Mark Mutterperl is a partner in the Intellectual Property Department, which was named the 2013 Trademark Law "Law Firm of the Year" in the "Best Law Firms" research conducted by U.S. News & World Report and Best Lawyers.
Companies have relied on Mark Mutterperl's superior counsel and representation for decades. He is skilled at handling matters in court as well as helping clients avoid litigation. Mark has been honored by, among others, The Best Lawyers in America, Chambers USA, Super Lawyers and was named an IP Luminary.
- In 2012, Chambers said Mark "has a broad-based IP practice, which is particularly prominent on trademarks. His recent work has included counterfeiting matters and litigation. 'He's a terrific attorney with a very friendly style.'"
- In 2011, Chambers said Mark "is recognized as having the crucial ability to cover every level of an IP matter, from counseling and portfolio management to litigation. Sources describe him as "an incredible businessman."
- In 2010, Chambers said "Clients describe him as 'exceptionally efficient and cost-effective.'"
- The Legal 500 United States 2012 explained that Mark's "noteworthy clients include leading names in the retail, consumer goods and technology sectors, including handling anti-counterfeiting matters for global telecoms and high-tech companies and successful representation of a leading coffee chain in a Second Circuit appeal over trademark dilution."
- The Legal 500 United States 2011 reported that Mark "and his team are well regarded for their counsel expertise."
- The Legal 500 United States 2010 said Mark "is praised in particular; he is a 'highly skilled trademark attorney, always willing to modify his procedures to fit our needs.'"
- U.S. News & World Report in its 2010 rankings, quoting a client, said that Mark "is an outstanding practitioner and expert tactician. He is responsible for our IP protection and has been very valuable in designing strategies for defending against copies of our SKUs."
- In 2011, Best Lawyers, quoting a client, said that Mark "is a superb attorney. He is an expert trademark litigator proficient in all areas of trademark practice, and is particularly adept at prosecuting counterfeiters. While one would expect to find only the most skilled partners at a firm of this caliber, Mark Mutterperl is distinguished by his superior client focus."
- In 2010, Best Lawyers, quoting a client, said that the firm"is the best IP litigation firm I have ever worked with because Mark Mutterperl and his associates in the trademark litigation practice are client-focused and get results. Mark is an expert in trademark law and anti-counterfeiting."
- In 2013, World Trademark Review singled out Mark as having "exceptional enforcement efforts and prudent commercial sense" which are "key to his successfully handling of trademark infringements." WTR ranked Mark nationally in anti-counterfeiting and highly in "enforcement and litigation."
- In 2012, World Trademark Review reported that "Mark wins plaudits for his work on domestic and international trademark enforcement" while handling "trademark, trade dress and anticounterfeiting litigation for a range of well known companies."
- World Trademark Review, in its 2011 inaugural edition of WTR 1000, praised Mark as a "recommended expert" in multi-jurisdictional contentious matters.
A brand protection partner in the Intellectual Property & Technology Department of the firm's New York location, Mark, among other things:
- Enforces trademark rights against infringement, dilution and counterfeiting
- Oversees counterfeiting and other investigations
- Protects and advises about copyrights
Manages trademark portfolios:
- Consults, implements, and strategically plans for domestic and international trademark and domain name registration and enforcement
- Handles trademark clearance, name selection, investigation, prosecution practice before the Trademark Trial and Appeal Board, ADR, and litigation
- Finds creative solutions and problem solves for business needs in branding, advertising, and trademark issues
- Assists with mergers and acquisitions and other transactions, including due diligence projects
A former senior attorney with the U.S. Department of Justice and Special Assistant United States Attorney, Mark has briefed and argued cases throughout the United States including dozens of cases in the United States courts of appeals.
Within the last several years, Mark has handled cases in federal district courts in at least Arizona, California, Colorado, Connecticut, Florida, New Jersey, New York, Ohio, Tennessee, Texas and Virginia. He has also handled cases before the Second and Fifth Circuits.
Recent significant trademark, copyright, trade dress, and unfair competition litigations include representing:
- World famous technology company to enjoin both use of an infringing name and sale of counterfeit goods
- Media companies defending claims of copyright infringement involving popular television reality show
- Prominent homeopathic company in trademark infringement cases
- Well known cosmetics company in a trademark, unfair competition and false advertising dispute
- Paper goods company in a trademark infringement case
- Leading consumer goods company in trade dress infringement cases involving a famous aluminum foil brand and in a trade dress and copyright infringement case involving oven bags
- World famous hotel in a trademark infringement case
- International non-profit organization in a trademark infringement case involving the entity's house mark
- Famous international coffee company in cases involving trademark infringement and dilution
- World renowned consumer goods company in a trade dress infringement action involving several famous products and in a trade dress and false advertising case involving well known mouthwash products
- Leading international pharmaceutical company in trade dress and trademark dilution and infringement cases against private label manufacturers of famous antibiotic ointment and cream products
- Sports media and marketing company in a copyright infringement dispute
- Manufacturer of toy horses and a large chain of retail stores which sells the toy horses with claims of trade dress and copyright infringement
- Nationwide men's retail clothing chain in federal court litigation and non-litigation proceedings to stop trademark infringers
- Famous international coffee company and nationwide men's retail clothing chain who combined to sue an online entity for trademark infringement and false advertising
- Airline in a trademark infringement and false advertising dispute
- Party in a dispute over the worldwide ownership rights to the famous Tetris video game
- Hedge fund in a trademark infringement action involving two hedge funds
- Internationally known hair care products company in defense of its product name in a trademark infringement lawsuit
Recent significant and successful trademark counterfeiting and infringement representation includes:
- World famous technology company in a case involving the counterfeiting of several products, including ex parte seizures in several locations
- Internationally famous manufacturer of hand-held telecommunication devices in cases involving the counterfeiting of specialized batteries, including handling numerous ex parte seizures in a number of states
- Worldwide investigation and litigation concerning the counterfeiting of two of the world's bestselling shampoos on behalf of one of the world's largest consumer product companies
- Ex parte proceeding in South America on behalf of three major international consumer goods companies whose products were counterfeited
- Investigations of counterfeit skin care products and litigations on behalf of one of the world's largest consumer goods companies
- Manufacturer of the leading aluminum foil brand in an investigation and litigation concerning the counterfeiting of aluminum foil
- Leading cosmetics company in an investigation and litigation
- Worldwide consumer goods company defeating a purported class action claiming the trademark owner of authentic goods is liable for counterfeit products
International Trademark Association
- North America Subcommittee of Anti-Counterfeiting & Enforcement Committee, Chair (2006 - 2009), current member
American Bar Association
Section of Intellectual Property Law
- Former Council Member
- Division on Trademarks and Unfair Competition, Former Chair
- Former Books Editorial Board
Section of Antitrust Law
- Private Advertising Litigation Committee (2009 - 2010)
- Section of Intellectual Property Law
American Intellectual Property Law Association
Anti-Counterfeiting and Anti-Piracy Committee (2008 - present)
Vice Chair, Enforcement Subcommittee
- Anti-Counterfeiting and Anti-Piracy Committee (2008 - present)
Intellectual Property Owners Association
- Member, Anti-Counterfeiting and Piracy Committee (2008 - present)
- The Pharmaceutical Trade Marks Group
United States Council for International Business
- Intellectual Property Committee
United States Customs and Border Protection
- Subcommittee on Intellectual Property Rights Enforcement for the Commercial Operations Advisory Committee
- International Anti-Counterfeiting Coalition Inc.
- Copyright Society of the U.S.A.
- American University Washington College of Law, Former Adjunct Professor
- Communications and the Law, former Advisory Board Member
- White Collar Crime Reporter, former Editorial Board Member
- "WTR 1000: Top 1000 Global Trademark Lawyers," World Trademark Review (2011 - 2013)
- "The Best Lawyers in America," Intellectual Property Law (2011) and Litigation – Intellectual Property and Trademark Law (2012-2013)
- Chambers & Partners USA, ranked among the top attorneys in Intellectual Property: Trademark & Copyright (2008 - 2013)
- "IP Star," Managing Intellectual Property (2013)
- "IP Luminary," TrademarkWorld (2007)
- "New York Super Lawyer," Intellectual Property, Thomson Reuters (2007 - 2012)
- "New York's Top Rated Lawyer," Intellectual Property, LexisNexis Martindale-Hubbell (2012)
- Co-Founder and Co-Editor, "The Brand Protection Blog," thebrandprotectionblog.com
- Contributor to American Bar Association Panel Article "What Do I Gotta Do to Be Famous Around Here? An Examination of Recent Trends in Federal Dilution Law," distributed at ABA Annual Meeting of Intellectual Property Section, April 4, 2013
- "How to Score Your Anti-Counterfeiting Efforts," Managing Intellectual Property, July 18, 2012
- Co-author, "New Intellectual Property Enforcement Legislation, the PRO-IP Act, is Signed Into Law," Fulbright Briefing, October 23, 2008
- Co-author, "Buyers of Counterfeits Beware!," Landslide, September/October 2008
- "Counterfeit Drugs, One Click Away," Pharmaceutical Executive, October 1, 2007
- Co-author, "White Collar Crime: Ethical Considerations in Seeking the Truth," The Champion, August 2007
- Co-author, "Pirated and counterfeited goods affect more than business revenue," Houston Business Journal, June 4, 2007
- Co-author, "Taking Back a Fake World: Recommendations for Combating the Spread of Global Counterfeiting and Piracy Before it’s Too Late," Fulbright ALERT, February 13, 2007
- "Weighed Down by Counterfeiting," GC New York, February 13, 2006
Mark's speeches and significant conference leadership roles include:
- "What Do I Gotta Do to Be Famous Around Here? An Examination of Recent Trends in Federal Dilution Law," American Bar Association Intellectual Property Law Section, Arlington, Virginia, April 4, 2013
- Discussion Leader, "Examining Civil Remedies To Combat IP Crime," 2012 International Law Enforcement IP Crime Conference, Panama, September 12, 2012
- Program Co-Host and Co-Organizer, International AntiCounterfeiting Coalition annual meeting, Washington, D.C., May 2-4, 2012
- "Implementing Innovative Civil Programs to Maximize Brand Protection," Underwriters Laboratories Brand Protection Summit, San Diego, California, June 14, 2011
- "Litigating Trademark Dilution Cases," American Bar Association Intellectual Property Section, Arlington, Virginia, April 8, 2011
- Facilitator, "Financial Remedies – Innovative Tools To Break Organized Crime," 2010 International Law Enforcement IP Crime Conference, Hong Kong, China, October 21, 2010
- "Pretexts, Evidence and Conducting In-House Investigations," International Anti-Counterfeiting Coalition Annual Spring Conference, Boston, Massachusetts, May 20, 2010
- "Building IP Cases In The Private Sector For Civil Action And Referral To Law Enforcement," Los Angeles Property Rights Conference: Intellectual Property Crimes, Victims & Cases, Los Angeles, California, April 20, 2010
- "Building IP Cases In The Private Sector For Civil Action And Referral To Law Enforcement," New York/New Jersey Intellectual Property Rights Conference: IP Crimes, Victims & Cases, New York, New York, November 5, 2009
- Moderator, "A View from the Boardroom," American Bar Association Third Annual Institute on Criminal Enforcement of Intellectual Property Rights, Washington, D.C., October 9, 2009
- Moderator, "Partnering with Private Companies and Law Firms to Deliver Operational Successes," 2009 International Law Enforcement IP Crimes Conference, Dublin, Ireland, September 30, 2009
- "Developing IP Cases For Civil Actions and Referral to Law Enforcement," Washington Intellectual Property Rights Conference: IP Crimes, Victims & Cases, Seattle, Washington, June 24, 2009
- "A U.S. Perspective," Global Enforcement: Fighting Counterfeiting in the U.S., Canada, Europe and China, Association of Corporate Counsel and Smart & Biggar, Toronto, Canada, June 18, 2009
- Event Chair, "Global Enforcement: Fighting Counterfeiting in the U.S., Canada, Europe and China," Association of Corporate Counsel and Fulbright & Jaworski L.L.P., New York, New York, June 16, 2009
- "Intellectual Property Rights Enforcement," 23rd Annual National Institute on White Collar Crime, American Bar Association, San Francisco, California, March 5, 2009
- "Building IP Cases In The Private Sector For Civil Action and Referral To Law Enforcement," Texas Intellectual Property Rights Conference: IP Crimes, Victims & Cases, Houston, Texas, February 24, 2009
- "The Use of Alternative Dispute Resolution With Trademark Matters," Fulbright & Jaworski's International Arbitration Program, New York, New York, February 12, 2009
- "Counterfeiters and Pirates: Knocking Them Off Of Their Game," American Bar Association 2008 Annual Meeting, New York, New York, August 10, 2008
- "Managing IP Crime Prosecutions," 2008 International Law Enforcement IP Crime Conference, Halifax, Nova Scotia, June 24, 2008
- "Anti-Counterfeiting Best Practices," 2007 International Law Enforcement IP Crime Conference, Niagara Falls, Canada, June 20, 2007
- "Investigators: Ethical Implications For Trademark Lawyers To Consider," New York City Bar, March 27, 2007
- Moderator, "Prosecutors and F.B.I. Perspective," Program on Anti-Counterfeiting and Brand Protection, International Quality and Productivity Center, October 26, 2006
- "Trademark Infringement From the Industry Perspective," Joint United States Patent and Trademark Office and World Intellectual Property Organization Program, July 20, 2006
J.D., Georgetown University Law Center
B.A., cum laude, Political Science, Boston University
Mark is admitted to practice law in New York, the District of Columbia and Maryland. He also is admitted to the Supreme Court of the United States and numerous other federal courts throughout the United States.
Mark enjoys playing tennis and golf.
- District of Columbia
- New York
- Core2 Group, Inc., Board of Directors
- ICE Foundation, Board of Directors
- Seville Board of Managers, President