Mark J. Rosenberg is a Partner in the Intellectual Property Group and a Co-Chair of the firm’s Reputation Management practice. He has more than 25 years of experience assisting clients in protecting their reputations from defamation and violations of their publicity and privacy rights as well as representing clients in acquiring, protecting, enforcing and licensing their intellectual property rights. He is experienced in all areas of patent, trademark, copyright, trade dress, defamation, privacy, trade secrets and advertising law. In addition to being a litigator, he counsels clients in negotiating and structuring a wide variety of licenses, co-branding, distribution, development, hosting, affiliate, procurement and services agreements.
As a litigator, he advises clients in cost-effectively avoiding and resolving legal disputes and has successfully handled complex patent, trademark, copyright, unfair competition, trade dress and false advertising and defamation actions in federal district and appellate courts, and before the Trademark Trial and Appeal Board.
Mark has developed a specialty in representing clients in cases involving trade dress rights relating to the interior designs of retail stores and restaurants. In these cases, he works with clients to enforce their trade dress rights as well as assisted clients accused of infringing another’s trade dress rights.
Mark began his career as an attorney at Proskauer Rose LLP where he was a commercial litigator. Mark also spent many years practicing law at the intellectual property boutique Amster Rothstein & Ebenstein LLP where he worked in nearly every area of intellectual property law.
Recent representative matters include:
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I LOVE SUGAR is much more than a candy store. The high-end retailer takes the candy we all love and delivers a magical experience. State of the art design, including custom fixtures and attention to details, is what the experiential retailer believes makes shoppers often refer to I LOVE SUGAR as "the Apple store of candy". In a trade dress and trademark infringement case brought by their competitor, It’Sugar claimed that I LOVE SUGAR infringed their trademark and the overall look and feel of It’Sugar retail stores.
Reputation Management co-chair Mark Rosenberg was interviewed by Barry Moltz on Business Insanity Talk Radio, a radio show that discusses the complexities and nuances of small businesses. During the segment, Mark differentiates between the various ways in which it is possible to respond to negative and defamatory reviews of one’s company.
Tarter Krinsky & Drogin and Reputation Management co-chair Mark Rosenberg were noted in a Law360 article, “NY Post Tells Judge It Stands By 'Biggest Loser' Exposé,” for representing Robert Huizenga as co-counsel with Los Angeles firm Harder Mirell & Abrams LLP.
Reputation Management co-chair Mark Rosenberg spoke with Inside Counsel for the article, “Dealing with Negative or Defamatory Reviews on Social Media.” The article raises the point that since social media posts can be easily shared, negative or false reviews can go viral and quickly damage an individual’s or business’ reputation. Mark discusses various methods for mitigating the damage of negative reviews and handling those that are defamatory.
Tarter Krinsky & Drogin successfully defended I love Sugar, a locally owned high-end candy retailer based in Myrtle Beach, South Carolina in a trade dress infringement case brought by their competitor It’Sugar.
We are representing Fitbug in suit against health gadget maker Fitbit, alleging trademark infringement, as well as unfair competition and unfair business practices, arguing that Fitbit's name is confusingly similar to Fitbug.
On October 27 Tarter Krinsky & Drogin partnered with Lawline to host “Business in a Box” – a one-day series of CLE presentations designed to address the top legal issues facing emerging companies in growing and protecting their businesses.
Mark Rosenberg will be speaking on “Trademark Prosecution and Disputes in the United States” at the China Trademark Festival on June 15. The festival is sponsored by the China Trademark Association and the Dalian Municipal Government.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg published the article, “What to Do When You or Your Business is Being Defamed on a Review Site” for Forbes. In the article, Mark notes that in the age of social media, an individual’s or company’s good reputation can often be undone – and at lightning speed – by a negative review on an online review site.
An article on right of publicity issues by Intellectual Property partner and Reputation Management co-chair Mark Rosenberg was featured in the Luxury Daily. The article delves into the implications of a California woman’s $2.2 billion lawsuit against restaurant chain Chipotle, which used her photograph in its promotional materials without her consent.
This month, a California woman sued Chipotle for $2.2 billion based on the burrito chain's unauthorized use of her photograph in its promotional materials.
Over the past two years, owners of U.S. patents have used Chinese companies' appearances at a trade show as a patent infringement "trap."
With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.
Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.
The patent landscape has changed regarding business method patents.
In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.
Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”
In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.
Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.