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Steven Pokotilow
 
Partner - New York
 
Steven Pokotilow's Email : Please login
 
Company Name : Stroock & Stroock & Lavan LLP
 
Company Website : www.stroock.com
 
Company Address : 180 Maiden Ln.
, New York, NY,
United States,
 
Steven Pokotilow's Profile : Partner - New York
 
Steven Pokotilow's Biography :

Steven B. Pokotilow, Co-Chair of Stroock’s Intellectual Property Practice, concentrates in the litigation and transfer of domestic and international patent, trademark and copyright rights. As manager of the intellectual property portfolios of a number of clients, Mr. Pokotilow is also regularly called upon to negotiate licensing agreements as well as to provide advice and counsel on the intellectual property issues related to joint ventures and mergers and acquisitions.

As recent technological innovations have created new intellectual property rights and tested the boundaries of existing ones, Mr. Pokotilow’s roster of clients has grown to include computer hardware and software vendors, multi-media publishers and providers, manufacturers of television navigation systems, arterial puncture-closure medical devices, laboratory animal systems and products, ID pet recovery systems, high voltage underground products, and voice processing components. Other clients include developers of medical instruments, garments, luggage and cosmetic products, entertainment conglomerates, electronic tracking platforms, publishers of toy, hobby and sport memorabilia and investors in IP development ventures.

SELECTED CASES

In a decision closely followed the Copyright Bar, obtained an en banc re-argument and reversal of a Third Circuit decision, resulting in a holding that part numbers used to identify panel fasteners, although created by a novel system, were not sufficiently original to be accorded copyright protection. The decision will have a considerable impact on the way in which products such as printer cartridges, batteries, etc. can be cross-referenced by competitors in sales and promotional materials.

Preserved client’s position as a leading manufacturer of animal identification devices by obtaining a Federal District Court ruling upholding the validity and enforceability of client’s patent for a unique implantable microchip. Following an affirmance by the U.S. Court of Appeals for the Federal Circuit, client was able to enforce a prior district court jury verdict permanently enjoining its opponent and largest competitor from making and selling similar microchips.

In a recent high-profile jury trial, obtained a defense verdict on behalf of a major pharmaceutical company after the jury rejected plaintiff’s assertion of prior trademark rights in the brand name of the company’s new line of herbal supplements and found no evidence of trademark infringement, dilution or unfair competition under state or federal law.

As plaintiff’s counsel in a leading case initiated under the 1996 Federal Trademark Dilution Act, argued on behalf of major entertainment conglomerate that defendant had diluted plaintiff’s federally registered and famous slogan by identifying its services with a highly similar trademark.

In patent litigation decisions successfully enforcing a patent covering erasable markers and a patent covering collapsible luggage, obtained awards of attorney fees and treble damages. In patent litigation defending a claim of patent infringement on a 3-in-1 booklet obtained a complete defense verdict and an award of attorney fees.

Memberships

American Bar Association; New York Patent, Trademark and Copyright Law Association; Select Committee of International Trademark Association, 2004 and 2005, for proposing revisions of Federal Trademark Dilution Act

Activities

Member, Select Committee of International Trademark Association to revise draft and submit to Congress proposed revision of Federal Trademark Dilution Act

Speaker, Latest Developments in Complex Civil Litigation: An Analysis of the Federal Judicial Center’s New Manual for Complex Litigation, Fourth, ALI-ABA, December 11-13, 2003

Speaker, Intellectual Property and the Business Deal: What You Need to Know, Annual Conference for the Society for Biomolecular Screening, September 2002

Speaker, Are Fame and Distinctiveness the Same Under the FTDA? and Have the Tests for Dilution and Infringement Effectively Merged in Some Circuits,? International Trademark Association Annual Meeting, May 2001

Speaker, Federal Trademark Dilution Law After Five Years, Intellectual Property Owners Association, December 11, 2000

Speaker, Dilution: The Split in the Circuits, Practising Law Institute, May 2000

Speaker, Intellectual Property in Healthcare Information Technologies, New York State Bar Association, May 11, 2000

Speaker, Dilution at the Millennium: An Evaluation, Conference on Patent, Trademark & Copyright Law: Litigation and Corporate Practice, ABA Section on Intellectual Property & Law, April 3, 2000

Speaker, Patent Litigation: Effective Closing Arguments, Practising Law Institute, November 15, 1999

Speaker, A Case Study on the Ringling Bros. v. Utah Decision, AIPLA Annual Conference, Arlington, Virginia, October 21, 1999

Speaker, How to Prove a Case Under the Anti-Dilution Laws, Colorado Bar Association, September 29, 1999

Speaker, Advanced Seminar of Trademark Law: Update on Dilution, Practising Law Institute, May 4, 1999

Speaker, The Federal Anti-Dilution Act: The First Three Years, Patent, Trademark & Copyright Law: Litigation and Corporate Practice, ABA Section on Intellectual Property & Law, April 12, 1999

Speaker, Considerations in Conducting Exit Interviews When Disclosure of Proprietary Information May Be at Risk, Trade Secret Conference, Glasser Legal Works, June 3, 1998

Speaker, Diluting the Dilution Act: Analysis of the First Two Years of Litigation, INTA Dilution and Famous Marks Forum, March 1998

Speaker, Dilution of Famous Marks Under United States Law, International Trademark Association Annual Meeting, 1997

Speaker with Judge William C. Connor, Annual Forums in 1996 and 1997, Presentation of Model Opening and Closing Statements to Juries in Patent Trials, Practising Law Institute

Speaker, Identifying the Important Issues When Licensing Transferred Technology in Eastern and Central Europe, International Technology Transfer Conference, November 7, 1995

Speaker, The Relationship Between Trademarks and Labels Under the Lanham Act and Alcoholic Beverage and Tobacco Laws, International Trademark Association Forum, March 1995

SELECTED PUBLICATIONS

Co-author, Internet Pop-Up Advertise-ments: Do They Infringe?, The Practical Litigator, pp. 21-25, January 2005

Co-author, Identification of Intellectual Property Due Diligence Pitfalls in Cross-Border Transactions," LabToWallStreet, Winter 2004

Co-author, File early and File Often: A Pending Application is Your Best Approach to Capturing Your Competitor’s Product, Patent Strategy and Management, Vol. 4, No. 9, January 2004

Co-author, U.S. Patent Protection for European Inventions: Global Strategies for a Global Marketplace, Screening: Trends in Drug Discovery, Vol. 4, March 2003, pp. 22-24

Co-author, Are Descriptive Marks That Have Acquired Distinctiveness Protected Under the FTDA?, published at the INTA Trademark Dilution Forum, Spring 2003

Co-author, Collaborating with Academia: What You Need to Know, Journal of BioMolecular Screening, Vol. 7, No. 4, 2002

Co-author, FTDA Survey Evidence: Does Existing Case Law Provide Any Guidance for Constructing a Survey?, 91 Trademark Reporter 1150 (2001)

Co-author, The Use of Surveys to Resolve Fame and/or Dilution Issues Under the Federal Trademark Dilution Act, published at the Annual INTA Spring Forum, May 5-9, 2001

Co-author, Left Lane Ends, Merge Ahead: Is Federal Dilution Protection Available Against Non-Competing Goods?, published at the U.S. Patent and Trademark Office and the Intellectual Property Owners Association Annual Conference on Patent and Trademark Office Law and Practice, December 11, 2000

Co-author, Intellectual Property in Healthcare Information Technologies, and Creating and Protecting Rights, published at the New York State Bar Association Committee on Continuing Legal Education seminar: Protecting Health Care Information and Technology: New Requirements and Risks, May 2000

Co-author, Does the Federal Trademark Dilution Act Apply to Trade Dress?, published at the American Bar Association Section of Intellectual Property Law’s 15th Annual Spring CLE Program: Patent, Trademark and Copyright Law: Litigation and Corporate Practice, April 3-4, 2000

Co-author, Is Fame Synonymous with Distinctiveness Under the Anti-Dilution Statute? Published at the AIPLA 23rd Annual Conference, January 26-29, 2000

Co-author, Inequitable Conduct as an Infringement Defense, The Intellectual Property Strategist, January 2000, Vol. 6, No. 4, Pg. 7

Co-author, Whittling Away at Dilution, New York Law Journal, October 18, 1999

Co-author, New Legislation Likely: Are States Now Immune from Infringement Suits? The Intellectual Property Strategist, Sept. 1999, Vol. 5, No. 12, Pg. 7

Co-author, New Risk to Intellectual Property: Can States Infringe with Impunity? The Intellectual Property Strategist, August 1999, Vol. 5, No. 11, Pg. 1

Author, Is Evidence of Actual Harm or Confusion Required to Establish Dilution by Blurring Under the Federal Dilution Act?, published at the Practising Law Institute Advanced Seminar on Trademark Law, May 4, 1999

Author, Applying the Federal Dilution Act to Identical or Substantially Similar Marks on Unrelated Goods, published at the American Bar Association Section of Intellectual Property Law’s 14th Annual Spring CLE Program: Patent, Trademark and Copyright Law: Litigation and Corporate Practice, April 12-13, 1999

Co-author, Utilitarian Objects: Why the Sum Is Less Than the Parts, The Intellectual Property Strategist, April 1999, Vol. 5, No. 7, Pg. 1

Co-author, Closing Arguments in Patent Jury Trials, published at the Practising Law Institute’s Patent Litigation Seminar, November 1998

Co-author, A Better Way to Protect Patents in Europe, The Intellectual Property Strategist, August 1998, Vol. 4, No. 11, Pg. 1

Author, Considerations in Conducting Exit Interviews When Disclosure of Proprietary Information May Be At Risk, published at the Glasser Legal Works conference: Trade Secrets Controversies, June 3, 1998

Co-author,Defense to Willful Infringement Can Kill Attorney-Client Privilege, The Intellectual Property Strategist, June 1998, Vol. 4, No. 9, Pg. 1; also published in The Corporate Counsellor, June 1998, Vol. 13, No. 1, Pg. 4

Author, Applying the Dilution Act to Marks Adopted Prior to the Act’s Effective Date, Published at the Annual INTA Spring Forum, March 1998

Co-author, Cease and Desist Letters: The Legal Pitfalls for Patentees, The Intellectual Property Strategist, December 1997, Vol. 2, No. 9, Pg. 1; also published in The Corporate Counsellor, February 1998, Vol. 12, No. 9, Pg. 1

Co-author, Does Your Global Patent License Violate EU Competition Law? The Intellectual Property Strategist, November 1997, Vol. 4, No. 2, Pg. 1

Co-author, Privacy Online: Rules for Webmasters and Web Surfers, The Intellectual Property Strategist, August 1997, Vol. 3, No. 11, Pg. 1

Co-author, Controversy Heats Up Over Whether Hotlinks Can Get You In Hot Water, The Intellectual Property Strategist, June 1997, Vol. 3, No. 9, Pg. 1

Co-author, Pluses and Pitfalls of Copyright to Protect Software, The Intellectual Property Strategist, May 1997, Vol. 3, No. 8, Pg. 1

Co-author, Are Corporate Officers Immune From Patent Infringement Liability if Acting in Good Faith?,The Intellectual Property Strategist, March 1997, Vol. 3, No. 6, Pg. 8

Co-author, Dilution of Famous Marks Under United States Law, published at the Annual INTA Spring Forum, March 1997

Co-author, Is There a Right to a Jury Trial in a Federal Trademark Dilution Case?, The Intellectual Property Strategist, December 1996, Vol. 3, No. 3, Pg. 6

Co-author, Policing Non-Identical Uses of Trademarks on Unrelated Goods, The Intellectual Property Strategist, November 1996, Vol. 3, No. 2, Pg. 1

Co-author, How to Limit Enhanced Damages from Patent Infringement, The Intellectual Property Strategist, September 1996, Vol. 2, No. 12, Pg. 1

Co-author, Court Casts Shadow On Patenting Financial Software, The Intellectual Property Strategist, June 1996, Vol. 2, No. 9, Pg. 7

Co-author, Identifying the Important Issues When Licensing or Transferring Technology in Eastern and Central Europe, East/West Executive Guide, April 1996, Volume 6, No. 4

Co-author, Patent on Signature’s Computerized Hub and Spoke Mutual Fund Management System Ruled Invalid, Mutual Fund Advance, April 12, 1996

Author, The Relationship Between Trademarks and Labels Under the Lanham Act and Alcoholic Beverage and Tobacco Laws, published at the Annual INTA Spring Forum, March 1-2, 1995

Co-author, Critical Issues in Negotiating Trademark License Agreements in Central Europe, East/West Executive Guide, February 1995, Vol. 5, No. 2

Co-author, Perspectives in Negotiating Trademark License Agreements, The Metropolitan Corporate Counsel, February 1995

Co-author, The Antitrust Laws Remain Unfriendly to Valuable Patent Licensing Practices, The Metropolitan Corporate Counsel, September 1994

Admitted to Practice

New York, 1974; U.S. Supreme Court, 1987; U.S. Court of Appeals, Second Circuit, 1975; U.S. Court of Appeals, Third Circuit, 1980; U.S. Court of Appeals, Fourth Circuit, 1989; U.S. Court of Appeals, Seventh Circuit, 1987; U.S. Court of Appeals, Federal Circuit, 1982; U.S. District Court, Southern and Eastern Districts of New York, 1984; U.S. Patent & Trademark Office, 1973

Education

J.D., American University, 1973

B.S., University of Maryland, 1968

 
Steven Pokotilow's Colleagues :
Name Title Email
Daniel Rozansky Partner - Los Angeles Please login
Nicole Runyan Assoc. - New York Please login
Alessandro Sacerdoti Assoc. - New York Please login
Moshe Saiger Assoc. - New York Please login
Marcos Sasso Assoc. - Los Angeles Please login

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