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David Goldberg focuses on domestic and international trademark law. He helps clients protect their brands domestically by researching trademark availability, filing applications for trademark registration and maintaining those registrations. He also works in close collaboration with a network of experienced counsel who provide the same services in other countries around the globe.
Mr. Goldberg helps clients police and enforce their trademarks. For example, he has opposed before the U.S. Trademark Trial and Appeals Board the registration of trademarks that are confusingly similar to those of ARE’s clients, including a major Japanese automobile maker and a premier U.S. department store. He also works with clients to amicably resolve trademark disputes by drafting appropriate licenses and agreements. He recently crafted a Global Coexistence Agreement allowing a client, an international food, beverages and confectionary producer, to use, register and protect its trademark in countries where a third-party hair-care product manufacturer already had registered that trademark for use on its products.
He also advises on trademark portfolio management. One recent project involved a U.S. company expanding the reach of its retail e-commerce platform internationally. Mr. Goldberg was part of the ARE team that audited hundreds of the company’s brands to ascertain and/or secure IP rights in dozens of countries, advised on whether to relinquish or establish new marks and whether to undertake or defend enforcement actions, and adjusted the program as a result of negotiations, litigation and licensing agreements.
Before attending law school, Mr. Goldberg worked as a litigation paralegal at Willkie, Farr & Gallagher LLP and as an in-house regulatory paralegal at Oppenheimer & Co., Inc. He has an M.A. in History from the University of Michigan and taught at The City University of New York’s Bronx Community College.