Overview

Robert W. Zelnick is a nationally recognized intellectual property (IP) lawyer with an established record of success. Although he is also a registered patent attorney, for more than two decades Robert has focused his practice on trademark, unfair competition and false advertising matters, where he counsels clients on complex IP issues and serves as lead counsel for major clients in federal trial and appellate courts. According to client feedback in World Trademark Review, as the former head of the Firm’s Global Trademark Practice Group for 10 years, he has “an absolutely superb track record in the courtroom.” Clients also single him out for his “particular thoroughness in his research, his answers to our questions, and the depth of the options he provides us with.” In 2017, Robert was named to The Legal 500’s inaugural Hall of Fame, which recognized fewer than 500 US lawyers across all fields of practice. Robert also serves as an adjunct professor at George Washington University Law School, teaching “Advanced Trademark Law.”

Practice overview:

Manages all aspects of acquisition and enforcement of intellectual property rights, with a focus on litigation of trademark, unfair competition and false advertising disputes, often involving internationally famous trademarks
Represents clients in federal trial and appellate courts throughout the United States, and also before the US International Trade Commission and the Trademark Trial and Appeal Board of the US Patent and Trademark Office
Counsels clients on selection, clearance, protection and licensing of trademarks, service marks, trade names and other indicia of corporate identity
Develops risk-management strategies and protocols, particularly for new and outside-the-box marketing campaigns
Advises on global trademark portfolio management and restructuring to ensure strategic and tax-managed ownership of trademarks worldwide
Reviews advertising copy and counsels on parameters of copyright, fair use, comparative advertising, rights of publicity and privacy, and unfair competition

Robert writes and speaks frequently on intellectual property matters, and has served as a testifying expert in connection with trademark issues. He served as an intern to the Honorable Eric G. Bruggink of the US Court of Federal Claims in Washington, DC, in 1989. Robert earned his bachelor’s degree in biology from Lafayette College and his JD, with honors, from George Washington University Law School where he is currently an adjunct professor and teaches “Advanced Trademark Law”.

Show Less

Results

Serves as lead US intellectual property enforcement counsel for the ABSOLUT, MALIBU and KAHLUA brands; protects the brands’ legal interests in the US through monitoring and enforcement actions, including many successful litigations in the federal courts; also advises 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 the establishment of a joint venture between Tyco International and Tyco Electronics for purposes of ongoing sharing of the TYCO brands
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. (AMH) in the first-ever federal court litigation relating to boat vessel hull design protection; secured judgment for AMH and recovered more than $500,000 in attorneys’ fees for AMH as the successful defendant; also served as lead appellate counsel for AMH on the subsequent appeal, where trial court judge was affirmed in its entirety and where AMH was also awarded its fees on appeal
Secured a temporary restraining order, preliminary injunction and, later, money damages and attorneys’ fees for a major financial services company in trademark and counterfeiting litigation before the US District Court for the Southern District of New York; also worked with the US Attorney for the South District of New York in connection with the indictment of the defendant on criminal counterfeiting charges
Defended a major manufacturer of refurbished goods, which was sued for trademark infringement in the US District Court for the Southern District of Florida; successfully avoided entry of preliminary injunction; denial of preliminary injunction was affirmed on appeal to the US Court of Appeals for the Federal Circuit

Show Less

Recognitions

Chambers USA 2016
The Legal 500 US 2007 to present, Leading Lawyer; inaugural member of The Legal 500 “Hall of Fame”
International Who’s Who of Trademark Lawyers 2001 to present, Law Business Research