Martin Schwimmer is a partner in Leason Ellis, an IP law boutique in White Plains, NY. His practice is concentrated in the area of U.S. and international trademark law and domain name counseling, prosecution and litigation.

World Trademark Review had this to say:

Martin Schwimmer “is a very rare combination of academic law smarts and pragmatic counsel. He is the one you go to if you need someone to craft a creative, nuanced position.” “Well versed in domain name and other internet-related work, he provides invaluable advice on the full spectrum of trademark work.”

Mr. Schwimmer focuses on:

  • Trademark and copyright litigation and counseling;
  • International trademark portfolio management;
  • Resolving multi-jurisdictional trademark disputes;
  • Inter partes trademark disputes;
  • Domain Name disputes;
  • Brand policing;
  • Clearance of trademarks;
  • Protection of unconventional trademarks; and
  • Licensing.

Education

  • Fordham University School of Law, J.D., 1988
  • Harvard University, B.A., 1982

Selected Articles

  • “Where to Appeal A TTAB Decision? The Choice Is Complicated” (co-authored with John Welch), World Trademark Review, May 2021.
  • “US law inches towards protecting trademark reputation without use” (co-authored with John Welch), World Trademark Review, Oct. 2019
  • “Blockchain: Deconstructing Trademarks,” paper presented at Michigan ICCLE, IP Law Spring Semester, March 2019
  • “Notice and Takedown for Trademarks” (co-authored with Fred Mostert), 101 Trademark Reporter 249 (Jan 2011).
  • “First Issues in Second Life,” IP Review, April 2007.
  • “Less and More than Meets the IPHONE,” World Trademark Review, April 2007.
  • “Famous Marks on the Internet,” chapter in Mostert, Famous and Well-known Marks, January 2007.
  • “The Domain Name Industry,” chapter in Trademark Law & the Internet, INTA Press, January 2003.
  • “What Brand Owners Should Know About Domain Name Services Companies,” The Licensing Journal, April 2001.
  • “Why the Splurge on Generic Domain Names,” Brandweek, February 2000.
  • “Review editor” Trademark Law & the Internet, INTA, January 2000.
  • “World Wide Web – Worldwide Jurisdiction?,” Trademark World, April 1999.
  • “Madonna and Audio Streaming: Infringement on the Internet,” New York Law Journal, January 1999.
  • “Domain Names and Everything Else,” chapter in Understanding Basic Trademark Law (Practising Law Institute 1998-1999), December 1998.
  • “Dismantling the Web Using Trademark and Copyright Law,” Federated Press, September 1997.
  • “World Wide Web – Nationwide Jurisdiction?,” Copyright World, November 1996.

Professional Affiliations

  • International Trademark Association
  • Westchester Bar Association
  • Intellectual Property Constituency of ICANN

Bar/Court Admissions

  • New York State Bar
  • U.S. Supreme Court
  • U.S. District Court, Southern, Eastern, Northern and Western Districts of New York
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, District of Columbia Circuit
  • U.S. Court of Appeals, Second Circuit
  • U.S. Court of Appeals, Third Circuit
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. Court of Appeals, Ninth Circuit

Presentations

  • “NFTs, the Metaverse, and Handbags,” Connecticut Intellectual Property Law Association, March 2022
  • “NFTs, Trademarks, and the Artistic Relevance Defense,” Conner Inn of Court, Feb. 2022
  • “What Non-U.S. Trademark Practitioners Should Know About U.S. Trademark Law,” Chartered Institute of Trademark Agents (UK), December 2021
  • “Trademark Cases To Remember From A Year to Forget,” California Lawyers Association, June 2021
  • “Challenging Offensive Marks,” St. John’s Law School I Law Society, Feb. 2021
  • “IP at the Supreme Court: U.S.P.T.O. v. Booking.com,” American University Washington School of Law Program on Information Justice and IP, May 2020
  • “New Challenges For Brand Protection In The Digital Economy,” Digital Economy Best Practices Conference 2019 – Stanford Law School, June 2019
  • “Blockchain: Deconstructing Trademarks,” IP Law Spring Seminar, Michigan ICLE, March 2019
  • “Ask A Lawyer,” Adafruit, March 2017
  • “The Shape of Trademarks To Come: 3D Printing,” New York City Bar, IP Committee, September 2013
  • “Trademarks in a Globalized Environment,” Penn Law IP Group Symposium, April 2009
  • “The Updated Facebook Policy: Who owns your posted information?,” The American Intellectual Property Law Association in conjunction with the Institute for Information Law & Policy at New York Law School, March 2009
  • “Trademark Issues in User-Generated Content,” AILPA, October 2008
  • “Legal Issues in Blogging,” American Bar Association, August 2008
  • “Trademark Intermediate Liability,” Michigan State Bar, July 2008
  • “Law Firm Blogs: Legal and Ethical Concerns,” Moses & Singer CLE Program, November 2007
  • “User-Generated Content, New York Law School, November 2007
  • “Virtual Environments,” New York Intellectual Property Section of the New York State Bar Association, October 2007
  • “Search Engines,” INTA Administrators Conference, October 2007
  • “Intellectual Property Procedures for Financial Professionals,” Financial Markets Worlds’ Email and IM Compliance Workshop, October 2007
  • “Legal issues of blogging and lawyer advertising,” Virginia Continuing Legal Education, August 2007
  • “Blogging for Lawyers,” New York Intellectual Property Section of the New York County Association, November 2006
  • “Blogging,” Copyright Society, May 2006
  • “Emerging Issues In Cyberspace,” New York State Bar Association Annual Meeting, January 2006
  • “Regulating Search,” Yale Information Society Project, December 2005
  • “The Year In Trademarks,” Minnesota State Bar Association, September 2005
  • “Tools of the Trade,” INTA Trademarks in Cyberspace seminar, September 2003
  • “Protection of Famous Marks on the Internet,” International Trademark Association Leadership Meeting, November 2004
  • “Initial Interest Confusion,” INTA in Cyberspace seminar, September 2003
  • “Multi-Lingual Domain Names,” Netsearchers/Norton Rose, London, March 2001
  • “Trademarks and Free Speech,” INTA Trademarks in Cyberspace seminar, October 2000
  • “Trademarks in Cyberspace,” Practicsing Law Institute, 1998-2000
  • “Introduction to International Trademarks,” New York City Bar CLE Seminar, September 1999
  • “Protecting Brands in the Travel and Hospitality Industry, Practicing Law Institute, April, 1999
  • “Trademarks on the Internet,” Thomson & Thomson seminar, January, 1999
  • “Trademarks on the Internet,” Glaser LegalWorks, 1998-99
  • “The Trademark Position on Domain Names,” Domain Name Support Organization (Monterrey, Mexico), November 1998
  • “Dismantling the Web Using Trademark and Copyright Law, Protecting Corporate Assets Seminar – Federated Press (Toronto, Canada), September 1997

Publications

  • ‘The Trademark Blog,’ Trademark News Website, May 2002-Present.