Client Work
Mike works on behalf of clients in a wide range of industries. His clients include major companies in the fields of entertainment, software, online services, clothing and fashion, hospitality, food and beverages, pharmaceutical products, eyewear, publishing, real estate, insurance, and franchising.
Mike has represented clients in intellectual property actions and appeals in state and federal courts throughout the United States and in several foreign countries. He also is known for helping clients with patent, trademark and copyright licensing, technology transfer agreements, mergers and acquisitions and other transactions involving intellectual property. He counsels clients on trademark and copyright selection, clearance and registration; domestic and international trademark and copyright protection; anti-counterfeiting; unfair competition law; advertising; computer law; franchise law; and licensing.
In addition to representing clients in the courts and before federal agencies, Mike has assisted in securing legislation directed at enhancing their intellectual property rights. He has testified before congressional committees in both the Senate and House of Representatives on intellectual property matters. He was instrumental in securing amendments to Sections 14 and 39 of the Lanham Act, which clarify the grounds on which a registered mark may be held generic and which prohibit the states from interfering with federally registered marks.
Examples of cases in which Mike served as lead attorney are:
- Philips Bryant Park v. HFZ Capital Group LLC (S.D.N.Y. 2016). Mike and lawyers from our New York office defended a New York real estate developer in an action for trademark infringement and cybersquatting. The court denied a preliminary injunction motion and granted summary judgment in favor of our client.
- The Saul Zaentz Company v. Al Moudabber Food Concepts SAL (TTAB 2016) Mike represented the owner of the famous LORD OF THE RINGS trademarks in a cancellation proceeding against the owner of the mark LORD OF THE WINGS. The Board granted cancellation after a trial on the merits.
- In the Matter of Certain Laser Abraded Denim Garments (ITC 2015) Inv. No. 337-TA-930, Mike and his colleagues at ArentFox Schiff defended a number of foreign jeans manufacturers in an investigation by the International Trade Commission involving infringement claims relating to patents for laser abrasion processes. The matter was settled favorably.
- Excelled Sheepskin and Leather Coat Corp. v. Oregon Brewing Company (S.D.N.Y. 2015). Mike and a team of ArentFox Schiff lawyers represented a New York clothing manufacturer in a an action for trademark infringement and unfair competition filed in New York. The court granted summary judgment in favor of our client and dismissed all of the counterclaims filed by the Defendant.
- Litchfield Associates Ltd. Inc. v. Corporation of the President (M.D. Fla. 2014). Mike defended a religious institution in claims for copyright infringement relating to sound recordings. We obtained evidence demonstrating that the Plaintiff had no rights in the alleged copyrighted material and the case was favorably settled for our client.
- Oregon Brewing Company v. Excelled Sheepskin & Leather Coat Corp. (Cir. Ct. Multnomah County Ore. 2012). Mike and the firm represented a clothing manufacturer based in New York’s garment district in a breach of contract dispute relating to trademark provisions in a settlement agreement. The court entered summary judgment in favor of our client.
- RML Jackson, LLC v. Excelled Sheepskin & Leather Coat Corp. (C.D. Cal. 2011). Mike and others at the firm defended a clothing manufacturer in a declaratory judgment suite filed by a motion picture company that had threatened to begin using counterfeit imitations of our client’s mark. The matter was settled favorably.
- General Mills v. Soyyigit Civil Action No. (D. Minn. 2011) Mike and others at ArentFox Schiff took over the defense of a trademark infringement action after a preliminary injunction had been entered. A favorable settlement was achieved.
- Kidsart, Inc. v. Kidzart Texas, LLC. (C.D. Cal. 2009). Mike and lawyers in the Los Angeles Office represented a Southern California educational company in a declaratory judgment action with a competing franchise company from Texas that was attempting to use counterfeit imitations of the principal mark owned by our client. The matter was resolved favorably through mediation.
- Coverall North America, Inc. v. ACI Clean Concepts, Inc. (C.D. Cal. 2009). Mike and a team of lawyers in Los Angeles represented a major office cleaning franchisor in a trademark infringement and unfair competition action filed in California. The matter was resolved favorably through mediation.
- Grupo Andrea S.A. v. Privacy Protection Service (C.D. Cal. 2010) Mike and attorneys in our LA office obtained a monetary judgment against a notorious cybersquatter that had used our client’s mark in a domain name linked to a monetized website that diverted prospective customers to our client’s competitors.
- Mars, Inc. v. Hershey Chocolate Company (ED Va. 2009) Mike and the ArentFox Schiff Team represented Mars in a trademark and copyright infringement case against one of its primary competitors. The matter was settled favorably.
- Warner Bros. Entertainment, Inc. v. Fleet Wholesale Supply Co. (TTAB 2008) Following a trial on the merits, Mike on the ArentFox Schiff team obtained a judgment finding likelihood of confusion and upholding the famous ROAD RUNNER mark.
- Louis Vuitton Malletier v. Allegro Mfg. Inc. (E.D. Va. 2007) Mike was lead counsel in a successful trademark infringement and unfair competition suit brought by Louis Vuitton against a handbag manufacturer and a major retail pharmacy chain.
- ZAO Askeri v. International Accounting Standards Committee Foundation (Del. Ch. 2006) Mike and colleagues from the New York Office successfully defended one of the world’s major financial standard setting organizations in a copyright infringement case filed in Delaware. The Plaintiff claimed that our client had violated the copyright laws of Russia, the United Kingdom and several former Soviet republics by displaying the work in question on the Internet. All of the claims were dismissed.
- Warner Bros. v. Campo. (TTAB 2006) Mike and the ArentFox Schiff team obtained a favorable judgment from the Trademark Trial and Appeal Board sustaining an opposition against applicants who attempted to register the mark HARRY POTHEAD for a series of videos and entertainment products. The Board found likelihood of confusion and dilution and rejected the applicants’ parody defense. We were then able to force the defendant to remove the infringing work from various Internet websites.
- Daesang Corporation v. Rhee Bros. Inc. (D. Md. 2005) At a trial in the federal court in Baltimore, Mike defended a major Korean food company against infringement claims. We also proved that the plaintiff had obtained its trademark registration fraudulently.
- Quantum National Bank v. MBNA America Bank NA (N.D. Ga. 2004) At a trial in the federal court in Atlanta, Mike and the ArentFox Schiff team defended MBNA in an action for trademark infringement and unfair competition.
- In re California Innovations, 66 USPQ2d 1853, 329 F3d 1334 (Fed. Cir. 2003) Mike and his team appealed a decision from the Trademark Trial and Appeal Board, which had refused registration of the mark California Innovations, on the grounds that the mark was allegedly primarily geographically deceptively misdescriptive. The Federal Circuit reversed and issued a decision that enhances the scope of protection available to trademark owners.
- Big Time Worldwide LLC v. Marriott International, Inc., 236 F.Supp.2d 791 (E.D. Mich. 2003). Mike and other ArentFox Schiff attorneys successfully defended Marriott International in a trademark infringement suit filed in Michigan. The court denied the Plaintiff’s motion for preliminary injunction and the action was subsequently dismissed.
- Online Careline Inc. v. America Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) Mike and his colleagues defended America Online in an appeal heard by the Federal Circuit; The court affirmed an order of the TTAB sustaining an opposition filed by AOL and dismissing a cancellation petition filed by Online Careline.
Accordion Toggle
- Champagne Louis Roederer, S.A. v. Delicato Vineyards, 47 USPQ2d 1459, 148 F3d 1373 (Fed. Cir. 1998) - We successfully defended an applicant in an opposition proceeding before the Trademark Trial and Appeal Board and in a subsequent appeal. The Board’s favorable decision was affirmed by the Federal Circuit.
Previous Work
As a member of the International Trademark Association, Mike has served on the Board of Directors and Executive Committee, and as chair of the Federal Legislation Committee. He also has served as co-chair of the Intellectual Property Law Section of the District of Columbia Bar Association and as a member of its steering committee. Mike is a member of the American Bar Association, the American Intellectual Property Law Association, the Patent, Trademark and Copyright Section of the Virginia Bar Association, AIPPI, the Intellectual Property Owners Association, and Marques where he serves as chair of the Education Team.
Publications, Presentations & Recognitions
Mike is a former member of the editorial board of the Trademark Reporter. He has been recognized for his work in trademark law by Chambers and the Legal 500. In 2016, World IP Review named Mike a WIPR leader. He has written several articles relating to intellectual property law and has given numerous presentations at conferences sponsored by AIPLA, INTA, Marques, the FBI Academy, and various other organizations in the United States and abroad on intellectual property topics. His recent speaking engagements include:
- “Multicultural Issues in Trademark Selection,” AIPLA, Mid Winter Meeting 2009, Miami, FL
- “Does Dilution Make A Difference,” California Bar IP Section Meeting, November 6, 2008, Rancho Mirage, CA
- “Protection of Strong and Famous Marks,” Virginia Bar Association IP Section, October 2008, Williamsburg, VA
- “Trademark And Copyright Protection Strategies,” Maryland Tech Council – Johns Hopkins University, May 17, 2007
- “Domestic Enforcement of Foreign Copyright Violations,” Global Trade Symposium – Chapman University Law School, April 19, 2007
- “Litigating Preliminary Injunction Motions in Trademark Cases,” INTA Annual Meeting, May 2006
- “Protecting IP Rights in Cartoon Characters,” December 14, 2004, Washington, DC
Accordion Toggle
Mike is listed among leading trademark lawyers in the United States by Chambers USA, the Legal 500, and the International Who’s Who of Business Lawyers. He is also ranked as a first-tier trademark litigator by the World Trademark Reporter. Washingtonian magazine named Mike a “top lawyer” in intellectual property in its biennial guide to the area’s “Best Lawyers” in December 2013.
