Robert W. Zelnick is a partner in the law firm of McDermott Will & Emery LLP, based in the Washington, D.C. office. As a member of the Intellectual Property, Media & Technology Department, Robert is head of the firm-wide Trademark Practice Group. Robert’s practice involves all aspects of acquisition and enforcement of intellectual property rights. Although he is also a registered patent attorney, Robert has focused his practice over the past decade on litigation of trademark and unfair competition disputes, where he serves as lead counsel for major clients in federal trial and appellate courts. He has been honored in the 2001-2006 editions of the International Who’s Who of Trademark Lawyers (Law Business Research).
Practice Overview
- Manages all aspects of acquisition and enforcement of intellectual property rights, with focus on litigation of trademark, unfair competition and false advertising disputes, frequently as lead counsel on behalf of owners of internationally famous trademarks
- Represents clients in all federal trial and appellate courts, and before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office
- Counsels clients on selection, clearance, and protection of trademarks, service marks, trade names, and other indicia of corporate identity
- Establishes programs for licensing, co-branding, brand extension, product placement in film/television, and other opportunities for leveraging new revenue streams from famous marks
- Evaluates comparative advertising and counsels on parameters of fair use and fair competition
- Enforces rights related to domain name and trademark use/misuse on the world wide web, and litigates domain name disputes before ICAAN and WIPO and cybersquatting issues under the federal Anticybersquatting Consumer Protection Act
Representative Intellectual Property Clients
- Absolut Vodka
- American Marine Holdings
- ASML Mask Tools
- Hitachi
- Limited Brands, Inc. (including subsidiaries Victoria’s Secret and Bath & Body Works)
- Ted Turner Enterprises
- Werner Co.
Selected Intellectual Property Litigation Victories
- Maverick Boat Co. v. American Marine Holdings, Inc., 418 F.3d 1186 (11th Cir. 2005)
- Maverick Boat Co. v. American Marine Holdings, Inc., 70 U.S.P.Q.2d 1493 (S.D. Fl. 2004)
- Nitro Leisure Products v. Acushnet Co., 2002 U.S. Dist. LEXIS (S.D. Fla. 2002), aff’d, 341 F.3d 1356 (Fed. Cir. 2004)
- Re/Max International, Inc. v. Blagden, 2000 TTAB LEXIS 762 (TTAB Nov. 8, 2002)
- Victoria’s Secret Stores, Inc. v. Artco Equip. Co., 194 F. Supp. 2d 704 (S.D. Ohio 2002)
- V&S Vin & Sprit AB d/b/a The Absolut Company v. Absolut Beach Pty., Ltd., 60 U.S.P.Q.2d 1310 and 61 U.S.P.Q.2d 1277 (E.D. Va. 2001)
- V&S Vin & Sprit AB, d/b/a The Absolut Company v. Pusher, Inc., ___ F. Supp. 2d___ (D. Utah 2001)
- V Secret Catalogue, Inc. v. Zdrok, ___ F.Supp.2d ____ (C.D. Cal. 2001)
- Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089 (Fed. Cir. 1997)
- Caterpillar Inc. v. Big Smith Global, Ltd., ____ F. Supp. ____ (C.D. Ill. 1996)
- Ferag AG v. Grapha-Holding AG, 905 F. Supp.1 (D. D.C. 1995)
- Lone Star Steakhouse and Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (4th Cir. 1995)
- Caterpillar Inc. v. Nationwide Equipment Co., 877 F. Supp. 611 (M.D. Fla. 1994)
- Rohm and Haas Co. v. Brotech Corp., 815 F.Supp. 793 (D. Del. 1993)
Robert is licensed to practice in the District of Columbia and the Commonwealth of Pennsylvania, and registered with the U.S. Patent and Trademark Office. In addition, Robert is admitted to practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Fourth, Eleventh and Federal Circuits, and several U.S. District Courts. He served as an intern to the Hon. Eric G. Bruggink of the U.S. Court of Federal Claims in Washington, D.C. in 1989.
Robert is a frequent writer and speaker on intellectual property matters, and is active in the International Trademark Association (INTA). He also has expertise in ethics and professional responsibility issues, specifically on matters of conflicts of interest and attorney disqualification.
Education
- George Washington University Law School, J.D. (with honors), 1990
- Lafayette College, A.B. (with honors), 1987
