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Trademark, Copyright, Intellectual Property, Advertising lawyer

Location:
Tarrytown, NY
Posted:
January 27, 2015

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Resume:

Anthony Verna

*** ***** *** #2-917-***-****

Jersey City, NJ acn1b9@r.postjobfree.com

LEGAL EXPERIENCE

Kravitz & Verna PLLC (post-merger with Law Offices of Anthony Verna) New York, NY

February 2006 – present

Founding Partner

Founder of a boutique New York City law firm focused on intellectual property protection and

licensing, advertising and promotions law, data collection and use, e-commerce, and arts and

entertainment. Representative experience includes:

Trademarks: due diligence clearance, trademark prosecution and advising clients in use of

trademarks in business, co-existence agreements, litigation experience includes successful settlement

of many TTAB matters, winning TTAB matters on both procedure and substance, and settlement of

United States District Court trademark infringement lawsuits.

Licensing: TTAB settlement agreement converting a possible likelihood of confusion to a license for

client’s footwear and apparel line; trademark settlement agreement converting an infringement to

licensing agreement for a client’s registered advertising slogan; trademark settlement agreement

converting infringement to a license for a company's software line.

Copyrights: drafted Work for Hire agreements from both the owner and the creator sides; co-counsel

in Archie Comic Publications, Inc. v. Penders (1:2010cv08858 (SDNY)); settlement negotiations to

prevent copyright litigation; advising clients with infringed work; registrations of copyrights through

the eCO system at copyright.gov; settlement agreements (converting infringement to use music in an

advertising campaign, allowing the use of characters from an in-development television show,

allowing the use of photographs in a book, converting infringement to use a derived work from

client's visual work as the design in a t-shirt).

Commercial agreements: drafted “partner program”/affiliate agreement between service provider

and resellers, non-compete agreements, non-disclosure agreements, author-publisher agreements,

services agreements; manufacturing agreements.

Advertising and Promotion law: Wrote sweepstakes rules for client expanding business from

United Kingdom to United States and coordinating with attorneys in U.K.

National IP Rights Center Blue Bell, PA

September 2003 – February 2005

Attorney

A boutique Pennsylvania law firm focused on trademark and patent prosecution and litigation,

founded by Scott Fields, Esq. formerly of Obermayer Rebmann Maxwell & Hippel LLP.

Trademark: trademark prosecution (conducted trademark screening searches, reviewed

comprehensive trademark searches, wrote opinion letters and advised clients use of certain marks and

regarding miscellaneous trademark-related issues, filed U.S. trademark applications, responded to

USPTO Office Actions); reviewed and expanded briefs for litigation.

Patent: patent prosecution (conducted patent prior art searches to determine patentability of clients’

inventions, wrote opinion letters for patentability, reviewed patent searches and opinion letters,

prepared and wrote patent applications in computer science, personal products, and chemistry);

reviewed and expanded briefs for litigation.

Contract Attorney Experience

IBM – Armonk, NY March 2011

Document review project in patent/trade secret litigation.

Paul, Hastings, Janofsky & Walker, LLP – New York, NY October 2006 – April 2009

Document review project for pharmaceutical patent infringement litigation on behalf of Eisai Co., Ltd

Fitzpatrick, Cella, Harper & Scinto – New York, NY March 2006 – June 2006

Document review project in patent infringement litigation on behalf of IBM.

Willkie, Farr & Gallagher – New York, NY February 2006 – March 2006

Foreign trademark application prosecution process on behalf of Bloomberg, L.P.

Kramer Levin Naftalis & Frankel LLP – New York, NY September 2005

Transfer of trademarks to one subsidiary for Best Western International, Inc.

PUBLICATIONS

Celebrities and Social Media: What Are The Legal Perils For Brands?

The RealTime Report (April 2014)

Twitter Hashtags: Why It’s Important to Treat a Hashtag Like a Business Trademark

V3IM Blog (February 2014)

Is my Trademark Incontestable?

Tin Shingle Blog (December 2013)

5 Common Mistakes Made by Business Owners Filing Trademark Applications

Tin Shingle Blog (December 2013)

Can't afford a jersey? Make your own!

ESPN Page 2 (March 2009)

The ® Chronicles

The Uni-Watch Blog (June 2008)

Many other blog entries can be found at kravitzverna.com/blog

“www.WhatsInA.name.” 14 Seton Hall J. of Sports & Entertainment L. 153 (December 2004)

SPEAKING ENGAGEMENTS

Trademarks & Copyrights for the Start-up – World Boardgaming Championships, August 6, 2014

Update on Trademark and Advertising Law – Business Marketing Association of NJ, February 11,

2014

Introduction to Trademark Law – Rotary Club of Glen Ridge, NJ, February 4, 2014

Introduction to Trademark and Advertising Law - Business Marketing Association of New Jersey

February 12, 2013

Rutgers Law-Camden, Intellectual Property Guest Lecture, November 10, 2011

Webinar with Diane Kennedy, CPA, on Trademarks 101 and State Nexus, January 22, 2011

CLE CLASSES

Trademark Talk: Hot Topics and Recent Developments in Trademark Law

Bar Association of the City of New York, May 20, 2014

Intellectual Property Law for Solo and Small Firm Practitioners – Rutgers Law – Camden, March 11,

2014

Advanced Practice Techniques in front of the Trademark Trial and Appeal Board - Lawline.com,

December 18, 2013

Practicing before the Trademark Trial & Appeal Board - Lawline.com, November 16, 2012

Intellectual Property Law for Solo and Small Firm Practitioners – Rutgers Law – Camden, September

24, 2012

Copyright Basics: Nuts and Bolts – Jenkins Law Library, Philadelphia, PA, October 3, 2012

EDUCATION:

Rutgers University School of Law – Camden: Juris Doctor May 2003

Case Western Reserve University: Cleveland, OH May 1999

B.A. in Computer Science (Minors: French, Music)

Honors: Provost’s Scholarship

BAR ADMISSIONS

New Jersey (May 2004)

New York (January 2006)

Southern District of New York (July 2011)

PROFESSIONAL MEMBERSHIPS:

The Association of the Bar of the City of New York October 2005-present

Small Law Firm Committee



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