Mark J. Rosenberg is a partner in the Intellectual Property Group and chair of the firm’s Reputation Management practice. Mark assists his clients in protecting their rights, reputations and businesses in the fields of intellectual property, defamation, privacy, right of publicity and Internet marketing. His varied client base includes high net worth individuals, early-stage technology companies, established Internet marketers, large apparel companies and national retail and restaurant chains. Mark strives to employ creative and cost-effective strategies in order to achieve the most beneficial results.
Mark collaborates with his clients to acquire, protect, enforce and license their intellectual property rights. He has represented clients in courts throughout the country involving patent, trademark, copyright, trade dress, trade secrets and advertising law. Among many others, the cases have concerned:
• patents covering power tools;
• trade dress covering hand tools and product packaging;
• use of trademarks in advertising and business names;
• copyrights in advertising copy and sculptures; and
• trade secrets underlying software programs.
Mark has developed a specialty in representing clients in cases involving trade dress rights relating to the interior designs of retail stores and restaurants. He works with clients to enforce their trade dress rights and assists clients accused of infringing another’s trade dress rights. Mark also counsels clients in negotiating and structuring a wide variety of licenses, and co-branding, distribution, development, hosting, affiliate, procurement and services agreements.
He understands that the reputation of a person or a business can be easily damaged and works with his clients to protect their reputations in the face of defamatory statements made in online and print publications, YouTube videos, online reviews and in letters and emails sent by competitors to businesses’ partners and customers. He also assists clients when they are the victims of surreptitious videos and revenge porn, and when their photographs are used in advertising without permission.
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.
On April 1, 2021, Intellectual Property Partner Mark Rosenberg was interviewed by Envision Horizons CEO, Laura Meyer regarding the process for combating the unauthorized sale of goods on the Amazon Marketplace.
On the latest Law Brief® episode, Mark Rosenberg, Intellectual Property Partner and a member of the firm’s Amazon Marketplace and Online Intellectual Property Disputes practice, discusses his recent experiences with Amazon’s neutral patent evaluation procedure.
NEW YORK (February 24, 2021) – To meet growing client demand for intellectual property services relating to e-commerce disputes, Tarter Krinsky & Drogin announces the launch of its Amazon Marketplace and Online Intellectual Property Disputes practice group.
Intellectual Property Partner Mark Rosenberg joins host and Litigation Partner Rich Schoenstein to discuss the “Legal Perils of Video Marketing” on the latest episode of Law Brief. Mark and Rich delve into the legal implications of the popular use of video marketing for commercial purposes online and on social media. Listen to the episode.
Tarter Krinsky & Drogin was featured in the Law360 article, "Clothier Owes Atty Fees For 'Stunning' Negligence In TM Case." Tarter Krinsky & Drogin client Hybrid Promotions LLC prevailed on a sanctions motion based on the discovery misconduct of its adversary and its adversary's counsel.
Intellectual Property Partner Mark Rosenberg was featured on the podcast, “Kommerce Kings,” which explores the e-commerce industry. The episode delves into the patent and trademark problems many online sellers face. With his significant experience of successfully representing online sellers, Mark shares how to navigate trademark and patent litigation. He outlines the steps to take when deciding to sell a new product online.
Mark Rosenberg, Intellectual Property partner and co-chair of the firm’s Reputation Management practice, was quoted in the Bloomberg Law article, “Amazon’s Judging of IP Claims Questioned in Seller Lawsuits.”
In the latest episode of Law Brief, Tarter Krinsky & Drogin’s recently released podcast series, Intellectual Property partner Mark Rosenberg joins Litigation partner and host Rich Schoenstein to discuss Amazon’s Pilot Program for Patent Disputes. Mark and Rich talk about Amazon’s new pilot program to arbitrate patent disputes involving sellers on its platform, and the potential impact on the sellers, the patent owners and Amazon itself.
Mark Rosenberg, Intellectual Property partner and co-chair of the firm’s Reputation Management practice, was featured in the Forbes article, “Amazon’s New ‘Utility Patent Neutral Evaluation’ Process Stops Bogus IP Claims.”
The article noted that Mark has represented several parties in Amazon’s new Utility Patent Neutral Evaluation program, which seeks to resolve the issue whereby a utility patent owner and accused seller on Amazon can have their case investigated by a neutral third-party evaluator with expertise in law and utility patents. Mark noted that “not only is the current litigation option expensive, there is a high likelihood that the patent owner will file a counterclaim for infringement and damages based on the sales of the accused product.”
Mark Rosenberg, Intellectual Property partner and co-chair of the firm’s Reputation Management practice, was quoted in Law360’s article, “Judge Sanctions Atty For Disrupting Deposition In TM Case.” The article details U.S. Magistrate Judge Ona T. Wang’s decision awarding sanctions against The Fashion Exchange LLP and its attorney based on the attorney’s interference with the taking of the Rule 30(b)(6) deposition of The Fashion Exchange in a trademark infringement case that it brought. The court ordered that The Fashion Exchange and its attorney jointly and severally pay half the costs and fees that Tarter Krinsky & Drogin client Hybrid Promotions LLC incurred in connection with taking the Rule 30(b)(6) deposition and the motion for sanctions.
Intellectual Property partner Mark Rosenberg was quoted in Law360’s article, “Want To Avoid Costly Patent Cases? Amazon Offers A Hack,” which discusses Amazon’s new program that allows patent owners and Amazon sellers to settle patent infringement disputes in a streamlined proceeding.
Co-chair of the Reputation Management Practice Mark Rosenberg was quoted in “What’s New When It Comes to Tracking Online Reviews?” published by The Real Estate Business Institute magazine. The article detailed what businesses need to know about online reviews.
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 December 10, 2020, Intellectual Property Partner Mark Rosenberg will participate in the panel discussion presented by UCIPF, “OEM Production in China Trademark Related Issues,” The panelists will discuss their experiences helping global companies which use original equipment manufacturers (OEM) in China protect their intellectual property rights in China and the United States.
On June 19, 2020, Reputation Management Co-chair and Intellectual Property Partner Mark Rosenberg will participate on the panel, “Video Marketing and the Rise of Tik Tok” hosted by Envision Horizons. The panel will delve into how to utilize paid video marketing tactics and how to go viral on the social media platform Tik Tok.
Reputation Management practice co-chairs Mark Rosenberg and Anthony Dougherty will be featured speakers at City National Bank’s Pro Sports Business Management Summit on May 10.
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.
One of the biggest frustrations for brand owners is seeing their products sold through unauthorized distribution channels such as on the Amazon Marketplace. Carefully controlled brand experiences and minimum advertised pricing policies can be destroyed when unauthorized sellers offer the brand owner’s products.
Intellectual Property Partner and Reputation Management Co-Chair Mark Rosenberg co-authored the article, "Supreme Court Weighs in on Profit Disgorgement in Trademark Cases," featured in the Fall 2020 edition of the New York State Bar Association's Intellectual Property publication, Bright Ideas. The article discusses the U.S. Supreme Court's decision rejecting the standard in some Circuits that required a finding of willfulness is in order to obtain a defendant's profits as damages in a trademark infringement case. The authors note that the elimination of the willfulness requirement will impact the ways in which the parties to a trademark infringement action litigate the case and approach settlement.
In early 2019, Amazon introduced the Neutral Patent Evaluation Procedure, a streamlined and cost-effective program for resolving disputes between owners of utility patents and Amazon Marketplace sellers accused of infringing those patents. Having represented Amazon Marketplace sellers and a patent owner in Neutral Patent Evaluations, I am convinced that the program works. Utility Patent disputes adjudicated through the Neutral Patent Evaluation Procedure are resolved in far less time than it takes for a patent infringement case to wend its way through a federal district court and at a fraction of the cost. The evaluators are attorneys with relevant technical or patent litigation experience. In my experience, they have not exhibited bias for or against patent owners or Amazon Marketplace sellers, or against Marketplace sellers based overseas such as in China.
In a striking decision issued on July 15, 2020, the U.S. Court of Appeals for the Second Circuit held that motions to dismiss based on state Anti-SLAPP statutes, which require that plaintiffs satisfy a high standard of proof in certain types of defamation cases, cannot be made in federal court because such motions conflict with Rules 12 and 56 of the Federal Rules of Civil Procedure.
As we start a new year, we would like to share with you some of our most popular legal alerts from 2019.
Our top-read alerts range from construction, labor & employment, tax, immigration, trusts & estates, cooperatives & condominiums, real estate, corporate & securities, litigation and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg authored an article featured in Law360 titled, “Navigating Amazon Marketplace IP Disputes.” In the article, Mark focuses on Amazon’s evolved processes, procedures and issues for IP disputes arising from the Amazon Marketplace, including the Amazon Brand Registry and the Neutral Patent Evaluation Procedure.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg authored an article featured in Intellectual Property Magazine titled, “Amazon Assistance.” In the article, Mark discusses Amazon’s neutral patent evaluation program, which creates an alternative to federal court proceedings in patent infringement disputes on its website.
On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States. This rule becomes effective on August 3, 2019.
Often, an Amazon seller accused of patent infringement finds itself in a frustrating predicament. The seller receives an email from Amazon notifying it that the seller’s product is being removed from the site and stating that if the seller believes that the infringement allegation is incorrect, the seller should directly contact the patent owner. Not surprisingly, the seller’s or its attorney’s good faith explanation as to why there is no infringement often falls on deaf ears. And, the seller’s appeals to Amazon for assistance in rectifying the situation are usually fruitless. Earlier this year, Amazon introduced a pilot program that may remedy this situation in a way that benefits both patent owners and Amazon sellers.
Over the past few years, owners of U.S. patents and trademarks have used the appearance of Chinese companies at a trade show as infringement "traps." These patent owners have commenced infringement cases against Chinese companies based on those companies' activities at the trade show.
Mark Rosenberg, Intellectual Property partner and Reputation Management practice co-chair, recently authored an article for Modern Aesthetics magazine titled, "Handling Negative Reviews in the Internet Age." In the article, Mark explores how physicians can protect themselves against negative reviews posted to Internet sites such as Healthgrades, Vitals or Yelp, noting that these reviews "can damage a doctor’s reputation and can have significant ramifications for his or her practice."
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.