With more than 30 years’ experience, Howard J. Shire is a skillful litigator who successfully protects and defends his clients’ products and IP rights against infringement. Examples include his successful representation of Toyota as defendant in a well known trademark dilution and infringement case involving the LEXUS mark; his spearheading a trademark and copyright counterfeiting case for MuscleTech, a leading nutritional supplement company, which resulted in a multi-million dollar judgment and criminal indictments and convictions brought by the US Attorney; his successful representation of BASF Corporation in a trade dress litigation, which at the time established the Ninth Circuit’s rule that a single color is not generally protectable under the US Trademark Act; his role on behalf of Heidelberg Harris in a case that resulted in a jury verdict of infringement of two printing press patents and a multi-million dollar damages award for Harris; and his representing Ozzy Osbourne in a litigation concerning ownership of the well known Black Sabbath trademark. World Trademark Review 1000, which ranks trademark attorneys worldwide, acknowledges Mr. Shire as “the go-to trademark attorney” at the firm, especially for litigations, describing him as a “tenacious litigator” with “particular skill in the courtroom.” He has extensive experience in litigating actions to obtain domain names under ICANN’s dispute resolution procedure.
He is also an experienced mediator and member of the International Trademark Association’s Panel of Neutrals, and has served as an arbitrator under the auspices of the American Arbitration Association.
Mr. Shire also has an active counseling and prosecution practice. For example, he has developed and implemented worldwide trademark registration programs. Mr. Shire also coordinates major corporate acquisitions involving the worldwide transfer of patents, trademarks and copyrights, and negotiates a wide variety of intellectual property agreements, such as licenses, trademark coexistence agreements, and joint ventures. In addition, Mr. Shire counsels clients on intellectual property matters relating, for example, to Internet issues and the selection of new trademarks and domain names. He represents clients from a wide range of industries, including computer hardware and software, consumer electronics, solar energy, financial services, apparel, nutritional supplements, publishing, personal care products, alcoholic beverages, and pharmaceuticals.
Mr. Shire’s sophisticated ability to help clients achieve their objectives with respect to their intellectual property opportunities and disputes is consistently recognized by legal referral guides that rank attorneys according to recommendations received from others in the legal community. He is ranked as a leading intellectual property lawyer by legal referral guides, such as New York Super Lawyers – Metro Edition and Best Lawyers. He is also named in The International Who’s Who of Trademark Lawyers, The International Who’s Who of Business Lawyers and World Trademark Review 1000.
Mr. Shire is frequently invited to lecture at programs organized by professional and bar organizations, including the International Trademark Association, the American Bar Association, the American Intellectual Property Law Association, the New York City Bar Association, the New York Intellectual Property Law Association (NYIPLA), the Practising Law Institute, and the International Bar Association. In addition, he is the former Chairman of the Trademark Committee of the NYIPLA.
Also a prolific author, Mr. Shire has written articles pertaining to a range of topics, including unfair competition claims, personal jurisdiction, liability for false patent marking, fraud on the Trademark Office, the tacking standard, trademark dilution, fair use, inducement of infringement, keyword advertising, and the Anticybersquatting Protection Act. He serves as Editor-in-Chief of the Intellectual Property Strategist, a monthly publication, and is on the IP Editorial Advisory Board of Law 360. He is a former Editor-in-Chief of The Trademark Reporter, which is the leading scholarly journal devoted to trademark law.