Robert W. Zelnick is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C. office. As a member of the Intellectual Property, Media & Technology Department, Robert is head of the Firm-wide Trademark Practice Group. Robert’s practice involves all aspects of acquisition and enforcement of intellectual property rights. Although he is also a registered patent attorney, Robert has focused his practice on trademark and unfair competition matters, where he counsels clients on complex trademark issues and serves as lead counsel for major clients in federal trial and appellate courts. He has been honored in the 2001-2007 editions of the International Who’s Who of Trademark Lawyers (Law Business Research) and the 2007-2008 editions of The Legal 500 United States.
Robert is licensed to practice in the District of Columbia and the Commonwealth of Pennsylvania, and is registered with the U.S. Patent and Trademark Office. In addition, Robert is admitted to practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Fourth, Eleventh and Federal Circuits, and several U.S. District Courts. He served as an intern to the Hon. Eric G. Bruggink of the U.S. Court of Federal Claims in Washington, D.C. in 1989.
Robert is a frequent writer and speaker on intellectual property matters and is active in the International Trademark Association (INTA).
Practice Overview
- Manages all aspects of acquisition and enforcement of intellectual property rights, with focus on litigation of trademark, unfair competition and false advertising disputes, often involving internationally famous trademarks
- Represents clients in all federal trial and appellate courts, and before the U.S. International Trade Commission and the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office
- Counsels clients on selection, clearance, protection and licensing of trademarks, service marks, trade names and other indicia of corporate identity
- Advises on global trademark portfolio management and restructuring to ensure strategic and tax-managed ownership of trademarks around the world
- Evaluates comparative advertising and counsels on parameters of fair use and fair competition
- Enforces rights related to domain name and trademark use and misuse on the worldwide web, and litigates domain name disputes before ICAAN and WIPO and cybersquatting issues under the federal Anticybersquatting Consumer Protection Act
Representative Intellectual Property Clients
- ABSOLUT Vodka (V&S Vin & Spirit AB and The Absolut Spirits Company Inc.)
- Altamar Brands
- ASML Mask Tools
- Hitachi
- Limited Brands, Inc. (including subsidiaries Victoria’s Secret and Bath & Body Works)
- National Grocers’ Association
- Rio Tinto plc
- Tyco International
- UnderArmour
- Waterworks, Inc.
- Werner Company
- Wyndham Hotels & Resorts/Wyndham Worldwide
Representative Experience
- Serve as lead U.S. intellectual property enforcement counsel for the ABSOLUT Vodka brand. Protect the brand's legal interests in the U.S. through monitoring and enforcement actions, including successful litigations in the federal courts. Also advise regarding trademark licensing, advertising and marketing, strategic worldwide trademark portfolio management, copyright and other intellectual property issues.
- Served as lead intellectual property counsel in connection with the separation of $44 billion conglomerate Tyco Ltd. into three distinct companies, each with a post-separation market capitalization exceeding $10 billion. Intellectual property work included rebranding of Tyco Healthcare as Covidien, Ltd., as well as establishment of a joint venture between Tyco International and Tyco Electronics for purposes of ongoing sharing of the TYCO brand.
- Served as lead counsel for plaintiff Wyndham Hotels and Resorts LLC in federal court litigation for trademark infringement, counterfeiting and related causes of action against the operator of a landmark hotel. Secured permanent injunction, plus more than $5 million in damages and approximately $2 million in attorneys' fees for Wyndham.
- Served as lead counsel for defendant American Marine Holdings, Inc. in federal court litigation relating to claims that AMH infringed the plaintiff's boat design and trade dress. Secured judgment for AMH and recovered over $500,000 in attorneys' fees for AMH as the successful defendant. Served as lead appellate counsel for AMH on the subsequent appeal, where trial court judgment was affirmed in its entirety and where AMH was also awarded its fees on appeal.
Representative Litigations Since 2000
- Wyndham Hotels and Resorts LLC v. Merco Group at GB Hotel, ___ F. Supp. ___(S.D. Fl. 2008)
- Maverick Boat Co. v. American Marine Holdings, Inc., 418 F.3d 1186 (11th Cir. 2005)
- Maverick Boat Co. v. American Marine Holdings, Inc., 70 U.S.P.Q.2d 1493 (S.D. Fl. 2004)
- Nitro Leisure Products v. Acushnet Co., 2002 U.S. Dist. LEXIS (S.D. Fla. 2002), aff’d, 341 F.3d 1356 (Fed. Cir. 2004)
- Victoria’s Secret Stores, Inc. v. Artco Equip. Co., 194 F. Supp. 2d 704 (S.D. Ohio 2002)
- V&S Vin & Sprit AB d/b/a The Absolut Company v. Absolut Beach Pty., Ltd., 60 U.S.P.Q.2d 1310 and 61 U.S.P.Q.2d 1277 (E.D. Va. 2001)
- V&S Vin & Sprit AB, d/b/a The Absolut Company v. Pusher, Inc., ___ F. Supp. 2d___ (D. Utah 2001)
- V Secret Catalogue, Inc. v. Zdrok, ___ F.Supp.2d ___(C.D. Cal. 2001)
- Re/Max International, Inc. v. Blagden, 2000 TTAB LEXIS 762 (TTAB Nov. 8, 2000)
Education
- George Washington University Law School, J.D. (with honors), 1990
- Lafayette College, A.B. (with honors), 1987
