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
- International Anticounterfeiting Coalition, Board of Directors
- 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, "To Protect IP, Remember Criminal Law" in New York Law Journal (2001), "Bioinformatics Patent Litigation Strategy" in Mealey's Patent Litigation Reporter (2002), "The Federalization of Trade Secrets Law: The Economic Espionage Act", in The IP Litigator (1997), 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, 1977
- B.A., with honors, New York University, 1972
Awards:
- Selected as one of only 13 Massachusetts lawyers named to Who's Who Legal USA: Trademarks
- Massachusetts Super Lawyer in 2007, 2006, 2005 and 2004. The selection of attorneys is based on a poll and internal research done by Law & Politics Magazine and reviewed by an independent blue ribbon panel of their peers. Listed attorneys and finalists consist of the top 5% of attorneys in Massachusetts. The listing appeared in the November issue of Boston Magazine and in New England Super Lawyers Magazine.
Quotes:
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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.
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1/10/2010, The Independent - Inspired, or fashion theft?
Mark Schonfeld was quoted in this article by Rachel Shields.
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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.
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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.
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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.
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12/8/2006, Boston Business Journal - Lowell firm sued for illegally exporting Virgin phones
Mark Schonfeld was quoted in this article by Todd Wallack.
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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)
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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.
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9/1/2004, Competitive Intelligence Legal Alert - "Gathering Information From Your Competitor's Customers: Know Your Limits"
Mark Schonfeld was quoted in the article.
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9/24/2003, The Boston Herald - "TV 'Brotherhood' will Premiere"
Mark Schonfeld was quoted in the article by Greg Gatlin.
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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.
Recent Articles and Publications:
Fight Grey Goods with Trade Mark Law
Managing IP, June 2010
Qualifying Therapeutic Discovery Project Credit or Grant
Client Update, April 2010
Design Protection for Apparel: Know Your Options
Apparel, January 8, 2010
Mark Schonfeld co-authored this article with Stephen F. W. Ball.
Can You Stop Unauthorized Distribution of Your Product?
Focus [page 2], Fall 2009
Brand Protection - Recent Developments
Intellectual Property Update, July 2009
Who Owns Employees Inventions? The Employer or the Employee?
Tips from the Top - The Alternative Board, August 2008
Think “Insurance” When Facing An IP Claim
Focus, Winter 2008
Too many companies don't adequately protect IP
Boston Business Journal, March 2007
Stopping Gray Market Imports
Intellectual Property Update, February 2007
Fraud and Counterfeiting on the Internet
Focus [Page 4], Winter 2007
Got an Invention or Creative Work? Protect it Now
Boston Spirit Magazine, January/February 2007
How to Protect Your Company's IP
Understanding IP for Executives, June 2006
Patents and Antitrust: The Illinois Tool Case
Intellectual Property Update, March 1, 2006
Protecting Your Invention When Seeking Venture Capital Financing
Focus, Winter 2005
China's Intellectual Property System
White Paper, March 2004
Who Owns Employee Inventions? The Employer or the Employee
Focus, Winter 2004
Bioinformatics Patent Litigation Strategy
Mealey's Patent Litigation Reporter, 2002
To Protect IP, Remember Criminal Law
New York Law Journal, 2001
A U.S. Prespective on High-Tech Trademark Issues
International Trademark Association, 1998
The Federalization of Trade Secrets Law: The Economic Espionage Act
The IP Litigator, 1997
Speaking Engagements:
13th Annual International Conference: Fraud and Counterfeiting in the Imaging Supplies Industry, 9.20.2010
Location: Miami, FL
Role: Speaker
Topic: Protecting the Brand from Gray Market Activity
US Law on Gray Market and Counterfeit Goods, 8.17.2010
Location: Annual Meeting of the Canadian Bar Association, Niagara Falls
Role: Speaker
Current State of the Law Regarding Minimum Resale Price, 6.8.2010
Location: Thomson Reuters / West LegalEdcenter Live Webcast
Role: Moderator
Topic: Resale Pricing Agreements: Who Has the Authority to Set Price?
2010 IACC Annual Spring Conference, 5.20.2010
Location: Boston, MA
Role: Speaker
Topic: Concerns & Considerations in the Areas of Pre-Text & Evidence
Online Pricing: Who Has the Authority to Set Price?, 3.10.2010
Location: West LegalEdcenter Webcast
Role: Speaker
Solutions to the Gray Market Problem, 10.28.2009
Location: Boston Bar Association
Role: Speaker
West LegalEdcenter Webcast: Recent IP Developments, 6.10.2009
Role: Speaker
Topic: Gray Markets: The Changing Law of Parallel Imports
Business in China, 6.10.2009
Role: Panelist
Topic: Doing Business In China
The Southern New England Entrepreneurs Forum and the Advanced Technology Manufacturing Center will host a presentation and roundtable on Doing Business in China.
MIT Get Smart Program, 5.28.2009
Role: Presenter
Topic: Legal Guide to Doing Business on the Internet
Webcast: Online Liability, 9.18.2008
Role: Featured Presenter
Mark Schonfeld and Jerry Cohen are both featured presenters for this event, sponsored by Thompson West LegalWorks.
Doing Business in China, 8.12.2008
Role: Featured Presenter
Mark Schonfeld and Jerry Cohen conducted this webinar for West LegalWorks. They concentrated specifically on the intricacies of IP law in China.
Recent Developments as a Guide to New Best Practices in IP, 6.18.2008
Location: BNA audio conference
Role: Presenter
Webcast: Protecting Your Brand in Cyberspace, 3.13.2008
Role: Featured Presenter
International Trademark Basics Forum, 12.3.2007
Location: Cambridge, MA
Role: Speaker
Organized by the International Trademark Association and attracts an international audience.
Boston Bar Association International Intellectual Property Committee, 10.24.2007
Role: Featured Presenter
Topic: Protecting Your Brand in Cyberspace
MCLE Program: Hot IP Topics for Business Lawyers, 9.11.2007
Location: Boston, MA
Role: Featured Presenter
Topic: Remedies for Trademark Infringement and Counterfeiting
MIT Enterprise Forum: GET SMART Program, 6.21.2007
Location: Boston, MA
Role: Featured Presenter
Topic: Intellectual Property
"Protecting Your Brand in Cyberspace", 11.30.2006
Mark Schonfeld spoke at the Boston Bar Association meeting on November 30, 2006. He spoke to the Intellectual Property and Corporate Counsel committees on "Protecting Your Brand in Cyberspace."
China Roadshow, 9.28.2006
Mark Schonfeld spoke at the "China Roadshow," a program put on by the United States Patent and Trademark Office. Mr. Schonfeld spoke on the topic, "Protecting Your Brand in Cyberspace".
Protecting Your Brand in Cyberspace, 8.21.2006
Location: Las Vegas, NV
Mark Schonfeld spoke on "Protecting Your Brand in Cyberspace" at the Imaging Supplies Coalition Annual Conference in Las Vegas, Nevada on August 21, 2006.
Europe 2006, 6.12.2006
On June 12, 2006 Mark Schonfeld spoke in Monaco at "Europe 2006," the annual meeting of the European office products industry on "Protecting Your Brand in Cyberspace."
Roundtable: "Trademark Licensing", 10.11.2005
Location: Burns & Levinson LLP
125 Summer Street
8th Floor
Boston, MA 02110
Mark Schonfeld hosted a Roundtable for the International Trademark Association on the topic "Trademark Licensing" at Burns & Levinson LLP on October 11, 2005.
More info
Speaker: International Trademark Association (INTA) Anticounterfeiting Forum, 2.7.2005
Mark Schonfeld was a speaker at the International Trademark Association (INTA) Anticounterfeiting Forum in Washington, DC on February 7-8, 2005. He presented on "Third Party Liability" and "Federal and State Remedies" for an audience from 32 countries. He also wrote a chapter in the course book called "Landlord and Third Party Liability Issues: How Far can Liability Extend?"
Speaker: Law of the Internet, 9.28.2004
Mark Schonfeld was a speaker on the Law of the Internet in Las Vegas, NV on September 28, 2004 at the annual conference on the Imaging Supplies Coalition.
Speaker: "Protecting Trademarks and Copyrights on the Internet", 6.17.2004
Mark Schonfeld was a speaker on "Protecting Trademarks and Copyrights on the Internet" at the IP section meeting of the American Bar Association in Toronto, ON from June 17 - 20, 2004.
Speaker: "Protecting Trademarks and Copyrights on the Internet", 5.3.2004
Mark Schonfeld was a speaker on "Protecting Trademarks and Copyrights on the Internet" at the International Anticounterfeiting Coalition Annual Meeting in Atlanta, GA on May 3, 2004.
Speaker: "Protecting Fashion Designs", 3.16.2004
Mark Schonfeld was a speaker on "Protecting Fashion Designs" at the Fashion Institute of Technology (FIT) in New York City on March 16, 2004.
Speaker: "The Law of Cyberspace", 2.27.2004
Mark Schonfeld was a speaker on "The Law of Cyberspace" at Thrive Networks in Concord, NH on February 27, 2004.
Speaker: "Patent Law and Licensing", 9.10.2003
Mark Schonfeld was a speaker on "Patent Law and Licensing" to three venture capital firms; Innovatech, Desjardins Venture Capital Group, and Business Development Bank of Canadian Montreal on September 10-11, 2003.
Speaker: "E-Commerce: Legal and Practical Issues", 5.5.2003
Mark Schonfeld was a speaker on "E-Commerce: Legal and Practical Issues" at the Imaging Supplies Coalition's Conference on Combating Counterfeiting and Fraud in Miami Beach on May 5, 2003.
Speaker: "Damages in Trademark Cases", 4.30.2003
Mark Schonfeld was speaker on "Damages in Trademark Cases" at the Annual Meeting of the International Counterfeiting Coalition in New York City on April 30, 2003.
Panelists: Mass Venture Forum, 2.6.2003
Mark Schonfeld and Edward Shapiro were panelists at the Mass Venture Forum on February 6, 2003.