Skip to main content

Advanced Trademark Law Annual Review 2014

 
Author(s): Kieran G. Doyle, Sheldon H. Klein
Practice Area: Intellectual Property
Published: Apr 2014
PLI Item #: 51377
CHB Spine #: G1176

Kieran counsels clients regarding trademark clearance, registration, prosecution, licensing and protection. He litigates intellectual property and product labeling matters in federal and state courts.  He also represents brandowners before the Trademark Trial and Appeal Board.  Kieran's clients include fashion, footwear, hair care and skin care companies, publishers, professional sports marketing and merchandising companies, restaurants, food and beverage manufacturers.

Clients

Major League Baseball Properties, Inc.

Serendipity 3, Inc.

Trans-High Corporation (High Times)

Vogue International, Inc.

Stone Mountain Accessories, Inc.

Nature's Best, Inc.

Iconix Brands Group, Inc.

Cases

Trans-High Corporation, Inc. v. Richard Reimers,
2:14-CV-0279 (E.D. Washington. 2014)

Trans-High Corporation, Inc. v. Johnny Mennillo,
T-2197-14 (Canadian Federal Court, Toronto, 2014)

Converse v. Fortune Dynamic,
ITC Inv. No. 351-TA-936 (International Trade Commission, 2014)

Converse v. Nowhere, Inc.,
CV14 5991 (E.D.N.Y., 2014)

Converse v. Iconix Brands, Inc.,
ITC Inv. No. 351-TA-936 (International Trade Commission, 2014)

Golloher v. Todd Christopher International, Inc. d/b/a Vogue International,
Case No. C12-06002 RS (N. D. of CA, October 7, 2013)

Center for Environmental Health v. Vogue International,
RG 11580876 (CA Superior Court, September 13, 2012)

R Squared v. Serendipity 3, Inc.,
11 Civ. 7155 (S.D.N.Y., September 30, 2012)

Moroccanoil v. Vogue International, et.al,
Case No. CV10-10048 (C.D. of CA, January 7, 2011)

L.C. Licensing Inc. v. Berman,
86 U.SP.Q. 2d 1883 (T.T.A.B. 2008)

Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc.,
No. 01 CV 7406, 2004 U.S. Dist. Lexis 22637 (E.D.N.Y. 2004)

Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc.,
312 F.3d 94 (2d Cir. 2002)

Merkos L'Inyonei Chinuch, Inc. v. Mendel Sharf,
172 F. Supp. 2d 383 (E.D.N.Y. 2001)

Prior Experience

Patterson Belknap Webb & Tyler LLP, Associate (1995 - 98)

Legal Aid Society, Federal Defenders Division, Paralegal (1990 - 95)

Articles & Speeches

Article: Trademark Strategies for Emerging Marijuana Economy.  Westlaw Journal Intellectual Property (May 14, 2014)

Speech: Online Piracy and Counterfeiting.  CLL Fashion Seminar (June 13, 2013)

Speech: Rights of Publicity. AIPPI Lapland Symposium, Finland (March 2011)

Speech: Brands on the Silver Screen, the Television Screen and the Computer Screen.  Practising Law Institute Advanced Seminar on Trademark Law (April 2010)

Speech: Brands on the Silver Screen, the Television Screen and the Computer Screen.  Michigan IP Lawyers Association(April 2010)

Speech: Licensing Western Trademarks into Hong Kong and China. International Licensing Show, Hong Kong (January 2010)

Speech: Voiding Trademark Applications Where There is a Lack of Bona Fide Intent to Use. AIPLA Annual Meeting (October 2008)

Article:  Century 21, the New Kid in Town: The Third Circuit Crafts a New Nominative Fair Use Test. The Trademark Reporter (July-August 2007)

Speaker/Moderator: Trademark Fair Use & Parody.  PLI Advanced Seminar on Trademark Law.  (May 2007)

Moderator:  Trademark Anti-counterfeiting Efforts.  AIPLA Spring Meeting  (May 2007)

Speech:  Copyright and Trademark Parody.  CLL Publishing Seminar  (March 2007)

Article: Trademark Parody, Statutory and Nominative Fair Use Under the Lanham Act. (March 2007)

Speech: Trademark Statutory and Nominative Fair Use. (January 2006)

Client Alert: Supreme Court Holds Trademark Fair Use Defense Is Available Even When Confusion Is Likely. (December 2004)

Speech: What's in a Name: Domain Names and Trademarks in the New Media Environment. (January 2002)

Client Alert: The Electronic Signatures in Global and National Commerce Act. (August 2000)

Affiliations

Adjunct Professor, Trademark Law, New York University School of Continuing and Professional Studies.  (2007- Present)

Co-chair; Practising Law Institute Advanced Seminar in Trademark Law (2008-Present)

Vice-chair, American Intellectual Property Law Association Trademark Law Committee (2010 -2012)

Chair, AIPLA Anti-Counterfeiting and Anti-Piracy Committee (2006-2010)

Contributor to Copyright Annual Review (1998-2006)

Education

Fordham University School of Law (JD 1995; Law Review: Associate Editor 1993 - 95)

Fordham University (BA 1990)

Bar Admissions

New York

United States District Courts - Southern and Eastern Districts of New York


Sheldon Klein is a member of the firm’s Intellectual Property, Technology & Privacy and Franchise & Distribution practice groups. He has over 35 years’ experience in counseling, portfolio management, litigation, licensing, and transactions in the areas of trademark, copyright, unfair competition, advertising law, and social media. Sheldon assists clients with a wide range of issues, including selection, clearance, and registration of new trademarks. He conducts IP audits and due diligence investigations, drafts IP licenses and other agreements, and enforces IP rights via negotiation, litigation, and opposition and cancellation proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and foreign trademark offices.

Sheldon represents clients in a variety of industries, including franchise, internet/social media, hospitality, health care, telecommunications, broadcast, entertainment, manufacturing, building, food, pharmaceutical, medical device, banking, and insurance. 

Experience

  • Obtained declaratory judgment of trademark non-infringement on behalf of a major Washington-based trade association after a threat by a key competitor just prior to launch of a major rebranding effort
  • Obtained relief for a major U.S. furniture manufacturer from rampant imports of counterfeit goods via litigation, U.S. Customs seizure/destruction of goods at their port of entry and at retail locations in multiple states, and seizure/destruction of goods at their point of manufacture in Taiwan
  • Obtained summary judgment, upheld on appeal (Ninth Circuit), against terminated franchisee who continued to use part of a famous international franchisor’s trademark
  • Obtained relief from multiple copyright infringements for the creator of a famous graphic work via litigation, and for the owner of a famous sculptural work via negotiation
  • Obtained relief for operator of popular social network/e-commerce Web site from multiple clone sites via cease and desist letters and DMCA takedown notices
  • Advised offshore operator of auction Web sites on trademark, copyright, and content issues
  • Handled multiple deceptive advertising cases on behalf of a major U.S. telecommunications company and a multinational medical device manufacturer in arbitration before the National Advertising Division of the Council of Better Business Bureaus
  • Conducted copyright audit for a famous U.S. author
  • Resolved a longstanding trademark dispute among two major nonprofit organizations via a creative licensing agreement
  • Manage international trademark portfolios for numerous clients of Columbia Fourth Sixth and Ninth Circuits

Honors / Activities

Professional Activities

  • American Intellectual Property Law Association, Second Vice President, past Treasurer, Secretary; AIPLA Fellows, Past Chair; Trademark Law Committee, Past Chair
  • International Trademark Association, Trademark Office Practices Committee, Member; Internet Committee, Past Member
  • Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), Member
  • U.S. Patent and Trademark Office, Trademark Public Advisory Committee, Past Member
  • Bar Assn. of DC, Patent, Trademark & Copyright Section, Past Chair

Honors and Distinctions

  • Washington, DC Super Lawyer,” Super Lawyers, 2014-2016
  • Leading Trademark Lawyer, The International Who’s Who of Business Lawyers, 2007-2015
  • “Leading Trademark Lawyer,” World Trademark Review, 2011-2013, 2015- 2017
  • “Top Lawyers” in Intellectual Property, Washingtonian Magazine, 2011, 2013 

Community Involvement

  • Jewish Federation of Greater Washington, Vice President
  • Jewish Community Relations Council of Greater Washington, Board of Directors
  • Maryland-Israel Development Center, Montgomery County Steering Committee
  • Melvin J. Berman Academy of Greater Washington, Board of Directors

Industries

  • Food & Beverage
  • Software & Technology
  • Wholesale & Retail Distribution
  • Health Care
  • Advertising & Promotions 

Practices

  • Intellectual Property, Technology & Privacy
  • Trademark
  • Intellectual Property Litigation
  • Software & Technology Licensing
  • Copyright
  • Internet & E-Commerce
  • Trade Secrets 

Education

  • George Washington University, J.D., with honors
  • University of Michigan, B.A., with high distinction

Bar Admissions

  • District of Columbia
  • Maryland 

Court Admissions

  • U.S. Court of Appeals District
  • U.S. District Court District of Columbia Maryland
  • U.S. Supreme Court