February 12, 2014 — An intellectual property attorney who for more than 20 years has focused on international and domestic brand protection issues – including trademark, trade dress, copyright litigation and unfair competition – has joined McCarter & English as a partner.
James H. Donoian, who joined McCarter Feb. 4, will be resident in the firm’s New York City office and will also spend time in the firm’s IP-heavy Boston office. His arrival at McCarter is part of the firm’s emphasis on brand protection in the design, fashion and luxury goods arena, said Harley Lewin, the New York- and Boston-based partner who is leading that effort.
Donoian, who was a shareholder at the global law firm Greenberg Traurig for the last decade, has counseled clients on IP and brand management issues, including enforcement and litigation in federal courts nationwide; domestic and international branding strategies, trademarks, trade dress, copyrights, advertising and rights of publicity; and licensing and distribution agreements.
“Jim is equally comfortable and adept in all facets of IP client representation, both here and abroad, with an eye toward understanding and achieving clients’ business objectives” said Elizabeth A. Hanley, leader of McCarter’s Intellectual Property and Information Technology Practice Group. “That ranges from counseling them on how to manage and protect their IP portfolios and on IP-related transactions, to suing counterfeiters and infringers and, when need be, licensees, competitors and distributors. Our clients will benefit greatly from his knowledge of the law and practical wisdom in guiding business clients.”
Donoian’s work has touched a number of industry sectors, including fashion and apparel, luxury brand goods, pharmaceuticals, consumer products, hospitality, sports and entertainment, jewelry, toys, food and beverage, advertising and industrial products.
“My experience and expertise in counseling and enforcement will be a great fit with McCarter & English’s emphasis on global brand management and protection,” Donoian said, referring to the firm’s fashion, design and luxury goods brand-protection practice, which is representing the likes of Alexander Wang, Christian Louboutin SA, Ted Baker, Tag Heuer, Givenchy and Dior.
“I look forward to meshing my existing practice with the firm’s concentration on providing strategic guidance to international companies on implementing effective programs to register, license and protect their IP, as well as litigating and enforcing client’s valuable IP assets,” he said.