This firm appears in the Who's Who Legal 100 2014
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FIRM OF THE YEAR – TRADEMARKS
Fross Zelnick Lehrman & Zissu is a specialist IP law firm with offices in Washington, DC and New York, and is widely acknowledged as a “global leader” for its work in relation to trademark, copyright, design patent and unfair competition matters. In 2013 the firm consolidated its reputation in the field, and acted for multinational clients including Kraft Foods and Gap in major US trademarks and copyright disputes respectively.
|FROSS ZELNICK LEHRMAN & ZISSU|
The firm demonstrated its commitment to hiring and retaining recognised IP lawyers with a partner hire in January 2014 to the New York office.
|Total Listings in WWL||17||Established||1969|
|Home jurisdiction||US||Total size of firm||45|
|Number of partners||25||Number of offices||2|
PEOPLE AND PRACTICES
The firm is “one of the foremost trademark specialists in the world” and is a “go-to” firm for all matters pertaining to US and international trademark law including registration, litigation, TTAB proceedings, due diligence for mergers and acquisitions, licensing and portfolio management. Indeed, the firm’s reputation in the field is corroborated by its recognition in our research as the leading trademark law firm of the year for the ninth consecutive time, and the fact that all 17 of the firm’s nominations come in the corresponding chapter. David Donahue is an “exceptional litigator” and represents major clients before the US federal and state trial and appellate courts. He also negotiates commercial agreements relating to trademark matters including assignments and licences and is described as a “highly proficient draftsman”. Roger Zissu is a “dean” of the US trademark bar and regularly acts for plaintiffs and defendants in relation to the ownership and infringement of trademarks and trademark concurrent use agreements. Ronald Lehrman is a “greatly respected” lawyer who specialises in international trademark enforcement, acquisition and licensing. He also advises extensively on ownership policy and portfolio management, and peers are full of praise for his “cross-border know-how”. The “superb” Craig Mende advises on the full range of trademark matters and has a particular focus on the drafting and negotiation of licences. He is described as an “extraordinary advocate” and regularly oversees enforcement programmes for clients in the apparel and health-care industries. Mark Engelmann is a “real authority” on trademark clearance and enforcement strategy and advises a diverse range of major international clients including a prominent jewellery manufacturer, a “Big Four” accounting firm, a leading provider of engineering and architectural software and a large producer and distributor of alcoholic beverages on the intellectual property aspects of corporate transactions. Stephen Bigger is a “key name” in the US and international markets and has a “highly distinguished” practice focusing on the entertainment industry; he represents many established entertainment groups, performers and entertainment companies in protecting their names and trademarks in the US and globally. The “outstanding” Lydia Gobena manages global trademark clearance projects which involve risk evaluation, investigations and negotiations relating to third-party rights. Praised for her “creativity and expert planning”, she develops strategies for acquiring, enforcing and assigning trademark rights with a focus on numerous domestic laws and international treaties. Lawrence Apolzon is a “top-notch” practitioner with experience in general trademark counselling, searching, filing and strategy. He regularly appears before the US Patent and Trademark Office and is “extremely knowledgeable” on policing and enforcement matters. The “sharp and intelligent” Allison Strickland Ricketts focuses on trademark counselling, filing and protection and is particularly active in the pharmaceutical, character merchandising and consumer products fields. Nadine Jacobson is a “renowned expert” in the field and litigates international and multi-country trademark disputes. Described as “professional and diligent” by peers and clients alike, she focuses on trademark-related matters in the pharmaceutical, restaurant and hotel, cosmetics, entertainment and financial services industries. Peter Silverman has “valuable experience” in trademark prosecution and litigation and is lauded for his “highly innovative” strategies for complex international trademark conflicts.
Cara Boyle acts for clients in a broad range of industries including consumer goods, automotive products, pharma, music, entertainment, fashion, and food and beverages. She manages trademark portfolios and enforcement proceedings and recently helped secure an injunction on behalf of a large US company against a large scale infringer in a trademark infringement, trade dress and unfair competition litigation in China. Carlos Cucurella is a member of the international IP group and advises clients on trademark clearance, registration, licensing, anti-counterfeiting, policing and enforcement. Susan Upton Douglass is “superb” on trademark counselling, conflict resolution and the negotiation and drafting of licence agreements. David Ehrlich manages US trademark portfolios, prosecutes US trademark applications and litigates on behalf of clients in appeals, opposition, cancellation and infringement proceedings. Janet Hoffman is particularly well known for her experience in eastern Europe and advises on trademark, copyright and unfair competition. Barbara Solomon excels in the area of trademarks including internet-related matters such as domain name issues.
Fross Zelnick Lehrman & Zissu is committed to providing free legal counsel to organisations which support a good cause. Particularly prominent in this respect is Stephen Bigger, who represents Teach For America on a pro bono basis in international jurisdictions. He also acts for Lawyers Without Borders in protecting their trademarks and other intellectual property; the organisation itself provides pro bono legal services throughout the world and is supported by some of the largest and most prominent general practice law firms in the US and further afield.
In 2014, the firm aims to further strengthen its position as an “undisputed leader” for international IP law advice and fully establish itself as the largest firm working exclusively in this area. Through a combination of counselling, portfolio management and litigation, focusing on IP assets in the US and throughout the world, the firms intends to expand its already impressive client network and ensure it is a recognised resource for advice in rapidly evolving areas such as internet-related IP law.
Fross Zelnick Lehrman & Zissu, PC was founded in New York in 1969 by a group of leading international trademark lawyers who shared a commitment to provide premium client service and be the best in their field. They set out to challenge the business model of the larger, well-established firms by providing the highest level of international trademark advice at a reasonable cost. Today, Fross Zelnick is a law firm of nearly 50 attorneys, from diverse backgrounds.
According to surveys of in-house and outside counsel in our field, Fross Zelnick is considered the premier firm in the world for trademark, copyright, design patent and unfair competition law, and we are probably the largest law firm dealing exclusively with this subject matter. Our lawyers are also consistently recognised by numerous publications around the world as experts in the field.
Because we offer clients comparable strength in both US and international work (a rarity in our field), and maintain active relationships with leading practitioners around the globe, we are uniquely positioned to help owners of worldwide trademark portfolios establish, maintain, protect and make profitable use of their trademark rights. All of our attorneys are trademark experts, and each is an in-depth specialist in at least one area of trademark and unfair competition law.
Litigate Intellectual Property Rights
Fross Zelnick stands alone in the top tier of trademark and copyright litigation firms in the US. Our reputation for successful litigation often leads to settling disputes without court proceedings. When litigation is unavoidable, our litigators know how to fight for clients and win. Internationally, Fross Zelnick has wide experience in foreign and multi-country trademark and copyright litigation and a history of success in recapturing pirated well-known marks.
Register Trademarks, Copyrights and Design Patents
Fross Zelnick is consistently among the top filers of US trademark applications. We can register our clients’ trademarks, copyrights and design patents. Our specialised knowledge in this area means that we know how to get the job done efficiently and obtain rights that will stand up in court.
We are highly experienced in anti-counterfeiting and enforcement matters. Fross Zelnick has developed sophisticated and cost-effective enforcement programmes for our clients to prevent the importation, sale and distribution of a wide variety of infringing or counterfeit products including apparel, footwear, cosmetics and luxury goods. Included in these programmes is the recordal of relevant intellectual property rights with customs in the US and internationally.
Manage Global Portfolios
We are known for providing expert global intellectual property management. Working closely with our select network of foreign counsel, Fross Zelnick protects intellectual property rights in the US and throughout the world. Our experience enables us to identify, protect and defend our clients’ rights under copyright, trademark, trade dress, design patent, trade secret and related laws.
Negotiate IP Transactions
Whether a client is buying or selling an entire business or part of a portfolio, Fross Zelnick can negotiate licences and related agreements that safeguard our clients’ business and legal interests. We conduct due diligence reviews for mergers, acquisitions and other corporate ventures, and record the corporate changes against our clients’ IP registrations worldwide once the deal is done.
Protect Characters and Celebrities
For decades Fross Zelnick lawyers have protected famous entertainment characters through sophisticated copyright protection strategies and enforcement against infringers. We have also retrieved numerous infringing or disparaging trademarks and domain names for celebrities, and litigated high-profile cases involving the unauthorised use of well-known names and likenesses.
Conquer the Internet
Internet law is evolving as rapidly as the medium itself and much of it is rooted in trademark and copyright law. Our lawyers litigate uniform domain name dispute resolution proceedings against cybersquatters, advise on worldwide domain name registration and disputes, monitor the web for infringements, negotiate linking and key word agreements, draft privacy policies and develop strategies for policing and protecting IP rights on the internet.
Practice Areas: Trademarks, Copyright, Design Patents, Unfair Competition
Tel: +1 212 813 5900
Ron Lehrman; Roger Zissu; Peter Silverman
Ron Lehrman – General
Roger Zissu – US Litigation
Lawrence Apolzon – US counselling and prosecution
Peter Silverman – International counselling, prosecution and litigation
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Nominees have been selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.