Janet Satterthwaite is an internationally recognized and versatile trademark attorney. She provides seamless, practical, one-stop guidance on global trademark counseling, prosecution and portfolio management, licensing, enforcement/litigation, and cyberspace problems for brands across a variety of industries, from famous global brands to start-ups, while leading the PLG Trademark team. Major ranking publications praise her as:
“a first-class legal brain and extremely commercially minded; she understands client concerns and is results driven. She works equally well with small and medium-sized enterprises and huge multinationals, and possesses a truly international outlook.”—World Trademark Reporter 2018
“sees the big picture, can tackle challenging questions and knows both US and EU trademark practice inside and out – she is fantastic.”—World Trademark Reporter 2018
“[a] multilingual…draw for cross-cultural branding matters …. Utterly reliable and timely in her replies, she is also very resourceful and sensitive to budget constraints.” World Trademark Reporter 2017
“highly thought of for a practice that covers the gamut of trademark and copyright matters. She acts for a diverse client base, providing strategic advice on portfolio management and also handling complex litigation proceedings—Chambers USA 2017
“[a] leading authority in all aspects of trademark, licensing, portfolio management, and counterfeiting.” Managing IP Top 250 Women in IP 2014
“[a] renowned counsellor and first-chair trial lawyer [who] moves with the times and is an indispensable expert on internet branding.” World Trademark Reporter 1000 2016
“[an] accomplished portfolio lawyer…[who]…offers strong experience in a range of areas including domain name and counterfeiting disputes, trademark prosecution and brand management.” Chambers USA 2016
- Provides strategic management of global and national brands from clearance to registration to litigation, social media, and enforcement
Internet and Domain Names
- Guides clients through challenges to brands in cyberspace, including Internet domain name disputes and worldwide domain name registration and policing strategies, keyword advertising disputes, online misuse of trademarks, online counterfeiting, false blogs, phishing and data security, and social media and new gTLD’s.
- Prevailed in 75+ UDRP domain disputes and ACPA cybersquatting cases.
- Counsels on ICANN gTLD application process and registry governance
- Uses online forensics and U.S. and foreign courts in creative ways to find and shut down infringing websites by Internet infringers worldwide.
- Counsels clients on brands and social-media marketing.
A respected adversary, Satterthwaite leads many trademark, domain name, copyright and false advertising lawsuits in federal courts, often in New York, Virginia and Maryland, as well as numerous other U.S. federal district and appellate courts and foreign jurisdictions, often resulting in preliminary and permanent injunctions for clients. She has also been lead counsel in well over 100 inter partes cases before the Trademark Trial and Appeal Board. Recent representative matters include:
- Successfully settled litigation over longrunning, complex, multinational trademark dispute between New York hedge fund and European private equity firm (United States District Court for the Southern District of New York 2019)
- Won motion to dismiss federal trademark lawsuit that was part of a larger multinational dispute involving the management and branding of a high-end tropical resort (U.S. District Court for the Southern District of Florida 2019)
- Won Temporary Restraining Order against organizer of an event who was falsely advertising that client, a prominent higher education institution, had sponsored the event (U.S. District Court for the Northern District of Georgia 2018)
- Obtained fast settlement in favor of financial services client, avoiding need for Preliminary Injunction proceedings (U.S. District Court for the Southern District of New York 2017)
- Successfully represented legendary German electronic music band in Trademark infringement litigation (U.S. District Court for the District of Delaware 2017)
- Settled lawsuit in which she filed a suit for declaratory judgment of non-infringement in face of a cease and desist letter, ensuring client’s freedom to keep using its trademark (United States District Court for the Southern District of Florida)
- Settled lawsuit requiring investment manager to cease use of hedge fund client’s trademark (U.S. District Court for the Northern District of Texas)
- Settled lawsuit requiring defendant to cease use of client’s trademark in related services and to transfer the relevant domain name to client (U.S. District Court for the Southern District of New York)
- Obtained dismissal of lawsuit seeking to enjoin client from applying for a new Top-level domain registry contract based on U.S. trademark rights. Argued that federal court should not use national IP rights to intervene in an international process. (U.S. District Court for the Central District of California)
- Argued and obtained temporary restraining order and expedited discovery from third parties on behalf of prominent hedge fund who was being impersonated on the Internet by a Ponzi scheme, resulting in immediate shut down of the key website, permanent injunction and maximum statutory $100,000 damages (U.S. District Court for the District of Connecticut)
- Led a team which filed amicus briefs on behalf of perfume manufacturer Coty, Inc., in the Second Circuit Court of Appeals in 2008 and the United States Supreme Court in 2010 in Tiffany v. eBay, which addressed the scope of liability of online market places to prevent the sale of counterfeits.
- Assisted with briefs and Moot Court Oral Argument prep for Walmart v. Samara, often called the Trademark case of the decade (US. Supreme Court 2000)
- Provides expertise in Internet keyword advertising, false blogs and other Internet advertising issues.
- Forced two plaintiff law firms to remove misleading, unsubstantiated statements about client’s goods on the ground that it was false and misleading advertising to recruit class action plaintiffs.
- Works with experts on survey design in false advertising and trademark cases.
Honors and Awards
- Chambers USA
- World Trade Reporter WTR 1000
- Managing IP: IP Stars
- Top 250 Women in IP Worldwide (Managing IP)
- Martindale-Hubble AV Preeminent®
- Super Lawyers
- Euromoney’s Expert Guide, Women in Business Law
- Euromoney’s Expert Guide, Trademark
Pro Bono and Community Involvement
- Provide pro bono trademark and copyright representation to a number of nonprofit organizations
Memberships and Affiliations
- Marques (Association of European trademark owners):
- Marques Emerging Issues Team
- Marques U.S. Newsletter Correspondent
- Cyberspace Team –former Vice Chair
- International Trademark Association
Publications and Speeches
- Writes and speaks regularly about trademark and cyberspace issues to international audiences
- Spoke at workshop on Brands and Cultural Misppropriation, Marques annual conference Dublin, Ireland, 2019
- Presented webinars for Federal Bar Association and Strafford on Intellectual Property and the Restaurant Industry, 2017
- Spoke to main session at annual conference in Vienna, Austria, Marques, 2015
- Co-authored US Section of Marques global legal guides to trademarks and free speech and scandalous and immoral trademarks
- Frequent contributor to Marques newsletter