Lawyer Detail

Mark D. Engelmann

Practice Description
Mark Engelmann specializes in the areas of trademark and copyright counseling (including extensive experience in trademark clearance and enforcement strategy), litigation, and licensing, as well as the intellectual property aspects of corporate transactions. He represents a diverse international clientele, including a prominent luxury watch and jewelry manufacturer, a "Big Four" accounting firm, a leading provider of engineering and architectural software, a major producer and distributor of alcoholic beverages, a multinational consumer health company, and a Fortune 50 conglomerate with interests in the manufacturing, entertainment, and financial fields. On behalf of these clients and others, he has devised and implemented trademark filing programs in the U.S. and abroad, provided representation in litigation involving issues of trademark and copyright infringement and unfair competition, counterfeiting, misappropriation, the "gray market," and trademark dilution (including a leading case in this area), and advised on matters ranging from first amendment and parody issues to sophisticated intellectual property-driven corporate transactions.

Hampshire College (B.A., Philosophy, 1976); Georgetown University Law Center (J.D., 1984).

Professional Activities
Mr. Engelmann is an active member of the International Trademark Association (INTA), having served on its Meetings Board and Planning Committee and as Chair of its U.S. Roundtable Program. He is a member of the American Bar Association's Intellectual Property Law Section, having served as Chair of its Committee on Patent and Trademark Office Affairs-Trademarks. He has been a member of the Public Advisory Committee for Trademark Affairs of the U.S. Patent and Trademark Office, which advises the Trademark Office on matters of policy and operations. Mr. Engelmann has served as Chair of the Brand Names Education Foundation's Saul Lefkowitz Moot Court Competition. He has chaired the Practicing Law Institute's program "How to Draft, Negotiate and Enforce Trademark, Copyright and Software Licensing Agreements," and has been on the faculty of PLI's Program "Understanding Franchising: Business and Legal Issues." He speaks frequently on intellectual property matters, and has served as a commentator on legal and business affairs programs on the COURT TV and CNBC television networks.

Recognized in the 2014 edition of the World’s Leading Trademark Law Professionals, published by Euromoney Legal Media Group and in the 2014 Trademarks edition of Who’s Who Legal. Included in the list of Super Lawyers – Business Edition 2013 and Super Lawyers – New York Metro 2014. Recognized as being “particularly noted for his experience in trademark clearance and enforcement strategy” in the 2014 edition of Legal 500 US guide, and as a “real authority on trademark clearance” with a “diverse range of major international clients” in the 2014 edition of Who’s Who Legal 100. Listed as a “Leading Lawyer” in both 2014 and 2015 editions of Legal 500 US, and as one of Managing Intellectual Property’s IP Stars in 2014 and 2015. Recognized for his “robust guidance” in 2014 edition of World Trademarks Review.

New York State
New Jersey State
District of Columbia
United States Court of Appeals for the Federal Circuit
United States District Courts for the Southern and Eastern Districts of New York

Published Works

Licensology: Trademark Searches -- Assessing A Trademark's Strength and Risk.

Reprinted with permission from the publisher © Advanstar Communications/LICENSE, Vol. 10 No. 10, November 2006

NameProtect Trademark Insider

Trademark attorneys respond to NameProtect's questions about industry topics of interest.