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Mark I. Peroff

Mark Peroff

Partner
Direct Phone: 212.784.5806
Direct Fax: 212.784.5758
mperoff@hblaw.com
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Profile

Mr. Peroff is co-chair of the Firm’s Branding, Trademarks & Copyrights Practice Area. He is a veteran in the area of intellectual property, focusing his practice for over 30 years in helping clients establish, maintain, and enforce or defend their intellectual property rights in the United States and other countries throughout the world. He represents clients which own some of the world's most famous brand-names in fields such as the visual arts, beverages, cameras, computer hardware and software, cosmetics, e-commerce, entertainment, fashion, finance, luxury goods, pharmaceuticals, and the retail sector, in addition to not-for-profit and eleemosynary organizations.

His work includes counseling clients on the availability of new brand names intended for use in the U.S. or on a global basis; filing and prosecution of trademark applications in the U.S. and over 200 countries; Federal litigation, development and implementation of anti-counterfeiting enforcement programs; proceedings before the U.S. Patent and Trademark Office and under the Uniform Dispute Resolution Policy for domain name disputes, licensing and assignments; and due diligence in acquisitions and divestitures; copyright registration and notice and take down procedures under the Digital Millennium Copyright Act.


Areas of Practice


Representative Clients / Matters

  • Large multinational companies, mid-size service and manufacturing industries, not-for-profit organizations, inventors and entrepreneurs in many areas of commerce


Publications / Speaking

  • Frequent writer and lecturer on a myriad of intellectual property topics, nationally and internationally.
  • Conditional 'Functionality': The New Standard for Evaluating Aesthetic Functionality Established by the Second Circuit in Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., Fordham Entertainment, Media & Intellectual Property Law Forum, Spring, 1991
  • The Charter of the French Language
  • Korean Patent Law Association, Guest Lecturer


Admitted to Practice

  • New York
  • US Court of Appeals, Federal Circuit
  • US Court of Appeals, 2nd Circuit
  • US District Court, Southern District of New York
  • US District Court, Eastern District of New York
  • US Patent and Trademark Office
  • Ohio
  • District of Columbia


Education

  • University of Cincinnati College of Law, J.D., 1973
  • University of Cincinnati, B.A., 1969


Professional Affiliations

  • American Intellectual Property Law Association
  • American Bar Association, Patent, Trademark and Copyright Law Section
  • New York State Bar Association
  • Ohio State Bar Association
  • Association of the Bar of the City of New York
  • European Community Trademark Assocation (Foreign Member)
  • Federal Bar Association
  • Licensing Executives Society
  • New York County Lawyers’ Association
  • Institute of Trademark Agents U.K., (Foreign Member)
  • International Federation of Industrial Property Attorneys, U.S.
  • Pharmaceutical Trademark Group
  • Swedish Patent and Trademark Association
  • La Asociacion InterAmerican de la Propriedad Industrial
  • International Trademark Association, Leadership Development Committee


Civic Activities

  • Volunteer Lawyers for the Arts


Prior Experience

  • K&L Gates LLP, Partner
  • U.S. Patent & Trademark Office, Examiner


Languages

  • French


Office Location

Seven Times Square
New York, New York 10036
Office Phone: 212.784.5800
Office Fax: 212.784.5777



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