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Brian J. Winterfeldt

Brian J. Winterfeldt

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2017 World Trademark Review 1000

Managing IP 2017 IP Stars

Thirteen Mayer Brown partners were recognized as “IP Stars” in the 2017 edition of Managing Intellectual Property magazine’s “World IP Handbook and Survey,” an annual analysis of the IP market based on extensive research among IP professionals.

Brian J. Winterfeldt is an Intellectual Property partner in Mayer Brown’s Washington DC and New York offices, and co-leader of the Global Brand Management & Internet practice.

Brian advises clients on the creation of global trademark and branding strategies. He also develops programs to register and enforce clients’ intellectual property rights and protect against infringement of their trademarks and other branding elements in the US and internationally, including domestic and international trademark counseling, clearance, prosecution, enforcement and litigation. In addition, Brian advises clients on trade dress, Internet governance and domain name issues, including domain name disputes such as Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension System (URS) complaints, and other similar processes for country code top-level domains (ccTLDs), to disable or recover infringing domain names. He regularly counsels global leaders in the retail and apparel, media, financial services, insurance, consumer products, food and beverage, hospitality, and Internet and technology industries.

Brian has developed one of the leading practices specializing in advising on evolving Internet issues, and is an expert on the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) new generic top-level domain (gTLD) program.  This work includes drafting and prosecuting new gTLD applications for applicants, negotiating related agreements, and advising them on the legal and policy work needed to support new registries.  He also develops advocacy and enforcement strategies in this space for brand owners, including advice surrounding registration of trademarks in the Trademark Clearinghouse (TMCH) and assessment of domain name portfolio management strategies in light of the influx of new gTLDs. In addition, he regularly counsels clients and provides training on cutting edge Internet issues such as social media platforms, including developing and administering social media policies and promoting and protecting clients’ brands in this ever-evolving space. Brian is a member of ICANN’s Intellectual Property Constituency (IPC), which serves as a voice for brand owner concerns in Internet policy development. He has held leadership roles within the IPC for several years, including serving for the past four years as a representative for the IPC on ICANN’s Generic Names Supporting Organization (GNSO) Council, the body that creates global domain name policy, as well as previously serving as IPC Treasurer.

As a prominent voice in the IP arena, Brian has written numerous articles on trademark law and is a frequent speaker at industry events on topics such as trademark law, Internet governance and social media. He has served as co-chair to several major conferences for the International Trademark Association (INTA), including the Trademarks and the Changing Internet Landscape conference in 2013, and is currently a special advisor for INTA’s Internet Committee and co-chair for INTA’s Trademark Administrators Committee Internet Project Team. He also received INTA’s 2011 Volunteer Service Award for his work on behalf of INTA in the Internet field, is a member of the project team for the 2016 INTA Annual Meeting, and is serving a term on INTA's Board of Directors through 2017.

In addition to his IP practice, Brian is a leading voice for diversity in the legal industry, particularly in connection with lesbian, gay, bisexual, and transgender (LGBT) issues. Brian chaired the IP Law Institute during the 2014 and 2016 Lavender Law Conference & Career Fairs (the largest national conference in the United States for LGBT attorneys and law students), and chaired another IP Law Institute in August 2015 that featured panels on trademark, patent and Internet law. Brian serves on the Board of Directors for The Trevor Project, the leading provider of suicide prevention and crisis management services for lesbian, gay, bisexual, transgender and questioning youth in the United States.  Brian was also recently appointed Secretary of the Trevor Project, earning him a place on the organization's Executive Committee. In addition, he was successfully nominated, while at a prior firm, for INTA’s 2014 Volunteer Service Award for Pro Bono Services, almost exclusively in connection with his pro bono work for diversity-related organizations.  Brian also was awarded the prestigious Rainmaker Award by the Minority Corporate Counsel Association in 2013, an award given to only 15 diverse partners in the United States who distinguish themselves by being leading practitioners with robust practices.  Brian also co-authored an article in 2014 on issues facing LGBT attorneys in the legal sector for the Institute for Inclusion in the Legal Profession (IILP), and spoke in April 2015 at a symposium in New York, presenting his article to attendees.

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