise stated.

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Trademarks: non-contentious (including prosecution, portfolio management and licensing)

Within: Trademarks: non-contentious (including prosecution, portfolio management and licensing)

At McDermott Will & Emery LLP, the ‚Äėvery strong‚Äô attorneys provide ‚Äėsolid support and deep knowledge‚Äô. The full spectrum of trademark-related matters is undertaken by the team, which includes Chicago-based co-head Jennifer Mikulina¬†and the ‚Äėstrong business acumen‚Äô of Joanne Ludovici. Richard Kim¬†and Robert Zelnick¬†handle filing, search, clearance, and enforcement matters for Amgen and the team also serves as counsel to Hitachi for US-related trademark matters. Jorge Arciniega¬†is a name to note in the Los Angeles office, other attorneys are based in Washington DC unless otherwise stated. Mars, Hot Topic and 23andMe are also clients.

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