Stephen focuses his practice on intellectual property litigation and counseling.
Stephen represents a broad base of clients in intellectual property litigation and prosecution, with an emphasis on trademark, trade dress, copyright, domain name, and technology litigation and dispute resolution. His practice also includes intellectual property audits and policies; clearance, registration and management of intellectual property assets; intellectual property and technology licenses, transfers, and agreements; and counseling on advertising and promotions, including consumer sweepstakes. He is recognized as an industry leader by numerous rankings and other publications, including Chambers USA, Legal 500 United States, and Best Lawyers. World Trademark Review 1000 has said he is “noted for his prosecution prowess and ability to secure [] value for brands’ IP assets” and is “equally skilled in trademark litigation” (2023).
Stephen has practiced in federal courts throughout the country and is admitted to practice before the United States Supreme Court, the Fourth Circuit, and the U.S. District Courts for the Eastern and Western Districts of Virginia. He was a judicial clerk for the Honorable James R. Spencer, United States District Court for the Eastern District of Virginia from 1989-1990.
Relevant Experience
Represented numerous plaintiffs and defendants successfully in litigation, alternative dispute resolution, opposition proceedings, cancellation proceedings, and other administrative proceedings relating to trademarks, trade dress, copyrights, and technology licenses and agreements.
Represented leading global supplier of heat transfer, separation, and fluid handling products in federal trademark infringement and false advertising case against competitor, defeating dispositive motions and obtaining favorable settlement.
Represented national manufacturer of mounting systems, protective cases, and decking solutions for mobile devices against trademark, inter competition and contract claims, obtaining removal to federal court and assisting with settlement.
Represented Fortune 100 company in multiple federal lawsuits to enforce its trademark, trade dress, copyright, and design patent rights, obtaining preliminary injunctions and favorable settlements.
Defended Fortune 100 consumer products company against federal and state trademark infringement and dilution claims asserted by national competitor, obtaining summary judgment on all claims, and affirmance on appeal.
Represented national lawn care products company in federal lawsuits in various jurisdictions to protect its trademark, trade dress, and copyright rights, and to protect against deceptive competitor advertising, obtaining preliminary injunctions and favorable settlements.
Represented award-winning restaurateur in litigation to enforce trademark and domain name rights.
Represented software developers, consumer products retailers, and other companies in intellectual property, domain name, and advertising disputes in federal courts, state courts, alternative dispute resolution, mediation, and ICANN proceedings.
Conducted intellectual property and website audits and developed intellectual property policies for numerous companies.
Assisted numerous companies in the clearance, registration and maintenance of trademarks in the United States and worldwide.
Assisted Fortune 250 financial services company in clearing and registering new corporate name and service mark in the United States and worldwide.
Assisted large energy company in trademark maintenance, disputes, and name change.
Assisted international charity in global name change, including worldwide clearance, registration, and licensing.
Developed and negotiated intellectual property and technology licenses and agreements for numerous owners and users of intellectual property and technology, including software licenses, outsourcing agreements, employee and independent contractor agreements, e-commerce agreements, Web site development and linking agreements, and other Internet agreements.
Reviewed proposed advertising, promotional, and sweepstakes materials for consumer products companies, Internet companies, advertising agencies, and professional sports leagues.
Published Opinions: Georgia-Pacific Consumer Products LP v. von Drehle Corp., 618 F.3d 441 (4th Cir. 2010), 710 F.3d 527 (4th Cir. 2013). In enMotion® dispenser stuffing case, obtained reversal of summary judgment for von Drehle on Georgia-Pacific's contributory trademark infringement and tortious interference claims and affirmance of summary judgment for Georgia-Pacific on von Drehle's deceptive trade practices counterclaim. Later obtained reversal of trial court’s judgment for von Drehle and reinstatement of jury verdict for Georgia-Pacific on its trademark and tortious interference claims.
Published Opinion: CFA Institute v. Institute of Chartered Financial Analysts of India, 551 F.3d 285 (4th Cir. 2009).
Published Opinion: Circuit City Stores, Inc. v. Speedy Car-X, Inc., 35 U.S.P.Q.2d 1703 (E.D. Va. 1995). After bench trial, obtained dismissal of Circuit City's action for declaratory judgment that its CARMAX mark did not infringe Speedy's CAR-X mark on ground that Circuit City failed to establish case or controversy.
Published Opinion: Playtex Products, Inc. v. Georgia-Pacific Corp., 67 U.S.P.Q.2d 1923 (S.D.N.Y. 2003), aff'd, 390 F.3d 158 (2d Cir. 2004). Obtained summary judgment for Georgia-Pacific on all of Playtex's federal and state claims - Georgia-Pacific's QUILTED NORTHERN MOIST-ONES mark did not infringe or dilute Playtex's WET ONES mark. Obtained affirmance from Second Circuit.
Published Opinion: Takeall v. Pepsico, Inc., 809 F. Supp. 19 (D. Md. 1992), aff'd, 14 F.3d 596 (4th Cir. 1993), cert. denied, 512 U.S. 1236 (1994). Obtained summary judgment for Pepsico on plaintiff's copyright claims related to Diet Pepsi commercials featuring Ray Charles and "You got the right one, Baby, uh-huh!" slogan.
Published Opinion: Westvaco Corp. v. International Paper Co., 31 U.S.P.Q.2d 1798 (E.D. Va. 1994). On remand from court of appeals, defeated International Paper's motion for attorney's fees in patent infringement case.
Memberships
Member, International Trademark Association, ABA Intellectual Property Law Section, and American Intellectual Property Law Association
Member, International Trademark Association Features Subcommittee
Council Member, Virginia Bar Association Intellectual Property and Information Technology Law Section Council
Past Member, Board of Directors, Virginia State Bar Intellectual Property Law Section
Member, The Historical Society of the United States District Court for the Eastern District of Virginia
Past Member, Merit Selection Panel, US District Court, Eastern District of Virginia (2011)
Past President, Harvard Law School Association of Virginia
Awards & Recognition
Named a Trademark Star in the IP STARS Handbook (2023), Managing Intellectual Property
Recognized as a Leading Trademark Professional in Enforcement & Litigation in Washington, DC (2022-2024), World Trademark Review 1000
Recognized as a Leader in Intellectual Property in Southern Virginia (2008-2023), Chambers USA
Recommended for Trademarks: Non-Contentious (2020-2023), Trademarks: Litigation (2020) and Copyright (2011), Legal 500 United States
Recognized as a Runner Up for Litigator of the Week (April 2022), American Lawyer’s Litigation Daily
Recognized as a Best Lawyer for Copyright Law, Intellectual Property Litigation, Trademark Law, and Intellectual Property Law (2007-2020, 2023-2024), Lawyer of the Year for Copyright Law in Virginia (2019), and Richmond Copyright Lawyer of the Year (2012), The Best Lawyers in America
Recognized as a Super Lawyer for Intellectual Property (2011-2023), Virginia Super Lawyers
Named among the Legal Elite for Intellectual Property Law (2004, 2006, 2010-2011, 2013-2014), Virginia Business
Best Overall Team, Ames Moot Court Competition, Harvard Law School, 1988
Insights
Events
Co-presenter, “Is Your Look Worth a Million Bucks?: Trademark, Copyright, and Design Patent Protection,” Virginia Bar Association Intellectual Property and Information Technology Law Section Fall CLE, Richmond, Virginia, October 22, 2018
Presenter, The Year in Intellectual Property and Information Technology Law, Virginia Bar Association Summer Meeting, July 20, 2018
Presenter, Is the Second Circuit “Transforming” Fair Use? Greater Richmond Intellectual Property Law Association, January 28, 2016
Presenter, Eastern District of Virginia Intellectual Property Year in Review, for Thomas Jefferson Intellectual Property American Inn of Court, University of Richmond Law School, Richmond, VA, March 25, 2015
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