Bret J. Danow. Partner New York p Practices. Industries. Recognition. Advisories. Articles.

Transcription

1 Bret J. Danow Partner New York p Practices FOCUS: Intellectual Property Advertising, Marketing and Promotions Trademark Licensing and Strategy Intellectual Property Litigation Trademarks and Trademark Litigation Industries Fashion Private Client Services Recognition Practical Law Company, Cross- Border IP in Business Transactions Handbook ( ) Education JD, University of Pennsylvania Law School BA, University of Michigan Bret J. Danow focuses his practice on trademark licensing and brand protection with a concentration in the fashion industry and regularly counsels clients in the apparel, sporting goods, publishing, education, entertainment, liquor, banking, financial services and consumer electronics industries. He has worked at Katten Muchin Rosenman LLP for his entire career, spanning more than 14 years. Bret counsels and assists clients in connection with all facets of trademark law, including licensing, retail store agreements, distribution agreements, celebrity endorsement agreements, trademark clearance, prosecution, enforcement, monitoring and portfolio management, agreement administration, domain name disputes and intellectual propertyrelated diligence and corporate transactions. He represents companies ranging from small start-ups to large international fashion brands. Bret represents clients in developing, building and administering the worldwide licensing, exploitation, searching, clearance, registration and enforcement of trademarks, logos and domain names and works with all clients to develop strategies to protect their valuable intellectual property assets worldwide. Together with Katten partner Karen Artz Ash, Bret writes a column that appears 10 times a year in Managing Intellectual Property magazine. Advisories Protect Your Trademark Online: Global Trademark Clearinghouse to Begin Accepting Submissions (March 11, 2013) New Generic Top-Level Domain Names: What Brand Owners Need to Know (June 15, 2012) 2009 Year-End Intellectual Property Issues Advisory (December 2009) Articles Fee Shifting Applied in Trademark Dispute (May 2017) Co-author, Opposition Fails Due to Improper Trademark Assignment, Managing Intellectual Property (April 2017) Co-author, Use of Social Media in Likelihood of Confusion Analysis, Managing Intellectual Property (March 2017)

2 Bret J. Danow continued Bar Admissions New York Co-author, Extraterritorial Application of the Lanham Act, Managing Intellectual Property (November 2016) Co-author, Company Fights Back Against the USOC, Managing Intellectual Property (October 2016) Co-author, Proper Geographic Scope for Injunctive Relief, Managing Intellectual Property (September 2016) Co-author, TTAB Clarifies Allegation Time Period for Dilution Claims, Managing Intellectual Property (June 2016) Co-author, Cautions on Related Party Uses of Marks, Managing Intellectual Property (May 2016) Co-author, TTAB Refuses Co-Existence Agreement, Managing Intellectual Property (April 2016) Co-author, Supreme Court to Review Fee Shifting in Copyright Cases, Managing Intellectual Property (March 2016) Co-author, Issue Preclusion Applied to Priority Dispute, Managing Intellectual Property (February 2016) Co-author, Registration Cancelled for De Minimis Use, Managing Intellectual Property (December 2015) Co-author, Design Marks: Comparing and Tacking, Managing Intellectual Property (November 2015) Co-author, TTAB Allows Only One Bite at the Apple, Managing Intellectual Property (October 2015) Co-author, Once Generic, Always Generic, Managing Intellectual Property (September 2015) Co-author, Appealing Refusals to Register Marks, Managing Intellectual Property (July 2015) Co-author, Laches Defense in a Cancellation Proceeding, Managing Intellectual Property (June 2015) Co-author, Undue Prejudice in an Acquiescence Defense, Managing Intellectual Property (May 2015) Co-author, Is Offering of a Service Use of a Mark?, Managing Intellectual Property (April 2015) Co-author, Court Expands Something More Standard, Managing Intellectual Property (March 2015) Co-author, Opportunistic Bad Faith in the UDRP, Managing Intellectual Property (February 2015) Co-author, False Origin Claims Applied to Services, Managing Intellectual Property (December 2014 / January 2015)

3 Bret J. Danow continued Co-author, US Trademarks: Google Defeats Genericness Claim, Managing Intellectual Property (November 2014) Co-author, Third Circuit Rules on Awarding Attorneys' Fees, Managing Intellectual Property (October 2014) Co-author, Federal Circuit Rules on Trade Mark Pronunciation, Managing Intellectual Property (September 2014) Co-author, Seventh Circuit Rules on Trade Mark Abandonment, Managing Intellectual Property (July / August 2014) Co-author, Misrepresentation of Source Claims, Managing Intellectual Property (June 2014) Co-author, Narrowing Colour Claims, Managing Intellectual Property (May 2014) Co-author, Don't Delay Filing Intent-to-Use Applications, Managing Intellectual Property (April 2014) Co-author, TTAB Expands Protection for Famous Marks, Managing Intellectual Property (March 2014) Co-author, No Presumption of Irreparable Harm, Managing Intellectual Property (February 2014) Co-author, PRL Challenges Intent-to-Use Application, Managing Intellectual Property (December 2013 / January 2014) Co-author, House Mark Distinguishes Secondary Mark, Managing Intellectual Property (November 2013) Co-author, Assigning Intent-to-Use-Based Applications, Managing Intellectual Property (October 2013) Co-author, New Rules on Use of Child Models, Managing Intellectual Property (September 2013) Co-author, Impact of TTAB Rulings on Court Decisions, Managing Intellectual Property (July / August 2013) Co-author, Costco Claims Tiffany Is Generic, Managing Intellectual Property (June 2013) Co-author, Questions Left Unanswered by Louboutin Case, Managing Intellectual Property (May 2013) Co-author, Anonymous Comments Allowed as Evidence of Confusion, Managing Intellectual Property (April 2013) Co-author, Supreme Court Rules on Covenant Not to Sue, Managing Intellectual Property (March 2013) Co-author, The Territorial Extent of Trade Marks, Managing Intellectual Property (December 2012 / January 2013)

4 Bret J. Danow continued Co-author, Court Cases Highlight Product Liability for Licensors, Managing Intellectual Property (November 2012) Co-author, Court Ensures Trade Mark Protection for Fashion Colours, Managing Intellectual Property (October 2012) Co-author, New Treatment of Trade Mark Licenses in Bankruptcy, Managing Intellectual Property (September 2012) Co-author, How to Petition for Special Treatment, Managing Intellectual Property (July / August 2012) Co-author, Deceptive Geographic Marks Clarified, Managing Intellectual Property (June 2012) Co-author, Risks of Guerilla Marketing at the Olympics, Managing Intellectual Property (May 2012) Co-author, Trade Marking Linsanity, Managing Intellectual Property (April 2012) Co-author, Louboutin Claims Colour Exclusivity, Managing Intellectual Property (March 2012) Co-author, Beware Similar Marks on Related Goods, Managing Intellectual Property (February 2012) Co-author, Tips on Acceleration of Royalties Provisions, Managing Intellectual Property (December 2011 / January 2012) Co-author, Renewing Domain Names and the ACPA, Managing Intellectual Property (November 2011) Co-author, Dividing Trade Marks, Managing Intellectual Property (July / August 2011) Co-author, Reverse Confusion, Managing Intellectual Property (May 2011) Co-author, Rules on Gift Cards, Managing Intellectual Property (April 2011) Co-author, Domain Name Enforcement Broadened, Managing Intellectual Property (March 2011) Co-author, How to Avoid Naked Licensing, Managing Intellectual Property (February 2011) Co-author, The Misconceptions About Incontestability, Managing Intellectual Property (December 2010 / January 2011) Co-author, UDRP Evidence Standards, Managing Intellectual Property (November 2010) Co-author, Extraterritorial Application of the Lanham Act, Managing Intellectual Property (October 2010) Co-author, Insurance Coverage for Infringement Claims, Managing Intellectual Property (September 2010)

5 Bret J. Danow continued Co-author, Common Law Rights Can Outlast Registration, Managing Intellectual Property (July / August 2010) Co-author, Changes in Declaratory Judgment Standards, Managing Intellectual Property (June 2010) Co-author, Licence Agreements in Cross-Border Agreements, Managing Intellectual Property (May 2010) Co-author, Cautions on Consent to Registration Agreements, Managing Intellectual Property (April 2010) Co-author, Likelihood of Confusion for Alcoholic Beverage Marks, Managing Intellectual Property (March 2010) Co-author, Obtaining Registrations for Personal Names, Managing Intellectual Property (February 2010) Co-author, Co-Existence Agreements, Managing Intellectual Property (December 2009 / January 2010) Co-author, Effect of Corporate Name Registrations, Managing Intellectual Property (November 2009) Co-author, Changes to Fraud Analysis, Managing Intellectual Property (October 2009) Co-author, Registration on the Supplemental Register, Managing Intellectual Property (September 2009) Co-author, Settlement of Opposition Proceedings, Managing Intellectual Property (July / August 2009) Co-author, Intent-to-Use Requirements, Managing Intellectual Property (June 2009) Co-author, Licensing in the Credit Crunch, Managing Intellectual Property (May 2009) Co-author, Trade Mark Disclaimers, Managing Intellectual Property (April 2009) Co-author, Trade Mark Monitoring, Managing Intellectual Property (March 2009) Co-author, Excusable Neglect, Managing Intellectual Property (February 2009) Co-author, Deceptively Misdescriptive Geographic Marks, Managing Intellectual Property (December 2008 / January 2009) Co-author, Avoid Domain Name Scams, Managing Intellectual Property (November 2008) Co-author, Licence Agreement Representations, Managing Intellectual Property (October 2008) Co-author, Protecting Certification Marks, Managing Intellectual Property (September 2008)

6 Bret J. Danow continued Co-author, Avoiding Willful Infringement, Managing Intellectual Property (July / August 2008) Co-author, Using a Third Party's Trade Mark, Managing Intellectual Property (June 2008) Co-author, Claiming Trade Mark Rights in Particular Colours, Managing Intellectual Property (May 2008) Co-author, Environmentally Friendly Marketing Claims, Managing Intellectual Property (April 2008) Co-author, Enforcement Options for Foreign Marks, Managing Intellectual Property (March 2008) Co-author, Alternatives to Federal TM Filings, Managing Intellectual Property (February 2008) Co-author, Limitations on Governing Law Provisions, Managing Intellectual Property (December 2007 / January 2008) Co-author, Excusable Non-Use of a Trade Mark, Managing Intellectual Property (November 2007) Co-author, Use of Personal Names, Managing Intellectual Property (October 2007) Co-author, Infringement Risks and Related Goods, Managing Intellectual Property (September 2007) Co-author, Enforceability of Priority Filings, Managing Intellectual Property (July / August 2007) Co-author, Fraud Warnings, Managing Intellectual Property (June 2007) Co-author, Risks Arising from Phonetic Similarity, Managing Intellectual Property (May 2007) Co-author, The Importance of Trade Mark Clearance, Managing Intellectual Property (April 2007) Co-author, Cautions About Foreign Word Marks, Managing Intellectual Property (March 2007) Co-author, Keyword Advertising and Trade Mark Infringement, Managing Intellectual Property (February 2007) Co-author, What to Know About Geographic References, Managing Intellectual Property (December 2006 / January 2007) Co-author, Addressing Grey Market Sales into the US, Managing Intellectual Property (November 2006) Co-author, Gripe Sites and Fair Use, Managing Intellectual Property (October 2006) Co-author, Tips on Using Priority Foreign Filings, Managing Intellectual Property (September 2006)

7 Bret J. Danow continued Co-author, Disputes in the Financial Service Industry, Managing Intellectual Property (July / August 2006) Co-author, Trade Mark Enforcement for Domain Names, Managing Intellectual Property (June 2006) Co-author, Expanding Well-Known Brands to the US, Managing Intellectual Property (May 2006) Co-author, Domain Name Issues in License Agreements, Managing Intellectual Property (April 2006) Co-author, New Developments Concerning Trademark Licenses in Bankruptcy, Managing Intellectual Property (March 2006) Co-author, Defensive Ownership of Domain Names, Managing Intellectual Property (February 2006) Co-author, The Effect of "New Uses" on Copyright License Agreements, New York Law Journal (October 4, 2004) Co-author, Anticipate New Technologies When Drafting Copyright Licenses, Entertainment Law Weekly (August 3, 2004) Co-author, Reducing the Effects of Licensing Bankruptcy, Managing Intellectual Property (July / August 2004) Newsletters The Katten Kattwalk Issue 11 (Fall 2016) The Katten Kattwalk Issue 10 (Summer 2016) The Katten Kattwalk Issue 09 (Spring 2016) The Katten Kattwalk Issue 08 (Fall 2015) The Katten Kattwalk Issue 07 (Summer 2015) The Katten Kattwalk Issue 06 (Winter 2015) The Katten Kattwalk Issue 05 (Summer 2014) The Katten Kattwalk Issue 04 (Winter 2014) The Katten Kattwalk Issue 03 (Fashion Week 2013) The Katten Kattwalk Issue 02 (Spring 2013) The Katten Kattwalk Issue 01 (Winter 2013) Speaking Engagements & Presentations Panelist Fashion Licensing and Brand Protection New York, New York (February 11, 2015) Sponsor and Participant WWD Apparel & Retail CEO Summit New York, New York (November 14 15, 2011)