Michelle Mancino Marsh has built an impressive track-record practicing in the areas of trademark and copyright law, unfair competition, anti-counterfeiting/anti-piracy, internet law, fashion law, design patent, trade secrets and mask work protection. She is the chair of the firm‘s Fashion, Apparel and Footwear law practice, representing some of the best known brands and retailers in the fashion and footwear industries in all aspects of intellectual property protection and defense.

Ms. Marsh has received recognition from a number of legal publications, including the 2014 edition of World Trademark Review 1000 which recognizes her as “a tremendous advocate’ with a particular niche in the protection and enforcement of fashion brands.” She has also been recognized by The Legal 500 United States (2014), The International Who’s Who of Trademark Lawyers (2014), and the 2014 edition of Benchmark Plaintiff which named her one of the “Top 150 Women in Litigation.” Benchmark Plaintiff also named Ms. Marsh as a “Local Litigation Star (2014) – New York, Plaintiff.” Additionally, Ms. Marsh has been recognized as a New York “IP Star” by Managing Intellectual Property (2014). Her previous recognitions include being named to Benchmark Plaintiff’s “Top 30 IP Litigation Stars” in the United States and “Top Local Litigation Stars” in New York (2012), as well as being recognized by IP Law and Business Magazine as one of the “Top 50 IP Attorneys” under the age of 45. In 2011, she was selected as an “Attorney of the Year” for growing businesses by The New York Enterprise Report.

Her clients span a broad range of industries from fashion, consumer goods and services to computer software and hardware, financial and insurance services, and life sciences to media and interactive entertainment. Ms. Marsh is distinguished not only by the victories she has achieved for her clients but also for the wider influence and interest her cases have generated. She represents clients in state and federal courts and at the U.S. Patent and Trademark Office. She has also successfully obtained preliminary injunctions and ex parte seizure orders on behalf of her clients, and works closely with U.S. Customs and Border Protection and law enforcement in coordinated anti-counterfeiting efforts. She has argued and won numerous federal and state court appeals, including the Second Circuit's seminal famous marks case of ITC Ltd v. Punchgini, Inc., 373 F.Supp. 2d 275 (S.D.N.Y. 2007). Ms. Marsh has also successfully represented numerous companies in connection with design patent disputes in industries ranging from consumer products to industrial products.

Complementing her litigation work, Ms. Marsh’s practice also includes counseling and opinions, devising cost-effective brand protection programs, negotiating licenses, IP acquisitions, and co-branding agreements on behalf of clients.Ms. Marsh has presented numerous speeches to industry professionals on a wide variety of topics, including the impact of the gTLD expansion, famous marks protection in the United States, avoiding litigation in the footwear industry, legal trends in social media, and non-traditional trademark protection.

Ms. Marsh has presented numerous speeches to industry professionals on a wide variety of topics, including the impact of the gTLD expansion, famous marks protection in the United States, avoiding litigation in the footwear industry, legal trends in social media, and non-traditional trademark protection.

Representative Experience

  • Successfully represented Jim Beam Brands, the maker of OLD CROW straight bourbon whiskey, against the maker of Jose Cuervo tequila for Cuervo’s improper use of a crow design on tequila products, web sites, and in other advertising materials in violation of a settlement agreement.  
  • Successfully obtained a judgment in favor of client CAR‑FRESHNER Corporation against Getty Images in a lawsuit over Getty’s licensing of images of the Little Trees air fresheners.
  • Successfully represented GFI Group, Inc., a leading provider of wholesale brokerage services, in trademark infringement suits to secure, protect, and enforce their brands.
  • Successfully represented clients in a broad-range of industries including footwear manufacturers, building materials suppliers, and mobile device manufacturers, and, among others, in design patent and trade dress litigations.
  • Argued for the registration of the first ever taste trademark for a well-known pharmaceutical company.

Select Publications

  • “Fabric Designs: A Bouquet of Thorny Legal Issues,” Intellectual Property Magazine, April 2014.

  • “Increase in Cybersquatting with the New gTLDs,” March 27, 2014.

  • “The Federal Circuit Extends the Doctrine of Prosecution History Estoppel to Design Patents,” January 14, 2014.

  • “A Primer on IP Protection for Crowdfunding Projects,” Today’s General Counsel, December/January 2014.

  • Contributing Author and Editor for “Trademarks in 50 Jurisdictions Worldwide,” Getting the Deal Through, 2011 - 2014.

  • “Sunrise Period Opens this Week on New gTLDs,” November 26, 2013.

  • “New gTLD Trademark Clearinghouse Opening, March 26, 2013,” March 8, 2013.

  • “IP Issues to Watch in 2013,” 2013.
News
Publications
Bar and Court Admissions
  • New Jersey
  • New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Supreme Court
Professional Organizations
  • Ms. Marsh is a member of the International Trademark Association where she serves on the organization’s Internet Committee and has been an editor and contributing author to the association’s publications, the Trademark Reporter and the INTA Bulletin