Intellectual Property and Brand Management

Mandelbaum Barrett’s Intellectual Property and Brand Management Group is led by Group Co-Chairs Joel MacMull and Todd Nosher, and Patent Practice Chair Lucian Chen, all nationally recognized leaders in their respective fields. National leading companies and emerging innovators alike routinely turn to the services of Mandelbaum Barrett PC to protect and enforce their most important assets — domestic and international intellectual property rights spanning trademarks, patents, copyrights, rights of publicity, trade secrets, and related reputational interests.

Mandelbaum Barrett PC’s Intellectual Property & Brand Management Practice group is a full-service intellectual property practice that litigates and counsels on all aspects of intellectual property for clients in key, economically vibrant industries where cutting-edge intellectual property protections and brand integrity are critical, including technology, life sciences, consumer goods, food and beverage, fashion and luxury, and media. Our record in matters throughout the United States has earned Mandelbaum Barrett PC a reputation as a go-to firm handling complex, high-stakes cases, including appeals, where the right to make or sell core products may be at risk.

The Group prides itself as being at the forefront of novel issues involving intellectual property and free speech protections, and its members have played a critical role in seminal cases around the country. Unlike firms that fall on one side or the other, we stand at the cross-roads of intellectual property protections and free speech considerations, devising practical business solutions to achieve our client’s goals.

Mandelbaum Barrett PC’s Intellectual Property & Brand Management Group has extensive experience litigating the most difficult trademark, patent, trade dress, unfair competition, and anti-counterfeiting cases, including both obtaining and defending against temporary restraining orders and preliminary injunctions, and at trials that often are conducted on an expedited basis. We represent clients in federal and state courts — including before the United States Supreme Court and various U.S. Courts of Appeal throughout the country — and before the Patent and Trademark Office, Trademark Trial and Appeal Board, Patent Trial and Appeal Board, International Trade Commission, and domestic and international arbitral tribunals.

Our copyright practice encompasses our litigation, licensing, corporate and counseling practices. We offer full-service protection for clients that are seeking to obtain, enhance, and defend the value of their copyright assets, as well as clients that use copyrighted materials. Our lawyers work both on enforcing copyrights and on cutting-edge litigation at the intersection of copyrights, technology and the Internet. We regularly advise clients on a wide range of matters, including the acquisition and licensing of copyrighted materials, publishing and development agreements, technological and product developments and issues of fair use and the application of the Digital Millennium Copyright Act.

As the volume of digital content has exploded in recent years, our lawyers have developed broad knowledge and experience in a wide range of issues affecting Internet-based companies and the media, covering both litigation and transactional matters. We regularly provide advice and aggressively and effectively litigate a variety of issues impacting these industries, such as the right of publicity, defamation, false light, First Amendment protections and the licensing, sale, distribution and transfer of rights, as well as other business or contractual disputes. We also counsel our corporate clients and litigate in the increasingly busy area of employment-related defamation matters.

The Group’s members have experience on both sides of disputes involving trade secrets, key personnel restrictive covenants, and other legal issues that arise when top tier talent make transitions in their employment. We have been successful in both obtaining and defeating motions for temporary restraining orders and preliminary injunctions, as well as motions for expedited discovery aimed at quickly preventing the movement of key teams and business leaders and preserving confidential business information.
We also provide strategic advice to help clients in a broad range of industries protect their human capital, business relationships, confidential information and trade secrets. Our team works closely with our Employment Practice Group to navigate group hires and to draft confidentiality, non-compete, non-solicit and employment agreements, and related employer policies aimed at securing confidential and proprietary information.

Working closely with the firm’s Internet Law Practice Group, the Intellectual Property & Brand Management Group advises clients on developing and improving their Internet strategy. Whether in the area of acquisition, the sale of domain portfolios, or the enforcement of rights arising under trademark law, the firm’s lawyers are at the forefront of advising clients on practical strategies for the protection of brand ownership in the Internet era.

Our patent drafting and enforcement team combines years of professional industry experience with proven trial and appellate outcomes, strategic approaches, and technological knowledge to obtain, enforce and defend our clients’ patent rights. Our patent attorneys, who hold a variety of advanced degrees and backgrounds in science and engineering, can help you navigate the patent procurement process by developing a strategy specifically tailored not only to your invention – but your overall intellectual property portfolio both domestically and internationally.

The team has a vast experience litigating and counseling in numerous fields, including, chemical engineering, consumer electronics, wireless technologies, telecommunications, the internet and cloud-based applications, software, and design and business method patents.

Our team includes registered patent attorneys who are experienced in filing applications with the United States patent and Trademark Office to obtaining US patents for our clients. And we frequently work with colleagues abroad to help our clients obtain patent protection in jurisdiction worldwide. Likewise, our patent litigators are skilled and experienced, handling well over 100 patent cases in federal courts throughout the country. Our patent team also counsels and represents clients before the Patent Trial and Appeal Board in Inter Partes Review, Post Grant Review, and ex parte reexaminations proceedings.

At Mandelbaum Barrett PC, we recognize the critical importance of intellectual property and brand management within the hospitality industry. Our legal team is skilled in handling the unique challenges faced by hospitality businesses, from trademark registration and brand protection to navigating complex internet law for online marketing and bookings. We provide tailored advice and support to ensure that your hospitality ventures are not only compliant with the latest regulations but also strategically positioned to leverage their brand identity effectively in competitive markets. Explore our comprehensive range of hospitality services here.

Mandelbaum Barrett PC Earns Prestigious Inc. 2023 Power Partner Award for Excellence in Legal Services

November 7, 2023

We are thrilled to announce that Mandelbaum Barrett PC has been honored with the prestigious title of Inc.’s 2023 Power Partner! This recognition reflects our unwavering dedication to delivering exceptional legal services and our relentless commitment to offering comprehensive support to our valued clients. We understand that our success is intrinsically tied to yours, and we are honored to stand by your side on your journey to success.

The Rogers Test Dances Between Trademark Protection Under the Lanham Act and Freedom of Speech Under the First Amendment

October 28, 2022

Published in the Sept.-Oct. 2022 edition of The Trademark Reporter “Life imitates art far more than art imitates life,” according to Oscar Wilde; and therefore, our perception of life is changed by art. Watching a sunset may remind you of an artist’s painting for in that moment life imitates art. The beauty of nature is […]

Mandelbaum Salsburg Client Char Chalk Launches Patented Product for Athletes and Fitness Enthusiasts

August 5, 2020

The owners of Char Chalk, the workout industry’s only activated charcoal chalk, recently turned to Mandelbaum Barrett PC to secure patent and trademark rights for its proprietary product. Mandelbaum Barrett PC partners Casey Gocel, Joel MacMull and Barry Schwartz advised on the launch of CHAR, a proprietary blend of activated charcoal and magnesium carbonate used […]

Federal Relief Bill Extends to Copyright, Trademark and Patent Filings

March 30, 2020

March 30, 2020 By Joel G. MacMull The $2 trillion coronavirus rescue bill signed by President Trump last Friday contains some potentially important relief for intellectual property rights owners and applicants. The Coronavirus Aid, Relief and Economic Security Act (“CARES Act”) contains provisions that allow both the U.S. Copyright Office as well as the U.S. Patent […]

Joel MacMull Quoted in Yahoo Finance Article on "Why the Backlash Over Kim Kardashian Trademarking 'Kimono' Strengthens Her Legal Case"

June 28, 2019

Joel MacMull, Vice Chair of the Firm's Intellectual Property & Brand Management Practice was quoted in an article for Yahoo Finance on "Why the backlash over Kim Kardashian trademarking 'Kimono' strengthens her legal case." Read more here.

Joel MacMull Comments on Women's Wear Daily Article About Supreme Court Decision in the "FUCT" Case

June 26, 2019

Joel MacMull, Vice Chair of Mandelbaum Barrett PC's IntellectualProperty and BrandManagement Practice Group commented yesterday on a Women's Wear Daily (WWD) article talking about the recent Supreme Court decision in the "FUCT" case that struck down restrictions on "immoral or scandalous" trademarks. Read what Joel and other industry leaders have to say here.

Joel MacMull Participates in Panel at the 140th INTA Annual Meeting in Seattle

May 22, 2018

Joel MacMull, Vice Chair of the Firm's Intellectual Property & Brand Management Practice Group, participated in a panel discussion at the 140th INTA Annual Meeting, taking place in Seattle on Disparaging Marks and Mascots.

Peter Levy Featured in a Patch.Com Story on Ten Tips to Launching a Successful Business

September 22, 2017

Check out what Peter A. Levy, Chair of the Firm's Intellectual Property Practice Group has to say about launching a successful business in this weekend's Patch!

Member Peter A. Levy Article Featured in June 16, 2016 Edition of Inc. Magazine

June 16, 2016

Peter A. Levy, a Member of the Firm and Chair of the Life Sciences and Intellectual Property Practices, specializes in structuring, financing, and operating “start-up companies”. He has written over 200 business plans and launched dozens of start-ups over the past 15 years. Inc. Magazine

The Crucial Benefits of Early Trademark Filing

July 11, 2024

Todd M. Nosher and Lucian C. Chen from Mandelbaum Barrett PC emphasize the critical role of early trademark filing in safeguarding businesses. By securing trademarks promptly, companies can preempt legal issues and establish vital protections for their brands, ensuring long-term success and avoiding costly disputes. Watch their insights here:

Securing Your Innovations: Intellectual Property Strategies

May 4, 2024

With innovation, it is necessary to protect your ideas and products. Intellectual property (IP) rights are crucial for safeguarding the unique offerings of your business and protection of your brand identity. To ensure the security of your innovations and brand identity, let’s discuss some strategies you can implement.  Understand the Types of IP Protection  The […]

Spicy Saga of Chili Crunch Trademark Rights

April 29, 2024

In a heated twist on intellectual property debates, the Chili Crunch controversy has simmered into the spotlight, showcasing the spicy interplay between legal battles and brand image in the culinary world. In a revealing discussion, Lucian Chen and Todd M. Nosher peel back the layers of this recent trademark tussle involving Momofuku, serving up a rich narrative that highlights the evolving challenges in the food industry’s trademark landscape.

Avoid the troll – How to Protect you and your business from inadvertent copyright problems

April 24, 2024

In the face of rising copyright infringement cases, largely driven by so-called “copyright trolls,” it’s vital to understand the nuances of copyright law. Often, these entities issue threatening letters seeking settlements for alleged unauthorized content, citing severe penalties. However, they typically target cases of non-willful infringement, where penalties significantly lessen. It’s crucial to consult with a lawyer and conduct regular copyright audits to avoid such predicaments.

Discover Joel MacMull’s Latest Podcast: AI, The Law, & You

March 1, 2024

Welcome to “AI, The Law, & You,” where Joel MacMull, Mark Miller, and Shannon Lietz dissect the legal implications of AI. Expect unfiltered debates and authentic dialogues on topics from intellectual property to data privacy. Subscribe for thought-provoking conversations shaping the future of AI law. Join the discussion today!

Wave Goodbye to Trademark Rules: Vans vs. MSCHF – The Wavy Baby Showdown

December 26, 2023

In the realm where fashion and intellectual property intersect, a legal clash between Vans Inc. and MSCHF has set the stage for an intriguing debate that transcends mere product design. Joel MacMull, Chair of the Intellectual Property, Brand Management, and Internet Law practice at Mandelbaum Barrett PC, recently delved into this captivating case in a comprehensive exploration of its key elements.

MacMull’s Musings

October 2, 2023

Tune in every week to MacMull’s Musings where our IP, Brand Management, and Internet Law attorney Chair, Joel MacMull discusses all the new, exciting, and potentially controversial updates in the world of Internet Law and intellectual property. Episode 1. The state of Illinois passed legislation designed to protect child social media influencers. Listen in to […]

Top 3 Things to Note as a U.S. Copyright or Trademark Owner in 2023

June 9, 2023

Joel MacMull shares his insights from the International Trademark Association’s (INTA) Annual General Meeting in Singapore. Discover the top 3 issues for U.S. copyright and trademark owners in 2023, including unconventional trademark uses, the extraterritoriality of the Lanham Act, and a significant New Mexico case.

Joel G. MacMull Explores the Potential Traps of AI in the Legal Field for the New York Law Journal

May 22, 2023

MacMull offers valuable insights from his article “AI and Practicing Law: Potential Traps for the Unwary,” covering crucial aspects such as privacy concerns, issues of quality, loss of goodwill, and intellectual property considerations. Gain a comprehensive understanding of the challenges faced by legal professionals in navigating the intersection of AI and law.

Podcast: That’s in my EULA?

April 10, 2023

“That’s in my EULA??” is a podcast hosted by Mark Miller and Joel MacMull, Partner at Mandelbaum Barrett. The podcast explores the mysterious and often overlooked world of End-User License Agreements (EULAs), revealing hidden clauses in popular app EULAs. In Episode 1, they discuss the legal implications of using AI engines such as ChatGPT, and in Episode 2, they take a deep dive into the TikTok terms of service. Tune in to discover the legal considerations users should keep in mind when using popular apps.

Social Media Posts Are Ads

October 13, 2022

Therefore, Subject to Being Regulated “It’s a business lie — it’s different from a life lie” is a very funny line uttered by Alan Arkin in the movie Sunshine Cleaning. As funny as the comment is, however, it underscores a misconception that many have regarding what’s acceptable to say — or in this case not […]

"Can it still be called Gruyère, if it doesn't come from Gruyère?"

January 19, 2022

This was the question answered by United States District Court for the Eastern District of Virginia in December when it affirmed a decision by the Trademark Trial Appeal Board refusing registration of a certification mark application for GRUYERE based on genericness (or genericide, as I like to call it.)

The Supreme Court Issues Decision in Iancu v. Brunetti

June 25, 2019

The Supreme Court issued its decision in Iancu v. Brunetti yesterday almost two years to the day after its landmark ruling in Matal v. Tam, the latter which our Intellectual Property team of Ronald Coleman and Joel MacMull served time as lead counsel on.

These stories are successful case results from our attorneys. Please note that results may vary depending on your particular facts and legal circumstances.

Joel MacMull and Brian Block are celebrating a significant win in recovering attorneys’ fees in connection with a contempt proceeding brought on behalf of one the firm’s clients.

April 7, 2022

Mandelbaum Barrett PC’s Intellectual Property, Brand Management and Internet Law Practice Group is well-positioned to assist clients in a variety of cutting-edge intellectual property and brand management issues.

U.S. Supreme Court

• Matal v. Tam, 137 S. Ct. 1744 (2017) (securing unanimous ruling on behalf of trademark applicant in appeal of Trademark Trial and Appeal Board’s refusal to grant our client a trademark on grounds it was disparaging toward Asian Americans).
• Belmora LLC et al. v. Bayer Consumer Care AG et al., 137 S. Ct. 1202 (2017) (addressing whether Sections 14(2) and 43(a) of Federal Trademark Act allow a foreign business that has neither used nor registered its trademark in the United States to sue an owner of a U.S. trademark for conduct relating to owner’s use of its mark).

U.S. Courts of Appeal

• I.O.B. Realty, Inc. v. Patsy’s Brand, Inc. No. 20-1988 (2d Cir. 2021) (vacating trial court’s decision that ordered United States Patent and Trademark Office to grant plaintiff’s trademark application and dismissing case in favor of firm’s client).
• In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), as corrected (Feb. 11, 2016 (vacating and remanding decision by the Trademark Trial and Appeal Board in determining that the disparagement clause of the federal Trademark Act was facially invalid under the Free Speech Clause of the First Amendment).

U.S. District Courts

• CMC Food, Inc. v. Mitlitsky Eggs, LLC, 18-cv-8939, 2019 WL 5206104 (D.N.J. Oct. 16, 2019) (denying defendants’ motion to dismiss plaintiffs’ trademark infringment and related counterfeiting claims).
• Heritage of Pride, Inc. v. Matinee NYC Inc., 14-cv-4165, 2014 WL 3703871 (S.D.N.Y. July 23, 2014) (successfully opposed plaintiff’s motion for civil contempt arising from defendants’ alleged failure to comply with the Court’s preliminary injunction order barring the use of plaintiff’s trademarks.