Stephen Feingold focuses his practice on trademark, copyright, advertising and Internet law. Trained as a litigator, Mr. Feingold currently divides his time between litigation and transactional projects advising clients with their most complicated trademark, copyright and Internet issues.
On the litigation front, Mr. Feingold has extensive knowledge in the area of trademark fair use and argued before the Third Circuit Court of Appeals in the case leading to that Circuit's first definitive ruling on the standards for establishing the fair use defense. Based on his significant experience assisting brand name clients enforce their rights on the Internet and the reality that well-known brands could bring tens of enforcement actions against cybersquatters, Mr. Feingold recognized that clients need some objective way to determine which domain names infringements should be progressively pursued as well as some way to ensure that not pursuing the remainder did not result in compromising the brand owner's rights. As a result, Mr. Feingold worked with others in the firm to create a Domain Name Matrix which allows a client to identify those domain names that are more likely to require immediate action. Mr. Feingold has also advised clients with respect to the emerging "no trademark use defense," a topic on which he has written and spoken extensively.
Mr. Feingold's transactional practice is similarly involved with many emerging issues. He is currently advising several clients with respect to the implementation of social networks and the integration of other new media into their business plans. He has also handled complicated licensing agreements with respect to online gaming, merchandising and the implementation of dealer networks to combat the unauthorized sale of gray market goods. In connection with his Internet practice, Mr. Feingold has also advised many clients with respect to privacy related issues and has counseled clients with respect to data breach and notification issues.
Mr. Feingold also leads several teams of lawyers handling the world-wide portfolios of several global companies and in connection with that work has advised clients on international enforcement and registration issues. A hallmark of his approach to portfolio maintenance is to assist clients to reduce costs by restructuring their portfolios so that there is a symmetry between the amount of legal spend for each brand that relates to how much that brand contributes to the clients' bottom line. One client was able to reduce its trademark budget by more than 50% after transferring its portfolio from another firm.
While his practice is not limited to any one industry, he has significant experience with the hospitality, gaming, real estate and educational publishing industries. He also has represented several major entertainment brands and in the past has done extensive work for both financial and pharmaceutical companies. Reflecting his commitment to the public interest, he has provided pro bono services to several not for profit companies including the American Conference for Diversity and Moving Traditions.
Mr. Feingold is active in many bar associations and has chaired various committees for the IP Section of the ABA and for the New York Intellectual Property Law Association. He is also a Feller of the American Bar Foundation. He has been extremely active in the International Trademark Association having chaired multiple conferences including the 1999 Leadership Meeting. In 2003 he was awarded INTA's Volunteer of the Year Award. Mr. Feingold was a recipient of the Vanderbilt Prize upon graduation and in 2009 was recognized as a New York "Super Lawyer" in the area of IP Litigation by SuperLawyers magazine . He is AV® rated by Martindale-Hubbell.*
*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.
Professional & Community Activities
American Bar Association, Fellow, Member of the Intellectual Property Section and Former Chair of the Trademark Subcommittee
American Management Association, Sales and Marketing Executive Council
Fordham University Law School, Adjunct Professor of Trademark Law (since 2002)
The Intellectual Property Strategest, Editorial Board Member
International Trademark Association, Member and Past Meetings Board Member
Internet Law & Strategy, Editorial Board Member
New York Intellectual Property Law Association, Member, Trademark Committee, Former Chair
The Privacy and Data Protection Legal Reporter, Editorial Board Member