Experience

Mark N. Mutterperl has worked in all phases of trademark law. His practice focuses on brand protection. He litigates trademark infringement, dilution and counterfeiting cases; copyright, false advertising, right of publicity, contract and other commercial matters. Mark combats intellectual property theft and has organized anti-counterfeiting programs for major brand owners and helped to implement them. Importantly, too, Mark handles all aspects of portfolio management including providing strategic counsel on registration and enforcement, name selection, investigation and Trademark Trial and Appeal Board matters.

He has represented clients in numerous industries including technology, telecommunications, retail, pharmaceutical and homeopathy, consumer goods, luxury goods, cosmetics, apparel and jewelry, food and beverage, entertainment, information and market research, paper and financial institutions.

Mark has been repeatedly honored by Best Lawyers, Chambers USA, Super Lawyers, World Trademark Review 1000, Legal 500 US and Managing Intellectual Property. Among other things, World Trademark Review 1000 has selected Mark as one of the top United States attorneys for anti-counterfeiting and a top New York enforcement and litigation lawyer. He is listed in Euromoney’s Expert Guides and was named an IP luminary by Trademarkworld.

When selecting Mark for its rankings, these organizations have noted that he is a “great practitioner,” “a terrific attorney with a very friendly style,” “intelligent and effective,” a “very strong lawyer,” and “one of the true national leaders in anti-counterfeiting matters.”

He has represented clients ranging from individuals and start ups to some of the best-known brands in the world including Apple, Pfizer, Johnson & Johnson, Estee Lauder, The Procter & Gamble Company, Starbucks, BlackBerry, Raycom Media, GSK, Borghese Cosmetics, and Men’s Wearhouse.

Representative Matters

• Represented the International Trademark Association in amicus submissions, including at the Supreme Court involving questions of trademark tacking and whether an unsuccessful trademark applicant must pay attorneys fees if it chooses to appeal to a federal district court.
• Represented the International AntiCounterfeiting Coalition in an amicus submission in the Second Circuit on whether foreign banks must provide information to brand owners when foreign law arguably conflicts with U.S. law.
• Successfully defended the manufacturer of a famous video game, relying on the First Amendment to defeat right of publicity infringement allegations brought by a notorious historical figure.
• Stopped the sale of an infringing name and the sale of counterfeit goods for a world famous technology company.
• Represented leading consumer goods companies and a famous international pharmaceutical company in a series of trade dress infringement cases and stopped both the use of packaging that was similar to that of billion dollar brands and false advertising claims.
• Prosecuted leading trademark infringement and dilution cases for an internationally famous coffee company.
• Obtained preliminary injunction based upon trademark infringement for start up consumer goods company.
• Defeated claims of copyright infringement made against media companies involving a popular television reality show.
• Obtained dismissal of copyright infringement claims on jurisdictional grounds for major medical company.
• Stopped trademark infringers for a nationwide men’s retail clothing chain through federal court litigations and non litigation proceedings.
• Successfully represented a world famous technology company in cases involving the counterfeiting of several products, including ex parte seizures in several locations.
• Handled a worldwide investigation and litigation to stop the counterfeiting of best selling shampoos.
• Defeated a purported class action that claimed the trademark owner of authentic goods should be held liable for damage caused by counterfeit products.

Representative Presentations

• “Counterfeiting: The Dark Side Of IP,” New York Law School’s Master Series, October 14, 2015.
• Trademark Panel addressing Hana Financial, Inc. v. Hana Bank and B&B Hardware, Inc. v. Hargis Industries, Inc., Sixth Annual Supreme Court IP Review, Chicago-Kent College of Law, September 25, 2015.
• Panelist, American University Washington College of Law, Program on Information Justice and Intellectual Property, concerning Supreme Court’s consideration of trademark tacking in Hana Financial v Hana Bank, Washington, D.C., December 3, 2014.
• Interviewee, Bloomberg Radio, “Tesla Sued In China For Trademark Infringement,” July 14, 2014.
• Moderator, “What’s Behind Door Number Two? Seeking Assets and Discovery from Foreign Banks,” International AntiCounterfeiting Coalition Annual Fall Conference, October 17, 2013.
• “What Do I Gotta Do To Be Famous Around Here? An Examination Of Recent Trends In Federal Dilution Law,” American Bar Association Intellectual Property Law Section, Arlington, Virginia, April 4, 2013.

Representative Publications

• Trademark Tacking And What It Means For Your Brands,” World Trademark Review, August/September 2015.
• “The Mounting Threat From Counterfeits,” Today’s General Counsel, June/July 2015.
• “Brand Owners Can Make Trademark Tacking Stick,” Law 360, January 2015.
• “IP Owners Beware: The Third Industrial Revolution Is Upon Us,” LawyerMade, September 2014.
• “How To Score Your Anti-Counterfeiting Efforts,” Managing Intellectual Property, July 18, 2012.

Current Academic Involvement

• Adjunct Professor of Law, New York Law School, teaching Trademark and Unfair Competition Law
• New York Law School Innovation Center For Law And Technology, Advisory Council, 2015-present.

Selected Honors

• Best Lawyers In America, 2010–Present
• Chambers & Partners, Chambers USA, Trademark & Copyright, 2008–Present
• World Trademark Review 1000: The World’s Leading Trademark Professionals, 2011-Present
• Legalease, The Legal 500 United States, Leading Lawyer, 2013; Intellectual Property: Non-contentious (full coverage), 2013–2015
• Thomson Reuters, New York Super Lawyer, 2007–Present
• Euromoney Institutional Investor PLC, Managing Intellectual Property, IP Star, 2013–Present
• Euromoney Institutional Investor PLC, Expert Guides, Trademark Law Practitioner, 2014-Present
• TrademarkWorld, IP Luminary, 2007

Mediations

Trained as a Mediator, Mark has been selected for the Panel of Trademark Mediators by the International Trademark Association and for the
Trademark Panel of the CPR Institute For Dispute Resolution.

Selected Affiliations

• International Trademark Association
  • Current member of International Amicus Committee, U.S. Subcommittee
  • Prior committees include Chair, North America Subcommittee of Anti-Counterfeiting & Enforcement Committee
• Panel Of Trademark Mediators
• American Bar Association
  • Section of Intellectual Property
  • Former Council Member
  • Former Chair, Division on Trademarks and Unfair Competition
  • Section of Dispute Resolution
• CPR Institute for Dispute Resolution
  • Trademark and New York City Panels
• The International AntiCounterfeiting Coalition, Inc.
• Intellectual Property Owners Association
• American Intellectual Property Law Association
• Copyright Society of the U.S.A.
• ICE Foundation, Board of Directors

Professional History

For twenty-three years, Mark was a partner at Fulbright & Jaworski in New York City and Washington, D.C., and for a shorter time, a partner at Bracewell & Giuliani in New York City. Mark also served as a Senior Attorney for the United States Department of Justice and a Special Assistant United States Attorney.

Education

Mark earned his joint undergraduate degree (B.A.) from Boston University, and earned his law degree (J.D.) from the Georgetown University Law Center.