Partner Janet Satterthwaite is an internationally-recognized and versatile trademark attorney, uniquely capable in all aspects of global trademark prosecution and strategic counseling as well as litigation at the first-chair level. She provides seamless, practical, one-stop guidance on global trademark counseling, prosecution and portfolio management, licensing, enforcement/litigation, and cyberspace problems. Leading ranking publications praise her as:
“[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 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
“[a] multilingual…draw for cross-cultural branding matters [with] a nuanced understanding of online and domain name issues. She isn’t afraid to go on the offensive for her clients and you know you can trust her, because her tremendous knowledge base means that she goes into battle knowing more than her opponents do. Her vast understanding of trademark law extends to her familiarity with the authorities and processes of international territories. Utterly reliable and timely in her replies, she is also very resourceful and sensitive to budget constraints.” World Trademark Reporter 2017
- 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.
- Guides ICANN gTLD application process and guiding new gTLD registry setup process.
- 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.
- Lead litigation counsel and manages teams on 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. Also appears in front of the Trademark Trial and Appeal Board. Recent representative matters include:
- Representing legendary German electronic music band in Trademark infringement litigation (U.S. District Court for the District of Delaware)
- 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, including having State Supreme Court change the name on the caption of unrelated litigation involving defendant in order to minimize confusion in press reports. (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)
- Develops and implements successful strategies to protect clients against online counterfeits and impersonations.
- 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.
- 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
- Euromoney’s Expert Guide, Women in Business Law 2017
- Euromoney’s Expert Guide, Trademark 2017
- Chambers USA
- World Trade Reporter WTR 1000
- Managing IP: IP Stars
- Top 250 Women in IP Worldwide (Managing IP)
- Legal 500
- Martindale-Hubble AV Preeminent®
- Super Lawyers
Pro Bono and Community Involvement
- Provide pro bono trademark and copyright representation to a number of nonprofit organizations
Memberships and Affiliations
- Cyberspace Team of Marques (the association of European trademark owners), Vice Chair
- Marques Emerging Issues Team
- Internet Law and Strategy, Editorial Board Member
- Marques U.S. Newsletter Correspondent
Publications and Speeches
- Writes and speaks regularly about trademark and cyberspace issues to international audiences
- Led a workshop in Brussels on trademarks and social media, Marques, 2012
- Spoke at annual conference in Vienna, Austria, which focuses on psychology and brands, Marques, 2015
- Presented webinar for Federal Bar Association on Intellectual Property and the Restaurant Industry, 2017