Editorial: Trademarks in Florida
01 November 2007
Despite possessing a relatively small IP bar, Florida’s trademarks lawyers are very highly regarded by their peers inside and outside the state. Specialist firms shine in our research, constituting the majority of the outfits included.
Lott & Friedland PA, an IP boutique with offices in Coral Gables and Fort Lauderdale is the only firm with more than one nominee in these pages. This “fantastic firm” fields three practitioners, all in Coral Gables. A “truly formidable team” covers all aspects of trademark law, from licensing to enforcement and litigation. The firm’s lawyers are well versed in cross-border work, securing trademark rights all over the world. Representative clients include Maritime Professional Training and Masters, Mates and Engineers. “Outstanding attorney” Leslie Lott received a phenomenal response from sources who praised her skill as a litigator. She has built an extensive network of international contacts and previously practised in Saudi Arabia. Respondents also highlighted her time as an examiner for the US Patent and Trademark Office. Fellow partner David Friedland is “a huge name in IP” according to sources. His practice includes trademark transactions such as the preparation of validity and infringement opinions, prosecution and litigation. The third figure to be listed is Mark Stein, a “terrific” practitioner with a “great reputation” for work on matters such as anti-counterfeiting.
Allen Dyer Doppelt Milbrath & Gilchrist PA is a “highly established IP boutique” based in Florida, dealing with all areas of trademark law. Peers deemed “fantastic” name partner Ava Doppelt “pre-eminent in the field”. Doppelt operates from the Orlando office. She is well known for trademark prosecution, managing trademark portfolios and trademark litigation, and her clients include Harcourt Brace and Company and Ron Jon Surf Shop of Florida.
Full-service firm Akerman Senterfitt’s trademark practice is also very broad. It is home to the “hugely competent” Jill Sarnoff Riola, whose in-house experience as senior trademark and copyright counsel at Apple was highlighted to researchers. Her practice centres on complex trademark transactions such as identification, acquisition, licensing, enforcement and the trademark implications of mergers and acquisitions.
Carlton Fields PA’s “large, successful department” offers services such as IP audits, trademark prosecution, ownership and non-disclosure arrangements and litigation. The firm recently prepared and maintained domestic and international trademark portfolios for companies such as a major drinks manufacturer and a major boat manufacturer. Douglas McDonald’s “great litigation expertise” found favour with respondents, as did his trademark prosecution, licensing and protection practices.
Fowler White Boggs Banker’s IP group is an important part of the firm’s repertoire, devoted, among other things, to restaurant-related law and its IP implications. Monica Mason’s practice combines portfolio management, litigation, advisory work and dispute resolution on a national and international scale. Respondents to our survey regard her as “a bright and creative practitioner”.
Kluger Peretz Kaplan & Berlin PL is another highly rated local firm on the Florida scene. Its “truly excellent” trademark group forms a significant part of the firm’s focus and companies ranging from start-ups to multinationals have sought its lawyers’ expertise. The firm has also been involved in Florida legislature – Michael Chesal led a team of the firm’s lawyers in helping to pass a bill that facilitates Florida companies and individuals’ defence of proprietary trademarks. Chesal is “very well respected” and his specialist knowledge of the technology field complements his trademark and domain name work.
Ruden McClosky Smith Schuster & Russell PA’s trademark clients include individuals in the entertainment industry, government entities, publishers, manufacturers, franchisors, universities and technology entities based in the state and further afield. Deborah Berkowitz is based in Fort Lauderdale, with a practice spanning prosecutions, clearance, counselling and representing clients in inter partes proceedings before the Trademark Trial and Appeal Board. Respondents noted the “excellent quality” of her work, especially for clients in the apparel industry.
Tampa and Clearwater-based Johnson Pope Bokor Ruppel & Burns LLP is the final firm included in our round-up of the state’s top practitioners. Frank Jakes is “a fabulous trademark litigator”, with a track record of cases for clients such as Arthur Rutenberg Homes, Athle-Tech Computer Systems and Epic Metals Corp.