Mark A. Steiner
Partner

Duane Morris LLP
Spear Tower
One Market Plaza, Suite 2200
San Francisco, CA 94105-1127
USA

Duane Morris LLP
2475 Hanover Street
Palo Alto, CA 94304-1194
USA

Phone: +1 415 957 3036
Fax: +1 415 358 4738
Email: masteiner@duanemorris.com

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Mark A. Steiner

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Mark A. Steiner practices in the area of intellectual property law, with a focus on trademark and copyright law. Mr. Steiner offers clients a strong combination of trial experience, counseling, enforcement, procurement and licensing expertise in matters concerning trademarks, trade identity, Internet domain names, copyrights, trade secrets and unfair competition. He has represented companies ranging in size from start-ups to Fortune 500 in a wide variety of industries, including e-commerce, computer hardware and software, networking, retail, architectural and engineering-design services, personal-care products, sporting goods, clothing, toys and games, food and beverage, hotels and restaurants. He serves as intellectual property counsel to companies at various stages of development, from inception to maturity. Mr. Steiner regularly assists clients in the management and enforcement of domestic and international trademark portfolios.

Mr. Steiner has been practicing trademark and copyright law for over 27 years. Before entering private practice, he served as a Deputy City Attorney for the City and County of San Francisco and was an instructor at the University of California - Hastings College of the Law.

Mr. Steiner is a trained mediator by the International Trademark Association (INTA), is listed on the INTA Panel of Neutrals, and presently serves on INTA's Alternative Dispute Resolution Committee. He is a former adjunct professor of intellectual property law at the University of Paris X School of Law and also served as faculty chair for many years for the Practising Law Institute's Global Trademark and Copyright program.

Mr. Steiner is a 1979 graduate of the University of California, Hastings College of the Law, where he was an editor of the Hastings Communications and Entertainment Law Journal, and a graduate, with high honors, of the University of California at Davis.

Representative Matters

  • Obtained from the United States Patent and Trademark Office (USPTO) a trademark registration for the shape of a bottle of vodka by assembling evidence showing the bottle had acquired distinctiveness or "second meaning."
  • Represented well-known consumer brand client in opposition filed at the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (USPTO) where applicant attempted to register a mark that resembled the design and trade dress of a client's label. Settled the case on terms very favorable to the client.
  • Successfully obtained a trademark registration on appeal to the Trademark Trial and Appeal Board, after the U.S. Patent and Trademark Office (USPTO) had twice declined to register the client's trademark due to prior registration for identical mark.

Areas of Practice

  • Intellectual Property
  • Trademark and Copyrights
  • Anti-Counterfeiting

Admissions

  • California
  • U.S. District Court for the Northern District of California

Education

  • University of California, Hastings College of the Law, J.D., 1979
    - Editor, Hastings Communications and Entertainment Law Journal
  • University of California, Davis, B.A., with high honors, 1976

Experience

  • Duane Morris LLP
    - Partner, 2011-present
  • Townsend and Townsend and Crew LLP
    - Partner, 1983-2010
  • San Francisco City Attorney
    - Deputy City Attorney, 1980-1983

Professional Activities

  • American Bar Association
  • American Intellectual Property Law Association
  • Bar Association of San Francisco
    - Past Chair, Intellectual Property Committee
  • International Trademark Association
    - Alternative Dispute Resolution Committee

Honors and Awards

  • Chambers USA: America's Leading Lawyers for Business, Recognized Practitioner 2014
  • Listed in 2012-2014 editions of World Trademark Review 1000 list of the World's Leading Trademark Professionals as one of the top trademark lawyers in Prosecution and Strategy.
  • Listed in Expert Guides Best of the Best 2012 USA–Trademark Law
  • Listed in Northern California Super Lawyers, 2011 and 2012
  • Annual Listing in Managing Intellectual Property Guide to the World's Leading Trademark Law Practitioners

Board Memberships

  • Lowell High School Alumni Association Board of Directors

Civic and Charitable Activities

  • Lowell Alumni Association Board Member

Selected Publications

  • Featured in Evolve: Trademarks and Intellectual Property, Duane Morris LLP, Summer 2014
  • "Facebook Goes to Trial in Defense of 'Timeline 'Feature," Bloomberg
  • Intellectual Property Roundtable participant, California Lawyer and Daily Journal
  • "Q&A: The Trademark Professional's Forum" on the Trademark Dilution Revision Act, NameProtect Trademark Insider
  • "Madrid Protocol Presents Mixed Opportunity," Daily Journal Supplement
  • "Making Sense of Madrid," IP Law & Business
  • Findlaw Interview regarding the Madrid Protocol, Corporate Counsel Center
  • "What Happens When You Name a Company 'Codegrok?'" Investor's Business Daily
  • "A New Frontier in Brand Protection," Marketing Management
  • "Parody of Copyrighted Material: Infringement or Fair Use?" Intellectual Property Today
  • "Law Offers 3 Types of Protection for Plants," Agri-Times
  • "Careful Selection of Trademarks Can Avoid Monetary Damages," Marketing News

Selected Speaking Engagements

  • Speaker, "2014 Developments in Workplace Law and Practice," Duane Morris Employment, Benefits and Immigration Practice Group, Silicon Valley, May 21, 2014
  • Speaker, "Trademark Selection, Protection and Enforcement," 5th Annual Best Practices for Owning & Operating a Winery Conference, Santa Rosa, California
  • Speaker, "'SUPER' Trademarks," All Hands Meeting, Santa Clara, California
  • Speaker, "A Legal Framework to Protect Your Designs," American Apparel & Footwear Association Material World & Technology Solutions Program, Los Angeles
  • Speaker, "Do You Really Own Your IP?" CONNECT: Frameworks Workshop, San Diego
  • Speaker, "Proving Trademark Confusion: How In-House Counsel Can Help Make the Case," California State Bar IP Section program on "Intellectual Property Issues for In-House Counsel"
  • Speaker, "Intellectual Property Enforcement of Trademarks and Copyrights," California State Bar IP Section program on Intellectual Property Issues for In-House Counsel