Adam Siegartel

Practices

Industries

Education and Clerkships

J.D., Columbia Law School, 2001, Senior Editor of Columbia Law Review, James Kent Scholar, Harlan Fiske Stone Scholar, recipient of James A. Elkins Prize

B.A., Tufts University, 1997, summa cum laude, Phi Beta Kappa

Admissions

New York, 2002

Court Admissions

U.S. District Court for the Eastern District of New York

U.S. District Court for the Southern District of New York

Profile

Adam Siegartel is a partner in Haynes and Boone's Intellectual Property Practice Group. He is a first-chair litigator with significant intellectual property experience, and he leads the firm’s brand management group in New York.

Adam’s practice is extremely diverse. Adam has significant experience not only running litigations from start to finish, but also managing worldwide trademark portfolios and handling every aspect of trademark prosecution, including trademark searching and clearance, preparing and filing trademark applications, and handling cease-and-desist situations. He also routinely counsels clients regarding advertising clearance and claim substantiation, copyright issues, the right of publicity, domain names, counterfeiting, and other IP issues. He negotiates and drafts a wide array of licenses, coexistence agreements, and other IP content agreements, and he manages IP due diligence projects for a diverse range of spin-offs, mergers and acquisitions, and other corporate transactions. He also has broad experience assisting clients in connection with consumer surveys, sweepstakes, and other promotional programs.

Adam's clients span all sizes and include large national and multi-national corporations, small businesses, start-up companies, and individual entrepreneurs. His clients are not restricted to any particular industry, and Adam counsels clients in industries that include, for example, apparel, consumer products, cosmetics, data analytics, e-commerce, energy/utilities, film, financial services, hospitality/lodging, professional sports, real estate, recorded music, and telecommunications.

Adam has been active in all phases of federal and New York State litigation, from pre-filing through post-trial appeals, and regularly litigates applications for preliminary injunctions and other emergency relief. Adam’s intellectual property experience includes diverse matters before many different tribunals, including federal courts nationwide, the domain name dispute panels of the World Intellectual Property Organization and ADR Forum, and the arbitration panels of the National Advertising Division and National Advertising Review Board of the Council of Better Business Bureaus. Adam also handles cancellation and opposition proceedings before the U.S. Trademark Trial and Appeal Board.

Adam is a frequent lecturer and writer, in particular concerning trademark, right of publicity, and licensing issues.

Professional Recognition

  • Recognized by Legal 500 United States, Legalease, in Media, Technology & Telecoms: Marketing & Advertising, 2012-2014

Professional and Community Activities

  • Member, International Trademark Association (INTA) Public Resources Committee; former member, INTA Bulletin Committee
  • New York City Bar Association, Trademark and Unfair Competition Committee

Growth

Adam Siegartel

Haynes and Boone Expands New York IP Litigation and Brand Management Practices with New Partner

Haynes and Boone, LLP announced that Adam Siegartel has joined the New York office as a partner in the firm’s Intellectual Property Practice Group. Adam is a first-chair litigator and experienced IP counselor who will lead the firm’s brand management group in New York.

Selected Client Representations

Trademark Clearance, Prosecution, and Brand Management

  • Coordinate worldwide re-branding for world-famous provider of financial ratings, indices, and data analytics, including a trademark filing program for new marks covering approximately 80 countries and related counseling, searching, and clearance work
  • Oversee trademark, copyright, and other IP counseling for U.S. organization bidding for 2024 Summer Olympics, including trademark filing programs and merchandising assistance
  • Assist Fortune 500 utility company in connection with spinoff of power generation assets; tasks included IP counseling, searching many potential marks and related written opinions, and overseeing trademark filing program following selection of final marks
  • Handle trademark and brand management matters for largest pro business advocacy and lobbying group in the U.S.

Trademark Litigations

  • First-chaired bench trial representing publicly-traded financial services company in infringement action in Southern District of New York; favorable bench verdict October 2015
  • Represented world’s largest alcoholic beverage company in infringement and dilution action in Eastern District of Texas; favorable jury verdict December 2014
  • Represented major professional sports league in successful litigation against unlicensed trading card company selling cards depicting players in uniforms with team and league indicia
  • First-chaired U.S. Trademark Trial and Appeal Board opposition representing estate of Rock and Roll Hall of Fame musician against world-famous guitar manufacturer

False Advertising Litigations

  • Represented multinational consumer products company in Southern District of New York jury trial against major competitor
  • Extensive experience representing both challengers and advertisers before National Advertising Review Board (NARB) and National Advertising Division (NAD)

Copyright Litigations

  • First-chaired copyright infringement lawsuit representing Academy Award-winning actor; successfully moved for summary judgment and attorneys’ fees
  • Represented major music recording company in defense of copyright infringement claims; successfully moved to enforce written but unexecuted settlement agreement
Cybersquatting Litigations
  • First-chaired ICANN arbitration representing U.S. professional sports league; successfully obtained transfer of domain name used for league’s official online secondary ticket marketplace
  • Successfully represented celebrity news website opposing domain transfer in ICANN arbitration; domain continues to be used for client website with billions of hits and worldwide video distribution
Commercial Litigations
  • Represented leading concert promoter in successful attempt to enjoin City of New York from constructing 15,000-seat concert amphitheater on Randall’s Island in Manhattan
  • Represented largest issuer of reloadable debit cards in U.S. in breach of contract action against publicly-traded former partner specializing in student loans for higher education
  • Represented professional football team in several litigations regarding potential Manhattan stadium
  • Represented prominent automobile manufacturer in breach of contract action concerning retrieval of domain names, customer data, and other confidential information from terminated vendor

Admissions


Bar Admissions

  • New York, 2002


Court Admissions

  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York

Selected Publications and Speeches

  • “Appealing a Trademark Registration Refusal? Win or Lose, You May Have to Pay the USPTO’s Legal Fees,” author, IP Litigator, August 2015.
  • “Case Study: Mattel v. Baby Brainy,” author, Law360, March 19, 2012.
  • “TTAB Snuffs Out KUBA KUBA for Cigars,” author, INTA Bulletin, June 15, 2011.
  • “United States Sentencing Commission Announces New Emergency Guidelines for Criminal Trademark and Copyright Counterfeiting Cases,” author, Cyberspace Lawyer, November 2006.
  • “Navigating Three Trademark Defenses Developed to Balance Owners’ Rights and Free Expression,” author, New York Law Journal, July 29, 2002.
  • “The Rights of Publicity and Privacy and Related Issues”
  • “Trademark Licensing: Legal and Strategic Overview”
  • “Trademarks and Domain Names – Why Should You Care? What Should You Do?”

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