Practice Areas
Intellectual Property, Israeli
Practice Description
Intellectual Property, focusing on trademark counseling, trademark clearance and prosecution, and copyright law for clients in the fields of computer software and hardware, pharmaceuticals, cosmetics and other personal care products, fashion, food, publications, music, television and film, and financial, educational, and business services. Advise on all aspects of trademark and brand clearance, including reviewing searches for clients, and evaluating potential obstacles to registration and use of marks. Advise clients on registrability and use of marks, prepare and file applications and allegations of use, respond to Office Actions, prepare briefs in ex parte appeals to the Trademark Trial and Appeal Board. Handle complex issues of registrability, including refusals on the basis of varietal/cultivar designations, ornamentation and trade dress, and genericness. Negotiate co-existence and settlement agreements for clients to resolve objections from the United States Patent & Trademark Office (USPTO) and from other trademark owners.
Education
- B.A., 1987 University of Michigan (Honors Program, Political Science)
- J.D., 1991 Emory University School of Law (Notes & Comments Editor, Bankruptcy Developments Journal)
Admissions
- 1992 Michigan
- 1992 U.S. District Court, Eastern District of Michigan
- 1995 District of Columbia
- 2001 New York
Publications
“Trust Fund Taxes in Bankruptcy; Significant Developments in Chapter 7, 11, and 13 Cases,” 7
Bankruptcy Developments Journal, 469 (1990) (co-authored with Charles E. Falk, Esq.).
Presentations
17th All Ohio Institute on Intellectual Propert Conference, "Trademark Office Practice Tips," September 18 and 19, 2007
Prior Experience
- 2000-2003 Associate, Fross Zelnick Lehrman & Zissu, P.C.
- In addition to practice as described above, worked on site with Fortune 10 client for six months, managing international and domestic portfolio of trademarks, advised all subsidiaries on adoption and registrability of marks, instructed international counsel on issues relating to registration of client's trademarks and conflicts with third parties, supervised paralegals on international and domestic trademark registrations, and implemented electronic filing program for domestic applications.
- 1996-2000 Trademark Examining Attorney, U.S. Patent & Trademark Office
- Examined applications and allegations of use to determine registrability of trademarks and service marks in nearly all international classes. Reviewed factual information pertaining to applications and issued statutory refusals on all issues under Lanham Act, including failure to function as a mark, likelihood of confusion, descriptiveness, geographic descriptiveness, and misdescriptiveness, and false association. Issued procedural requirements for various issues under the Lanham Act and its implementing rules. Researched and collected substantive evidence, drafted office actions, amendments, final refusals, and ex parte briefs before the Trademark Trial and Appeal Board, utilizing current case law and Office policy. Successfully refused more than one hundred applications by third parties containing the term TIGER for golf equipment on the basis of a false association with the professional golfer Tiger Woods, and was affirmed by the Trademark Trial and Appeal Board on appeal. Maintained current knowledge of relevant decisions issued by Courts of Appeal and Trademark Trial and Appeal Board. Mentored new attorneys on USPTO practice and procedure.
- 1992-1994 Associate, Gault, Davison, Bowers, Hill, Parker & McAra, P.C.
- Practice in diverse fields of federal civil rights (42 U.S.C. §1983) litigation on behalf of police officers accused of misconduct; state law commercial, contract, and franchise matters; insurance defense; business and real estate transactions; and probate matters. Responsible for discovery planning, deposition preparation, motion and brief writing, trial preparation, second chair at trial, and settlement negotiations.