Mitchell H. Stabbe, Partner

Mitchell Stabbe has over thirty years of experience in virtually all aspects of trademark law. Over the course of his career, Mitch has experienced numerous changes in trademark law and in technology, with the former often several steps behind the latter. Today, his practice focuses on the ever-evolving interplay between trademarks and the Internet. Over the last few years, for example, Mitch has regularly advised clients and provided comments to ICANN concerning the roll-out of hundreds of new generic top level domains (gTLDs) and the protections available to brand owners against cybersquatting and other domain name abuses.

Mitch also counsels clients on the availability and registration of trademarks and service marks and has prosecuted over a thousand applications before the US Patent and Trademark Office. He also is experienced in drafting and negotiating contracts, licenses, assignments and security interests involving intellectual property rights.

Mitch has litigated numerous trademark and copyright infringement and unfair competition civil actions in federal court, including actions against infringers and gray market importers, as well as adversary proceedings in federal court and before the Trademark Trial and Appeal Board (TTAB). In addition, he has successfully prosecuted over fifty claims under the Uniform Dispute Resolution Policy (UDRP) to compel the transfer of domain names registered in bad faith.

He has represented companies from a wide array of industries, including communications, media, publishing, technology, education, not-for-profit associations, real estate leasing, banking, and premium cigars.

Since 1997, Mitch has been rated AV Preeminent by Martindale-Hubbell as well as being ranked one of Washington D.C.'s and Baltimore's Top Rated Lawyers. Mitch was named as a WTR 1000 Leading Trademark Practitioner for the last four years.

Some of Mitch’s representative experiences include the following:

  • Defeated a trademark claim made against a US e-commerce client by a Canadian company with the same name which argued that the US company’s online app for its customers should be removed from iTunes
  • On behalf of a national trade association, Mitch drafted comments on the proposals by ICANN for trademark protection mechanisms in the new gTLD program
  • Defended a trademark infringement claim in federal court brought against a regional cable company after it adopted a new name that matched the second level domain name of a company in a different business, but was receiving hundreds of misdirected e-mails each month.
  • In less than a week, Mitch recovered the domain name for an educational institution that was in the process of being sold from the webmaster who had registered it in his own name and refused to transfer the domain name unless he was paid $1 million from the sales proceeds.
  • On behalf of a small premium cigar manufacturer whose family name is the company’s house mark, Mitch obtained a preliminary injunction against a large cigar manufacturer who hired the brother of the client’s founder and named a cigar line after him
     
 
PUBLICATIONS
 
• “Court of Appeals Rules that Prohibition Against Federal Registration of Disparaging Trademarks is Unconstitutional Restriction of Free Speech,” Broadcast Law Blog (Dec. 27, 2015)
 
•“A Strategy in Five Easy Pieces (New gTLD Domain Name Registrations),” 51 World Trademark Review 111 (Oct./Nov. 2014)
 
• “Keyword Advertising Trademark Infringement Litigation: An Uphill Battle,” 41 World Trademark Review 94 (Feb. Mar. 2013)
 
• “Protect Your Rights: Preparing for the Impact of New gTLDs on Domain Name Management in the United States,” 37 World Trademark Review World Trademark Review 118 (June/July 2012)
 
• “‘Reveal Day’ for New Generic Top Level Domain Applications” (June 18, 2012)
 
• “New gTLDs Update – New gTLD Applications Will Be Published on June 13 – Some Applicants Have Offered A Sneak Preview” (June 11, 2012)
 
• “Supreme Court Upholds Law Restoring Copyright Protection to Foreign Works,” (Jan. 20, 2012)
 
• “Coming Soon – For Better or Worse – Unlimited Numbers of New Generic Top Level Domains” (Dec. 15, 2011)
 
• “Protecting Your Marks in the .xxx Domain,” (Aug. 4, 2011)
 
• “Keyword Advertising: To Buy or Not to Buy?,” 4 MLRC Bulletin (Dec. 2007)
 
• “You’ve Got to Fight for Your Right to Trademark,” 28 American Journalism Review 64 (April/May 2006).
 
• “Fair or Foul: Using Sport Teams’ Trademarks Can Cost the Media Money,” 27 American Journalism Review 68 (Aug./Sept. 2005)
 
• “Developments In Domain Name Disputes In The United States Courts,” Supplement to INTA’s “Trademark Law & The Internet: Issues, Case Law and Practice Tips” (2003)
 
• “Guarding Marks on the Web,” Legal Times (Apr. 12, 1999).
 
• “New Day Dawning for Domain Names,” The Internet Newsletter: Legal & Business Aspects (Mar. 1998)
 
 
 
SPEAKING ENGAGEMENTS
 
• “Where the Medium is the Message: Rights of Publicity & Traditional Media,” AIPLA Spring Meeting (Apr. 29, 2015 Los Angeles, California)
 
• “Keyword Advertising and Trademark Infringement,” Strafford CLE Webinar (Aug. 27, 2013)
 
• “Keyword Advertising and Trademark Infringement,” Strafford CLE Webinar (Apr. 29, 2010)
 
• “Trademark Searching On The Internet,” INTA Annual Meeting (May 16, 2005 San Diego, California)
 
• “The Exercise of Personal Jurisdiction by United States Courts in Internet-Related Disputes,” INTA Trademarks in Cyberspace Conference 2003 (Sept. 23, 2003 Arlington, Virginia)
 
• “New Issues in Trademarks, Cyberspace and Internet Law,” INTA 2002 U.S. Trademark Basics Program (Feb. 5, 2002 Dallas, Texas)
 
• “Protecting Your Trademarks In Cyberspace,” ACI Online Insurance Transactions Conference (Nov. 13, 2001 New York, NY)
 
• “Domain Name Registration In The Age Of Competition,” INTA Cyberspace Conference 2000 (Oct. 16, 2000 Boston, Massachusetts)
 
• “Protecting Trademarks in Cyberspace,” 40th Annual Conference, National Association of College and University Attorneys (June 26, 2000 Washington, D.C.)
 
• “How to Litigate a Trademark Case,” District of Columbia Bar 2000 Winter Convention (Mar. 3, 2000 Washington, D.C.)
 
•  “How to Litigate a Trademark Case,” District of Columbia Bar /George Washington University Continuing Legal Education Program (Jan. 26, 1999 Washington, D.C.)
 

 

CONTACT

WASHINGTON DC
E mstabbe@wbklaw.com
P 202.383.3379
F 202.783.5851
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BAR ADMISSIONS

District of Columbia, 1980
Maryland, 1982
Florida, 1993

EDUCATION

J.D., University of Chicago, 1980
B.A., University of Rochester, 1977

PRACTICE AREAS

Administrative & Court Litigation
Corporate & Commercial Transactions
FTC & Consumer Protection
Trademarks
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