Mitch has assisted clients in virtually all aspects of trademark law over the last 40 years, staying one step ahead of the curve as changes in trademark law have struggled to keep up with changes in technology. He has represented companies from a wide array of industries, including communications, media, publishing, technology start-ups, education, not-for-profit associations, real estate leasing, banking, and premium cigars.
Clients turn to Mitch for his breadth of knowledge, creative solutions, and practical common sense. Today, Mitch focuses on the ever-evolving interplay between trademarks and the Internet. For example, Mitch advises clients issues arising from on the roll-out of new generic top-level domains (gTLDs) as well as the protections available against cybersquatting and other domain name abuses.
Mitch also counsels clients on the availability, registration, maintenance, and enforcement of trademarks and service marks. He has successfully prosecuted over a thousand applications before the US Patent and Trademark Office, handled numerous trademark and copyright infringement and unfair competition claims (including civil actions in federal court against infringers, cybersquatters and gray market importers), adversary proceedings before the Trademark Trial and Appeal Board (TTAB) involving the right to register a trademark, and over sixty claims under the Uniform Dispute Resolution Policy (UDRP) to compel the transfer of domain names registered in bad faith. In addition, he drafts and negotiates contracts, licenses, assignments and security interests involving intellectual property rights.
- Obtained an order under the UDRP compelling the transfer of a domain name against a Florida degree mill that copied the name of a nationally-known university and added the phrase “of Peace” to the end and adopted a second-level domain name identical to the client’s domain name, but with the letters “op” added.
- Stopped online company from selling counterfeit items bearing client’s trademarks and logos.
- Obtained an order under the UDRP compelling transfer of domain names virtually identical to the names of client’s entertainment venues, which forwarded visitors to third-party ticket sales platforms.
- 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.
- Drafted comments on behalf of a national trade association on the ICANN proposals 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, 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, 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.
- WTR 1000 (2022)
- Martindale-Hubbell – AV Preeminent Peer Rated
- INTA Internet Committee
- “NCAA Tournament Advertising: Use of Trademarks and … One More Thing (2022 Update – Part 2)” (March 9, 2022)
- “NCAA Tournament Advertising: Use of Trademarks and … One More Thing (2022 Update – Part 1)” (March 8, 2022)
- “US Dilution Case Law Database Relaunched,” INTA Bulletin, Vol. 77, No. 8 (Feb. 16, 2022)
- “The Clock is Ticking Towards the Super Bowl: 2022 Update on Super Bowl Advertising and Promotions” (Jan. 27, 2022)
- “March Madness Trademarks: Tips To Avoid A Foul Call from the NCAA” (2021 Update – Part 2) (March 10, 2021)
- “March Madness Trademarks: Tips to Avoid a Foul Call from the NCAA (2021 Update – Part 1)” (March 9, 2021)
- “U.S. Dilution Case Law Database Provides Insights on Proving the Fame of Marks,” Co-Author, INTA Bulletin, Vol. 74, No. 21 (Dec. 15, 2019)
- “March Madness: Nothing But Net for Trademark Infringement Claims,” Broadcast Law Blog (March 15, 2019)
- “As Super Bowl Approaches, Advertisers Should Be Aware of The NFL’s Efforts to Protect Its Golden Goose – 2019 Update on Super Bowl Advertising and Promotions,” Co-Author with Michael Keegan, Broadcast Law Blog (Jan. 23, 2019)
- “Solve for ‘X’: ‘NFL’ is to ‘Super Bowl’ as ‘USOC’ is to ‘Olympics’ as ‘NCAA’ is to ‘X’,” Broadcast Law Blog (March 15, 2018)
- “The Super Bowl is Over – Let’s Talk About the Olympics and Trademarks,” Broadcast Law Blog (Feb. 5, 2018)
- “As Super Bowl Approaches, Advertisers Should Be Aware of The NFL’s Efforts to Protect Its Golden Goose – 2018 Update on Super Bowl Advertising and Promotions,” Broadcast Law Blog (Jan. 11, 2018)
- “INTA Study Provides Data on How Brands Are Using New gTLD Program,” Co-Author, INTA Bulletin, Vol. 72, No. 12 (July 15, 2017)
- “‘Where seldom is heard a discouraging word?’ Supreme Court Allows the Federal Registration of Disparaging Trademarks,” Broadcast Law Blog (June 22, 2017)
- “Accepting Advertising for Marijuana or Marijuana Paraphernalia: The Trademark Office Rules on a Related Issue that Provides More Reason For Caution,” Broadcast Law Blog (Dec. 13, 2016)
- “Trademark Tuesday, Election Day Special – Trademark Tales from the Campaign Trail,” Co-Author with Kelly Donohue, Broadcast law Blog (Nov. 16, 2016)
- “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 (April 12, 1999)
- “New Day Dawning for Domain Names,” The Internet Newsletter: Legal & Business Aspects (March 1998)
Speeches and Presentations
- “Are You Ready for the Big Game? Navigating Unlicensed Super Bowl Advertising,” Association of Corporate Counsel (ACC) Webinar (Jan. 18, 2022)
- “Use of Trademarks, Trademarked Products and NIL in Creative Works,” Lawline CLE Webinar (July 14, 2021 | New York, NY)
- “Use of Trademarks and Celebrity Images in Movies, TV, Video Games & Other Media,” Lawline CLE Webinar (Oct. 26, 2018 | New York, NY)
- “Where the Medium is the Message: Rights of Publicity & Traditional Media,” AIPLA Spring Meeting (April 29, 2015 | Los Angeles, California)
- “Keyword Advertising and Trademark Infringement,” Strafford CLE Webinar (Aug. 27, 2013)
- “Keyword Advertising and Trademark Infringement,” Strafford CLE Webinar (April 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 (March 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.)
Pro Bono and Volunteer Projects
- Chief Troy Kerry ex rel. The Apalachee Indians of Louisiana, Talamali Band v. Talimali Band of The Apalachee Indians of Louisiana, Opposition No. 92/074,759 (TTAB)