Mitchell A. Frank practices in the area of Intellectual property law. Mr. Frank focuses his practice on all aspects of trademark and copyright counseling, from trademark clearance, enforcement and protection, licensing and trademark and copyright aspects of acquisitions and divestitures. His experience includes overseeing the protection, maintenance and enforcement of global trademark portfolios as well as transactions and trademark and copyright litigation.
Prior to joining Duane Morris, Mr. Frank spent more than 25 years as in-house Trademark Counsel at Joseph E. Seagram & Sons, Inc., Bestfoods and Unilever, where he was responsible for advising the business on all aspects of trademark and copyright usage, protection, enforcement and licensing, both in the United States and globally.
Mr. Frank is a graduate of Syracuse University College of Law, where he was lead articles editor for the Syracuse Law Review, and Johns Hopkins University.
Areas of Practice
- Intellectual Property Law
- Trademarks and Copyrights
- Handled trademark and copyright aspects of Voxx International Corporation's $20 million acquisition, through Newco, a Delaware LLC, of 54 percent of the assets of EyeLock, Inc., a Puerto Rico corporation, and EyeLock Corporation, a Delaware corporation, and a wholly-owned subsidiary of EyeLock, Inc.
- Represented Yonder Music Inc. in its receipt of a preferred equity investment of $10 million by Axiata Digital Services Sdn Bhd, one of the largest telecommunications companies in Asia. The transaction provided funding for the launch of a service-tier-bundle of digital music services on smart devices through a commercial licensing agreement with Celcom Mobile Sdn Bhd, one of Axiata's subsidiaries in Malaysia, under which the Yonder digital music application will be made available to more than 13 million Celcom subscribers in Malaysia.
- Handled intellectual property aspects in a $105 million financing and acquisition by NYX Gaming Group of Amaya (Alberta) Inc. (f/k/a Chartwell Technology Inc.) and Cryptologic Limited. NYX Gaming Group has also entered into a preferred supplier licensing agreement with a subsidiary of Amaya Inc.
- Represented a manufacturer and distributor of personal and home care products in a dispute with an ice cream maker alleging copyright infringement of its ad campaign.
- Handled intellectual property aspects in the acquisition of Market Metrix, a California customer feedback-management firm, by Clarabridge.
- Represented a major personal care products company in obtaining a registration from the United States Trademark Office, after it had previously been twice refused, of a trademark for hair care products, which was to be used in connection with a major product launch in the hair care industry.
- Represented Ben & Jerry's Homemade, Inc. in litigation alleging claims of trademark infringement and tarnishment of Ben & Jerry's trademarks, trade dress and ice cream flavor names by an adult film company.
- Represented major ice cream maker in negotiating trademark license agreements with third parties, including Disney, Marvel, Warner Bros., Hershey, Mars, Kraft, Sanrio and Girl Scouts of America.
- New York
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- Syracuse University College of Law, J.D., 1975
- The Johns Hopkins University, B.A., 1972
- Duane Morris LLP
- Special Counsel, 2010-present
- Unilever United States, Inc.
- Assistant General Counsel, Commercial Law and Trademarks, 2001-2010
- Bestfoods (formerly CPC International Inc.) (acquired by Unilever)
- Trademark Counsel, 1990-2000
- Joseph E. Seagram & Sons, Inc.
- Senior Staff Attorney, 1983-1990
- Bierman, Bierman & Peroff
- Associate, 1982-1983
- Cowan, Liebowitz and Latman
- Associate, 1978-1982
- International Trademark Association (formerly U.S. Trademark Association)
- Member, 1978-2009
- Member, Board of Directors, 1999-2002
- Member, 2004 Annual Meeting Project Team
- Member, "Trademarks in Cyberspace 2000" Project Team
- Member, 1997 Annual Meeting Subcommittee
- Former Member, Editorial Board, Trademark Reporter
- Former Member, Industry Advisory Council
- Former Member, Forums Committee
- Former Member, Parallel Imports Committee
- Co-author, "2012 USA Yearbook," World Trademark Review, August 6, 2012
- Contributing Author, "The Thirty-Second Year of Administration of the Lanham Trademark Act of 1946," 69 Trademark Reporter 517 (November-December 1979)
- Contributing Author, "The Thirty-First Year of Administration of the Lanham Trademark Act of 1946," 68 Trademark Reporter 687 (November-December 1978)
- "Alien Inheritance Statutes: An Examination of the Constitutionality of State Laws Restricting the Rights of Nonresident Aliens to Inherit from American Decedents," 25 Syracuse Law Review 597 (Spring 1974)
Selected Speaking Engagements
- Moderator and Speaker, International Trademark Association Annual Meeting, Food and Beverage Industry Breakout Session, May 2004
- Speaker, International Trademark Association "Advanced TTAB Practice" Forum ("Settlement and Alternative Dispute Resolution"), September 2001
- Speaker, International Trademark Association "Trademarks in Cyberspace 2000," October 2000