Maxim A. Voltchenko
Special Counsel
Duane Morris LLP
30 South 17th Street
Philadelphia, PA 19103-4196
USA
Phone: +1 215 979 1823
Fax: +1 215 689 4959
Email: MAVoltchenko@duanemorris.com

Maxim ("Max") A. Voltchenko focuses on trademark counseling, clearance, registration, enforcement (infringement) matters in the U.S. and abroad, copyrights, trade secrets, intellectual property licensing and all Russia-related legal matters. He also handles matters involving software licensing, e-commerce, and Internet use and abuse, including representation of parties in proceedings under ICANN's Uniform Domain Name Dispute Resolution Policy.

Mr. Voltchenko has represented corporate and individual clients in both United States and Russia since 1997, across various industries including software development, FMCG (fast-moving consumer goods), sport apparel and entertainment. Admitted in Pennsylvania, New York and Russia, Mr. Voltchenko counsels clients on protecting their intellectual property in the U.S. and Russia and worldwide. Mr. Voltchenko represents start-ups and individual entrepreneurs as well as established companies and multinationals. Prior to returning to Duane Morris in 2003, Mr. Voltchenko practiced law in the Moscow office of a global New York-based law firm for more than three years. While in Russia, Mr. Voltchenko counseled multinational corporations and major Russian clients on U.S.-Russia cross-border transactions and complex issues of Russian law. In particular, he has advised clients on the Russian and international legal issues affecting the transfer of state-of-the-art explosive detection technology.

A native Russian, Mr. Voltchenko has authored numerous articles, in Russian and English, on various legal issues and spoken at conferences including at the Annual Meeting of Russian Patent and Trademark Attorneys in December 2010 and 2011 and at the Independent Software Developers Forum (ISDEF.org) in Moscow, Russia in October 2009. Mr. Voltchenko is a member and actively participates in the International Trademark Association (INTA). He is a member of the INTA Bulletin Law & Practice: Europe & Central Asia Committee.

Mr. Voltchenko is a graduate of Rutgers University School of Law-Camden (J.D.) and Temple University School of Law (LL.M., LL.M. in Taxation), Central European University in Budapest, Hungary (Master's Degree in International Business Law), and Tomsk State University in Russia (LL.B.).

Areas of Practice

• Intellectual Property Law - Trademarks, Copyrights, Trade Secrets, Technology Transfers
• Intellectual Property Litigation
• International Transactions - Russia
• Information Technology

Representative Matters

• Prosecution and defense of trademark registration matters in U.S. Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board.
• Handle the trademark portfolio and other IP rights of a regional transportation authority in the USPTO and enforce the transportation authority’s IP rights.
• Represent Russian and other non-U.S. software (shareware) companies in the U.S.
• Prosecution and defense of trademark infringement and unfair competition actions in district court.
• Domain name dispute actions in WIPO and the National Arbitration Forum.
• A Counsel to a leading national oil refining company in obtaining and enforcing both domestic and foreign trademarks. Obtained trademark registration for the color green mark in connection with racing motor oils.
• Counsel to a nationwide leading junior apparel retailer in obtaining, enforcing and defending trademarks and copyrights.
• Handle the trademark portfolio in Russia of a major U.S. sport apparel company.
• U.S. Trademark Counsel to a leading global German-based company that designs and manufactures upper-market plumbing fixtures and faucets for shower, kitchen and bath.
• Responsible for U.S. and international trademark portfolio, including enforcement of trademark rights around the U.S., for a leading global organizational and human resources consultancy that helps its clients, boards, CEOs, top executives, and HR managers on virtually all aspects of their people-related business issues.
• Counsel for Canadian clothing manufacturer in U.S. opposition proceeding where summary judgment was obtained in matter in which neither entity made use of mark in the U.S. Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., 77 USPQ2d (BNA) 1861 (TTAB 2006).
• Pro bono intellectual property counsel to The Rebecca Davis Dance Company, a Philadelphia premier dance theater troupe and dance studio.

Professional Activities

• International Trademark Association (INTA)
  - Member of the INTA Bulletin Law & Practice: Europe & Central Asia Committee, 2011-2012 Term
• Russian Speaking Professionals Network of the Greater Philadelphia (rspnetwork.org)
• Independent Software Developers Forum (ISDEF.org)

Admissions

• Russia
• Pennsylvania
• New York

Education

• Rutgers School of Law - Camden, J.D., 2005
• Temple University School of Law, LL.M. in Taxation, 1999
• Temple University School of Law, LL.M., 1997
• Central European University, Budapest, Hungary, Master's Degree, International Business Law, 1996
• Tomsk University, Russia, LL.B., 1993

Experience

• Duane Morris LLP
  - Special Counsel, 2013-present
  - Associate, 2005-2013
  - Foreign Legal Counsel, 2003-2005
  - Associate, 1999
• Coudert Brothers LLP, Moscow, Russia
  - Associate, 2000-2003
• Deloitte & Touche, Moscow, Russia
  - Consultant, 1999-2000
• Eckert Seamans Cherin & Mellott
  - Intern, Foreign Legal Consultant, 1997-1999
• Bank Aurum, Novosibirsk, Russia
  - In-house Counsel, 1993-1995

Selected Publications

• Author, "RUSSIA Specialized IP Court Will be Introduced in 2013," International Trademark Association's (INTA) INTA Bulletin, March 15, 2012 Vol. 67 No. 6.
• Author, "'You'd Better Shape Up,' Says Ukraine's Highest Commercial Court, in Invalidating Ferrero's Trademark Registration for Product Configuration" (Rafaello coconut treat case), INTA Bulletin, October 1, 2011 Vol. 66 No. 17
• Author, "The struggle to register the MOSKOVSKAYA trademark in the U.S. Patent and Trademark Office continues" (in Russian), Patentniy Poverenniy (Patent Attorney), (patentinfo.ru), Russia, April 2009
• Co-author, "Competitors' Trademarks in Keyword Advertising May Constitute Infringement," Intellectual Property Supplement to The Legal Intelligencer, October 16, 2006
• Author, "Software Development Outsourcing: NDAs Go Beyond Intellectual Property Laws-But How Far?" The Computer Law Association Bulletin, Vol. 20, No. 3, 2005
• Author, "Legal Foundations for e-Business in Russia: Do They Exist or Not," (in Russian), Finansist, May 2000
• Author, "Russian Highest Judicial Authority in Commercial Law Issues a Letter Interpreting the 1992 Russian Trademark Act," The Trademark Reporter, 1998
• Author, "ITAR-TASS Russian News Agency v. Russian Kurier: Federal District Court Applies United States, Russian and International Copyright Law," B.C. Intellectual Property & Tech. F. 043401; also in IP Litigator, November/December 1998; also in Russian Mass Media Law Bulletin No. 1-2 (41-42) 1998 (in Russian) available online at http://www.internews.ru/ZiP/41-42/action.html
• Author, "Remedial Provisions of the New Russian Civil Code: An Analysis From a Comparative Perspective," Parker School Journal of Eastern European Law (Columbia University), Vol. 3, No. 6, 1996

Selected Speaking Engagements

• Speaker, "U.S. Trademark Registration: The Attorney's Role from Clearance to Renewals," LawReviewCle, Philadelphia, November 13, 2012
• "The Madrid Protocol 102: U.S. and Russian Perspectives and Other International Trademark Issues," presentation at the Association of Russian Patent and Trademark Attorneys, Moscow, Russia, December 2011
• "Tips & Tricks For Non-U.S. Trademark Attorneys Who Are Managing Trademark Applications and Registrations in the U.S. and ... Managing U.S. Counsel," presented to the Danish Association of Trademark Attorneys, Copenhagen, Denmark, November 2011
• "Criminal Copyright Infringement and International Cybercrime," presentation at the roundtable held at the Consulate General of the Russian Federation in New York, October 2011
• "Navigating the Evolving Landscape of the Workplace," presentation at the Russian-Speaking Professionals Network of Greater Philadelphia Annual Business Trends Forum in Philadelphia, May 2011
• "Intellectual Property Laws of Russia. What Russia Can Be Compared to: India, China, USA or EU?" presentation at the World Russia Forum in Washington, D.C., March 2011
• "The Madrid Protocol: U.S. and Russian Perspectives and Other International Trademark Issues," presentation at the Association of Russian Patent and Trademark Attorneys, Moscow, Russia, December 2010
• "5 Things You Need to Know to Protect Your Intellectual Property (IP), While Not Spending Much Money: IP in the Time of Crisis 101," presentation at the annual conference of the International Software Developers Forum (ISDEF) in Moscow, Russia, October 2009
• "Website and Copyright Issues," presentation at the breakfast meeting of the Russian Speaking Professionals Network (RSPN) in Philadelphia, April 2009
• "Website and U.S. and International Copyright Issues: What Every Businessman Should Know When Creating or Commissioning a Website," presentation at the annual conference of the International Software Developers Forum (ISDEF) in Moscow, Russia, September 2008
• "Trademark Selection and Search Basics. What a Business Person Should Know When Selecting a New Trademark for Product to Market Domestically and Internationally," presentation at ISDEF-2007 (International Software Developers Forum) in Moscow, Russia, October 2007
• "Unauthorized Use of Someone's Trademark in Search Engine Keyword Advertising" and " Domain Names and Related Legal Issues," Independent Software Developers Forum 2006, Moscow, Russia, October 5-8, 2006
• "IP Issues in Software Outsourcing," Fifth Annual Russian Outsourcing & Software Summit (ROSS-2005), St. Petersburg, Russia, June 16, 2005
• "Marketing Information Technology Services and Products in the U.S. and Globally: Practitioner's Recommendations for Selecting a Brand and Logo," U.S.-Russia Technology Conference as part of CeBIT-America, New York, May 27, 2004; Fourth Annual Russian Outsourcing & Software Summit (ROSS-2004), St. Petersburg, Russia, June 9-12, 2004
• "Doing Business Abroad: RUSSIA. Key Legal Issues and Regulations," Business Seminar organized by the International Visitors Council of Philadelphia and the International Law Committee of the Philadelphia Bar Association, April 22, 2004
• "Transfer of Intellectual Property: Interdisciplinary Approach -- Maximum Protection," EuroForum Conference on Trademarks in Russia/CIS, Moscow, Russia, May 28-29, 2003