Janet F. Satterthwaite

Janet Satterthwaite is an internationally recognized and versatile trademark attorney equally skilled in contentious and noncontentious matters. She provides one-stop guidance on worldwide trademark counseling, prosecution and portfolio management, licensing, enforcement/litigation, and cyberspace problems for brands across a variety of industries, from famous global brands to start-ups. Major ranking publications praise her as:

A “renowned trademark counsellor” and “solid choice for world famous brands intent on high-quality expertise and a dexterous approach.“ — World Trademark Reporter 2023

“a dynamic and creative lawyer who recognizes clients’ ultimate business goals and exactly how to achieve them. She gives companies peace of mind whether they’re rebranding, expanding product lines or enforcing rights.” — World Trademark Reporter 2022

“a first-class legal brain and extremely commercially minded”— World Trademark Reporter 2018

“sees the big picture, can tackle challenging questions and knows both US and EU trademark practice inside and out – she is fantastic.” — World Trademark Reporter 2018

“[a] multilingual…draw for cross-cultural branding matters… ” — World Trademark Reporter 2017

“highly thought of for a practice that covers the gamut of trademark and copyright matters. She acts for a diverse client base, providing strategic advice on portfolio management and also handling complex litigation proceedings" — Chambers USA 2017

Representative Experience

Trademark

• Provides strategic management of global and national brands from clearance to registration to litigation, social media, and enforcement
• Guides clients through challenges to brands in cyberspace, online misuse of trademarks, online counterfeiting, false blogs, phishing and data security, e-commerce sites, and social media
• Uses online forensics and U.S. foreign courts in creative ways to find and shut down infringing websites by Internet infringers worldwide.
• Counsels clients on brands and social-media marketing.

Litigation

A respected adversary, Satterthwaite leads many trademark, domain name, copyright and false advertising lawsuits in federal courts, often in New York, Virginia and Maryland, as well as numerous other U.S. federal district and appellate courts and, with local counsel, in foreign countries, often resulting in preliminary and permanent injunctions for clients. She has also been lead counsel in well over 100 inter partes cases before the Trademark Trial and Appeal Board. Recent representative matters include:

United States

• Won Motion to Dismiss all trademark claims after briefing and oral argument (U.S. District Court for the Northern District of California 2023)
• Filed Declaratory Judgment action in response to cease and desist letter, giving client control of timing and location of litigation, and filed strategic early motions in order to drive settlement between two major competitors in their industry. (U.S. District Court for the Eastern District of Virginia 2022)
• Sued financial services company, resulting in change of name away from client’s trademark (U.S. District Court for the District of Colorado 2021)
• Successfully defended major consumer goods company with more than $1 billion in sales from claim of trademark and trade dress infringement by filing declaratory judgment action in client's home state of Massachusetts, thus beating plaintiff to the Courthouse and depriving it of preferred California venue. Won several key procedural motions to defeat early discovery for a threatened preliminary injunction motion in California, and protected choice of Massachusetts venue, ultimately causing plaintiff to withdraw Complaint in total victory for client (U.S District Court for the District of Massachusetts; U.S. District Court for the Southern District of California 2021)
• Protected Retirement Community brand by suing to require competitor to cease use of similar name (U.S. District Court for the Southern District of Florida 2021)
• Protected brand of New York hedge-fund client against infringement by New York Commercial Financial Services company (U. S. District Court for the Southern District of New York 2020)
• Favorably settled litigation over long-running, complex, multinational trademark dispute between New York hedge fund and European private equity firm (U. S. District Court for the Southern District of New York 2019)
• Won motion to dismiss federal trademark lawsuit that was part of a larger multinational dispute involving the management and branding of a high-end tropical resort (U.S. District Court for the Southern District of Florida 2019)
• Won Temporary Restraining Order against organizer of an event who was falsely advertising that client, a prominent higher education institution, had sponsored the event (U.S. District Court for the Northern District of Georgia 2018)
• Obtained fast settlement in favor of financial services client against large competitor, avoiding need for Preliminary Injunction proceedings (U.S. District Court for the Southern District of New York 2017)
• Successfully represented legendary German electronic music band in Trademark infringement litigation (U.S. District Court for the District of Delaware 2017)
• Argued and obtained temporary restraining order and expedited discovery from third parties on behalf of prominent hedge fund who was being impersonated on the Internet by a Ponzi scheme, resulting in immediate shut down of the key website, permanent injunction and maximum statutory $100,000 damages (U.S. District Court for the District of Connecticut 2012)
• Led a team which filed amicus briefs on behalf of perfume manufacturer Coty, Inc., in landmark case Tiffany v. eBay, which addressed the scope of liability of online marketplaces to prevent the sale of counterfeits. (U.S. Supreme Court 2010; U.S. Court of Appeals for the Second Circuit 2008)
• Assisted with briefs and Moot Court Oral Argument prep for Walmart v. Samara, often called the Trademark case of its decade (U.S. Supreme Court 2000)

International

• Litigated trademark infringement lawsuit in financial services sector; settled in client's favor (Irish High Court of Chancery 2021)
• Successfully defended Cancellation action by winning on the merits (China Trademark Office 2021)
• Settled Opposition in client's favor in financial services industry as part of multinational ongoing co-existence battle (Singapore Intellectual Property Office 2021)
• Negotiated tense trademark dispute and kept U.S. client out of threatened lawsuit (Australia 2020)
• Successfully defended five Oppositions and won on the merits against major brand owner in EU to achieve registration of key brand for client in nutritional supplement category (EU Intellectual Property Office 2020)
• Successfully defended and settled EU Opposition by filing countering cancellation action in the United States, clearing the way for client to register its main brand in both the EU and U.S. (EU Intellectual Property Office and U.S. Trademark Trial and Appeal Board 2020)

Advertising

• Provides expertise in Internet keyword advertising, false blogs and other Internet advertising issues.
• Works with experts on survey design in false advertising and trademark cases.