Attorneys serving Massachusetts, Rhode Island

Mark Schonfeld

Partner

Office Phone: 617.345.3329
Location: Boston, MA
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Practice:

Bar Admissions:

Massachusetts
New York
U.S. Court of Appeals for the First and Third Circuits
U.S. District Court for the District of Colorado, Massachusetts and the Southern District of New York

Experience:

Mr. Schonfeld concentrates his practice in complex business and intellectual property litigation, especially protection of corporate intellectual property through effective methods of trademark, copyright and patent litigation.

Mr. Schonfeld has extensive experience in protecting the world's leading brand names from infringement and is responsible for the seizure of millions of dollars in counterfeit merchandise from distribution centers, retail operations and factories that manufacture counterfeit products. He is highly skilled in preventing and stopping "gray market" imports by using innovative techniques. Mr. Schonfeld has conducted software audit raids for major software companies and several of his cases have resulted in federal criminal prosecution. He obtained the first "asset freeze" order in Massachusetts in a trademark counterfeiting case. Mr. Schonfeld also serves as counsel to the Imaging Supplies Coalition, an organization formed by prominent computer companies to combat counterfeiting and unfair and deceptive trade practices affecting the computer supplies industry.

Memberships:

Boston Bar Association
The IP Litigator, Advisory Board
West Professional Development Intellectual Property Law, Advisory Board

Additional Information:

Mr. Schonfeld has published many articles on intellectual property matters, including, "Fight Grey Goods with Trade Mark Law" in Managing Intellectual Property (2010), "Effective Weapons Against Gray Goods" in Corporate Counsel (2010), "To Protect IP, Remember Criminal Law" in New York Law Journal(2001), "Bioinformatics Patent Litigation Strategy" in Mealey's Patent Litigation Reporter (2002), and "A U.S. Perspective on High-Tech Trademark Issues", International Trademark Association (1998).
Mr. Schonfeld has contributed to books and frequently lectures for law schools, at industry meetings and at Continuing Legal Education programs.

Education:

J.D., cum laude, Cornell Law School
B.A., with honors, New York University

Awards:

Selected as one of only 13 Massachusetts lawyers named to Who's Who Legal USA: Trademarks
Mr. Schonfeld was selected by his peers for inclusion in The Best Lawyers in America® (2012-2013) in the field(s) of Litigation - Intellectual Property. Best Lawyers® is based on an exhaustive peer-review survey in which more than 41,000 leading attorneys throughout the country cast almost 3.9 million votes on the legal abilities of other lawyers in their practice areas. Inclusion in Best Lawyers® is considered a singular honor.
Mr. Schonfeld was selected for inclusion in Massachusetts Super Lawyers® (2012, 2011, 2007, 2006, 2005 and 2004). Super Lawyers and Rising Stars employ an annual jurisdictional selection process. Only five percent of lawyers in the state were selected to the Super Lawyers list and 2.5 percent to the Rising Stars list. The listing appears annually in the November issue of Boston magazine and in New England Super Lawyers.
Mr. Schonfeld has been peer review rated as AV® Preeminent, the highest performance rating, in Intellectual Property Law, 2012. This listing appears in the April issue of Corporate Counsel and The American Lawyer.

Quotes:

8/15/2012, New England In-House - Federal patent decision raises bar for plaintiffs
Mark Schonfeld was quoted in this article.
6/28/2012, Massachusetts Lawyers Weekly - Federal patent decision raises bar for plaintiffs
Mark Schonfeld was quoted in this article by David E. Frank.
6/25/2012, The National Law Journal - Judge awards attorney fees in 'gray market' copyright fight
Mark Schonfeld was quoted in this article by Sheri Qualters.
5/2/2012, www.Law.com - IP Lawyers Praise Targeting of Counterfeit Imports
Mark Schonfeld was quoted in this article by Sheri Qualters.
3/5/2012, The National Law Journal - Louis Vuitton says Penn Law symposium poster infringes its trademarks
Mark Schonfeld was quoted in this article by Sheri Qualters.
3/5/2012, Law 360 - Copyright Suits Over USPTO Apps Face Uphill Battle
Mark Schonfeld was quoted in this article by Ryan Davis.
7/1/2011, Corporate Counsel - ITC Survey: The Slugfest Continues
Mark Schonfeld was quoted in this article by Andrew Goldberg.
12/24/2010, Boston Business Journal - Many businesses have to worry about IP protection
Mark Schonfeld was quoted in this article by Linda Goodspeed.
7/1/2010, The National Law Journal - Lady Gaga Not Poker-Faced About Stopping Sales of Knockoffs
Mark Schonfeld was quoted in this article by Sheri Qualters.
1/10/2010, The Independent - Inspired, or fashion theft?
Mark Schonfeld was quoted in this article by Rachel Shields.
11/16/2009, Massachusetts Lawyers Weekly - Copyright case could have big impact on foreign trade
Mark Schonfeld was quoted in this article by Julia Reischel.
11/2/2009, Massachusetts Lawyers Weekly - Confidential Informant: Blogger fights back against Ralph Lauren
Mark Schonfeld was quoted in this article by Mass Lawyers Weekly staff.
9/24/2009, Gal Time - Counterfeit Couture
Mark Schonfeld was quoted in this article by Mary Schwager regarding the buying and selling of counterfeit merchandise.
12/8/2006, Boston Business Journal - Lowell firm sued for illegally exporting Virgin phones
Mark Schonfeld was quoted in this article by Todd Wallack.
11/13/2006, WHDH - 7 news - Counterfeit Couture - Internet Counterfeiting
Mark Schonfeld was interviewed by Hank Phillipe Ryan on counterfeit products on the internet for this "Help Me Hank" segment. Download file (file is large and may take 30-60 seconds to download)
8/1/2006, Contingent Workforce Strategies - Trust Me: Managing risks when sharing IP with IT contractors
Mark Schonfeld was quoted in this article by Bridget Mintz Testa.
9/1/2004, Competitive Intelligence Legal Alert - "Gathering Information From Your Competitor's Customers: Know Your Limits"
Mark Schonfeld was quoted in the article.
9/24/2003, The Boston Herald - "TV 'Brotherhood' will Premiere"
Mark Schonfeld was quoted in the article by Greg Gatlin.
9/22/2003, The Boston Globe - "To N.H. Man, TV Tale's Familiar"
Mark Schonfeld was mentioned in the article by John McElhenny in the City and Region section.

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Recent Articles and Publications:

Anti-counterfeiting 2013 – A Global Guide (Chapter on United States Law)
World Trademark Review, 2013
Mark Schonfeld, Sara Beccia and Alexandra Capachietti authored the chapter on United States law in the 2013 Global AntiCounterfeiting Guide published by World Trademark Review.

This article first appeared in Anti-counterfeiting 2013 – A Global Guide, a supplement to World Trademark Review, published by The IP Media Group. To view the issue in full, please go to www.worldtrademarkreview.com.

Can Gray Market Goods Be Stopped?
Focus Newsletter, Page 2, Winter 2013

Introduction to Trademark Law
Intellectual Property Practice, MCLE, October 2011
Editor: Jerry Cohen. Burns & Levinson contributing authors: Sara Beccia, Renee Inomata, Deborah Peckham and Mark Schonfeld.

Fashion Law
Boston Spirit Magazine, March/April 2011

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Speaking Engagements:

Boston Bar Association Program, 2.5.2013
Location: Boston Bar Association
Role: Speaker
Topic: Combating Internet Piracy

More info

ISC's 14th International Conference - Fraud and Counterfeiting in the Imaging Supplies Industry, 8.20.2012
Location: Planet Hollywood Resort, Las Vegas
Role: Speaker
Topic: Conference Antitrust Guidelines

More info

Thomson Reuters, West Legal Ed Center Webinar, 5.23.2012
Role: Speaker
Topic: Trademark, Copyright, and Patent Solutions to the Gray Market Problem

More info

Thomson Reuters Webinar, 6.29.2011
Role: Speaker
Topic: Recent IP Developments (and Development Expectations)

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