Most Highly Regarded Firms: California 2009 - Trademarks
Despite the tough economic environment, which has resulted in a string of law firm mergers and department lateral hires, California trademarks firms are performing well. Our interviewees put this down to the continuing buoyancy of the IP market, especially in the areas of internet and medical trademarks work. An increase in activity is also noted in the IP fraud area - lawyers are increasingly busy working out strategies to avoid litigation in this area, according to sources. Forty-nine lawyers appear in this chapter, making it one of the largest in the edition - another indication of the continuing demand for IP counsel.
Catherine Holland has a broad-based trademarks practice representing clients in areas such as the software, hardware, clothing, music, financial and restaurant industries. She is also active in regulatory matters, sponsoring the Model State Trademark Bill in the California state legislature on behalf of the International Trademark Association. It was signed into law in 2007. Susan Natland's expertise in internet trademark matters received widespread praise. She also represents clients in the cosmetic, automotive, entertainment and telecommunications industries, among others, such as Paris Blues, Broadcom and Nobel Biocare. Contributors to the survey complemented firm founding partner Don Martens' experience as an IP arbitrator and special master in several US District Courts. William Bunker focuses on the mechanical, aerospace and medical device industries. A frequent author, he is recognised for his regular contributions to publications and on the lecture circuit. John Carson and Jeff Van Hoosear were also highly recommended for their "distinguished practices".
Fenwick & West LLP's "vigorous, active and accomplished" trademarks team received praise for the international scope of its practice and its expertise in areas such as internet issues, trademark licences and M&A related counselling, among others. Practice leader Sally Abel is considered "a star, both in the US and internationally" by interviewees, who were particularly complimentary about her internet trademarks expertise. One contributor said, "she is very well recognised; when you think of trademarks, you think of her." "Super" Connie Ellerbach and the "excellent" David Hayes also received numerous endorsements for their work within Fenwick's "top flight" group.
Morrison & Foerster LLP boasts a "seasoned trademarks capability." The group's diverse work includes representing wine industry clients such as Robert Mondavi Winery and Kalera Winery. Michael Jacobs' work in medical, emerging technology and internet trademarks matters attracted attention, as did his work for cleantech sector clients. Thomas McCarthy is "a dean of the Trademarks Bar," according to sources who laud him as "an eminent authority", who has produced the six-volume treatise McCarthy on Trademarks and Unfair Competition.
Seyfarth Shaw LLP's "top-flight duo" Christopher Larkin and Joan Kupersmith Larkin were noted for their "great record". The latter's representation of entertainment industry clients gained plaudits, while the former won praise for his litigation for restaurant, aerospace, defence, cosmetics and clothing companies.
Yet another "brilliant IP firm", Townsend and Townsend and Crew LLP is "first rate for technology, medical and biotech work," according to interviewees. The firm's clients include PayPal, Catalyst Enterprises and Dolby Laboratories. Mark Steiner and Paul Vapnek both rated highly in the research for their "vast experience and great standing in the trademarks community."
Irell & Manella LLP is "a great California firm with a high-profile trademarks group," according to sources. David Nimmer and the "fabulous" Jane Shay Wald represent the firm in this chapter. Both lawyers successfully represented Dastar in an action brought by Fox where it claimed a Lanham Act violation for omitting its name from public domain videos of the memoirs of President Eisenhower.
IP specialist firm Christie Parker & Hale LLP is "great for complex trademark litigation" and praised by respondents to the survey for work on issues such as unfair competition, false advertising and trade dress infringement. Michael MacDermott and Richard Wallen both represent the firm, which is considered a "stalwart of the California Bar."
Greenberg Traurig LLP's California lawyers form a key part of the firm's IP capability. Interviewees praised the "top-notch" Elise Tenen-Aoki, who provides "excellent advice" to companies developing global trademarks strategies. Her entertainment industry expertise is also recognised. Her clients include Warner Brothers and LA Gear. Co-chair of the trademarks/brand management group Susan Heller is also "first rate for entertainment industry work". She represented Saul Zaentz Film Company in the protection and enforcement of the Lord of the Rings trademark portfolio.
Morgan Lewis & Bockius LLP is "an established name" with clients that include major toy manufacturers and restaurants. Rochelle Alpert is "a class act", whose work includes defending Publishers Clearing House against trade dress infringement and representing the San Francisco Fleet Week community in cancelling a disputed mark. Carla Oakley also received enthusiastic endorsements for her litigation and counselling practice.
High-tech IP specialist firm Blakely Sokoloff Taylor & Zafman provide our list with the "fabulous" Stanley Sokoloff and Lori Boatright, who is considered "great with clients." Sheppard Mullin Richter & Hampton LLP's Harold Milstein and Neil Smith come highly recommended for their "excellent representation of a wide range of clients", especially in the technology and software areas.
Howard Rice Nemerovski Canady Falk & Rabkin PC has been in the market for 35 years, and clients include Longs Drug Stores, the Saul Zaentz Company and Tower Semiconductor. Carole Barrett represents movie producers, financial services companies and software developers among other clients: she has acted for Cisco, PlanetOut and Determined Productions. Winston & Strawn LLP's Andrew Bridges is "streets ahead: a top IP litigator", according to one impressed source. His work includes successfully representing ClearPlay in a case brought by 16 Hollywood directors, the Directors Guild of America and eight motion picture studios.
At Kirkland & Ellis LLP, co-head of the intellectual property group Robert Krupka has an "enviable trial record" and he has represented clients such as National Steel Car. Harvey Siskind LLP's "jewel of a litigator" Peter Harvey has represented high profile clients such as the scooter manufacturer Piaggio, and Jacques Cousteau and the Cousteau Society.
The "very well regarded" Lynn Perry is of counsel to Harvey Siskind and also practises at her own firm, Perry IP Group. Peers rate her previous in-house experience at MasterCard highly, and she brings this to bear representing clients from a wide range of industries, from agriculture to technology, medical devices and clothing. Dreier Stein Kahan Browne Woods George LLP's William Finkelstein is "the tops", according to competitors. He is especially recommended for his entertainment industry expertise.
The "terrific" Steven Weinberg, previously at IP and technology firm Greenberg Glusker Fields Claman & Machtinger LLP, now practises as West Coast counsel to the New York-headquartered IP, entertainment firm and litigation firm Cowan DeBaets Abrahams & Sheppard LLP. Melville Owen, a name partner at IP boutique Owen Wickersham & Erickson PC is "a long-standing star" of the Trademarks Bar in the state. He is noted for his regulatory activity, having served on the Trademark Review Commission of the United States Trademark Association developing ideas for the revision of federal trademark law. Orrick Herrington & Sutcliffe LLP's Beth Goldman is praised as "competent and very professional." The firm's recent work includes representing Applied Materials in litigation involving semiconductor manufacturing equipment technology.
At DLA Piper LLP, Allyn Taylor "is highly skilled" and "can turn her hand to anything in the trademarks area". Howrey LLP's Katherine Basile has "a great courtroom presence" with in-house and private practice experience. Cooley Godward Kronish LLP's John Crittenden also appears. He has defended high profile clients such as eBay and NCSoft.
Loeb & Loeb LLP's "fabulous" David Grace received special recommendation for his advice regarding advertising and internet issues. Richard Kirkpatrick at Pillsbury Winthrop Shaw Pittman LLP leads the firm's international trademark team. A trademark specialist since 1980, he deals with litigation, clearance and registration, and portfolio management among other matters.
Keats McFarland & Wilson LLP name partner Anthony Keats represents consumer product and entertainment companies, as well as individuals in the entertainment industry. Interviewees praised his "professional approach."
Coblentz Patch Duffy & Bass LLP's Karen Frank is "a top-notch IP lawyer," which has represented clients such as Levi Strauss, Bank of America, Littler Mendelson and The Wine Group. Lisa Martens represents Fish & Richardson PC in this edition, with past clients including Buzztime Entertainment, Phil Mickelson, UInc and Apple. TRW Law Group's "high flier" Tawnya Wojciechowski completes this chapter. Interviewees said she "always comes up with the goods".