Intellectual Property and Brand Management
National leading companies and emerging innovators alike routinely turn to the services of Mandelbaum Barrett to protect and enforce their most important assets —domestic and international intellectual property rights spanning trademarks, copyrights, patents, rights of publicity, trade secrets, and related reputational interests.
Mandelbaum Barrett’s Intellectual Property & Brand Management Group 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 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.
Headed by Group Chair Joel MacMull, a nationally recognized leader in the area of trademarks, unfair competition, and First Amendment protections, Mandelbaum Barrett’s Intellectual Property & Brand Management Group has extensive experience litigating the most difficult trademark, 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 state and federal 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, 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. These cases often involve multiple patents and may include counterclaims and non-patent issues such as tort and trade secret claims.
The Group’s members hold a variety of advanced degrees and backgrounds in science and engineering, and have extensive 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.
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 to secure patent and trademark rights for its proprietary product. Mandelbaum Barrett partners Casey Gocel, Joel MacMull and Barry Schwartz advised on the launch of CHAR, a proprietary blend of activated charcoal and magnesium carbonate used by weightlifters, […]
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'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
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.
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.