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PROMINENT ASSIGNMENTS
Initiated and served as lead attorney in the successful prosecution of over 345 trademark opposition/cancellation proceedings before the U.S. Trademark Trial and Appeal Board with only one loss.
Initiated and chaired over 50 federal court actions for federal trademark infringement, unfair competition, anti-cybersquatting and dilution resulting in favorable outcomes via decision, settlement or consent judgment with only one loss.
Experience with trial experts in the design and implementation of trademark related surveys for determining likelihood of confusion, acquired distinctiveness and dilution.
Represented clients in various appeals before the United States Court of Appeals for the Federal Circuit and the Court of Appeals for the Fourth Circuit on trademark and procedural related issues.
Rendered due diligence analyses and services on intellectual property issues in at least 25 corporate acquisitions and/or mergers saving one client approximately $40 Million due to detection of adverse trademark related issues.
Represented various clients in Uniform Dispute Resolution Proceedings (UDRP) before ICANN in successfully securing ownership of top level domain names.
Successfully prosecuted over 3,000 trademark applications to registration before the U.S. Patent and Trademark Office.
Provided availability reviews and recommendations for over 8,500 trademarks.
Successfully prosecuted to issue the first federal registration for the configuration of an automobile as a trademark, namely the famed "Beetle" vehicle on behalf Volkswagen.
Successfully prosecuted to issue the first collective membership mark registration for a health maintenance organization on behalf of CareFirst Maryland, Inc. d/b/a CareFirst BlueCross BlueShield.
Provide daily counsel on issues related to trademarks, unfair competition, copyrights, trade dress protection, rights of publicity, dilution, false advertising, domain names, trade secrets, e-business and gray market and counterfeit merchandise.
Negotiated, evaluated and drafted numerous settlement agreements and licensing agreements.
REPRESENTATIVE CLIENTS
CareFirst of Maryland, Inc. d/b/a CareFirst BlueCross BlueShield (and affiliated companies)
HealthMarkets, Inc.
Heartland Building Products, Inc.
Institute for International Economics
O.C. Seacrets, Inc. (and affiliated companies)
RECARO GmbH Co. KG
The United Methodist Publishing House
Universal American Corp. (and affiliated companies)
Volkswagen Aktiengesellschaft (and affiliated companies)
Volkswagen Group of America, Inc. (and affiliated companies)
AREAS OF PRACTICE EMPHASIS
Anti-counterfeiting enforcement
Brand development and strategies
Due-diligence analyses of intellectual property in mergers and acquisitions
E-business issue including dispute resolution for domain names
Intellectual Property
Moral rights and rights of publicity
PROFESSIONAL INVOLVEMENT
The Trademark Reporter, Editorial Board, (2004-2008)
District of Columbia Bar Association, Intellectual Property Sub-committee
Georgia Bar Association, Intellectual Property Sub-committee
International Trademark Association
American Intellectual Property Law Association
COMMUNITY INVOLVEMENT
Member, Vistage f/k/a TEC, The Executive Committee (1998 to present)
Friendship School, Eldersburg, Maryland, Advisory Board, (2002-2005)
EXPERIENCE
Over 26 years of legal experience in the practice of intellectual property law, including, service as head of the trademark department at two prior law firms.
Prior industry experience with the National Legal Center for the Public Interest and Energy and Environmental Analysis, Inc.
EDUCATION
George Washington University (Environmental Science), B.A. 1978
University of Georgia School of Law, J.D. 1982 | 