Mark 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.
Mark 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. Mark 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. Mark 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.
Speaking Engagements
"IPL Fashion: June Committee Call," Speaker, American Bar Association, June 2021
4D Meets AI Conference, Guest Speaker, Life Science Nation, September 2020
"Protecting Trade Secrets: The Seizure Remedy," American Intellectual Property Association (AIPLA) Trade Secret Summit, August 2020
"Alternative Legal Careers for IP Lawyers," Suffolk University Law School, April 2018
"Preventing Counterfeit, Gray Market and Diversion of Goods," Xerox Office of General Counsel Conference, April 2018
"Legal Remedies," Speaker, Threat to the Homeland: Counterfeit Medical Products, October 2017
"Protecting Your Most Precious Assets - Your IP - in a Startup World," panelist, Entrepreneurship at Cornell Celebration, April 2017
"Counterfeit Medical Devices – A Threat To Your Business & Your Health,” speaker, MDG Boston’s Forum, November 2016
“How to Effectively Collaborate with Law Enforcement Agencies & Strategic Partners to Successfully Plan, Implement, and Prosecute Seizures,” speaker, 17th Anti-Counterfeiting & Brand Protection Summit, September 2016
“Brand Protection & Counterfeiting in the Fashion Industry,” speaker, Art and Fashion Law Society – Fashion Law Panel, November 2013
“Anti-Counterfeiting Litigation: How to Protect Brands on the Internet,” speaker, Law Firm Alliance Webinar, November 2013
“Combating Internet Piracy,” Speaker, Boston Bar Association Program, February 2013
Articles & Publications
articles
"Into the Grey: Fighting Unauthorised Imports," World Trademark Review, December 2018
"Beyond TC Heartland: Venue In Other Types Of IP Cases," Intellectual Property Law360, September 2017
"Defense Strategies In Billion - Dollar Software Copyright Cases," Intellectual Property Law360, June 2017
Contributing author, "Federal Protection of Trade Secrets: The Defend Trade Secrets Act," INTABulletin, February 2017
"Stopping the Sale of Gray-Market Medical Devices," AIPLA FDA Flash, November 2016
"What Are We Going to Do About Amazon?" Burns & Levinson Practical IP Update, May 2016
"Protecting Your Rights Against Unauthorized Gray Market Sales," Burns & Levinson Practical IP Update, April 2016
Contributing author, "Intellectual Property Practice," MCLE, January 2016
quotes
"APIs Should Take Centre Stage in Google vs. Oracle, Lawyers Say," Managing IP, September 2020
"Importer DTI Must Pay OEM $5M, Can't Sell Grey-Market Hyundai Parts, Call Them 'Opt-OE'," Repairer Driven News, February 2020
"Amazon Needs to Get a Handle on Its Counterfeit Problem," Engadget, May 2018
"BlackBerry's Facebook Suit Is Latest Salvo in Patent Battle," Bloomberg, March 2018
"Your Amazon Order Could Get You In Trouble With Customs," Racked, January 2018
"Mass. Looks To Tackle Abusive Patent Demands," Intellectual Property Law360, September 2017
"Virtual Retailers, Meet the Bricks and Mortar World," Corporate Counsel, December 2016
"How GCs Can Tackle The Vast Online Counterfeiting Problem," Law360, November 2016
"Rise in Customized Goods Raises IP Concerns," Corporate Counsel, June 2016
"How the Buyer Can Beware of Counterfeiters," The Wall Street Journal, January 2016
"Risks in Three Dimensions," Risk & Insurance Magazine, October 2015
