Mark A. Steiner
Partner
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Phone: +1 415 957 3036
- Duane Morris LLP
Spear Tower
One Market Plaza, Suite 2200
San Francisco, CA 94105-1127
USA - Duane Morris LLP
260 Homer Avenue, Suite 202
Palo Alto, CA 94301-2777
USA
Mark A. Steiner is a brand protection attorney. He has over four decades of experience representing clients in protecting, enforcing and defending their important intellectual property rights, both domestically and internationally, with a focus on trademark and copyright law. Mr. Steiner offers clients a strong combination of trial experience, counseling, enforcement, procurement and licensing insight 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 with the understanding that companies’ brands are almost always their most valuable assets.
Mr. Steiner handles global trademark matters for life science companies, including companies in the biopharma field as well as medical, surgical and laboratory devices.
Before entering private practice, Mr. Steiner 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 Public Information Committee. He is a former adjunct professor of intellectual property law at the Universite Paris Ouest Nanterre La Defense 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 has been recognized in the World Trademark Review 1000 list of the World's Leading Trademark Professionals since 2012. A spokesperson from WTR said, “Mark is always ahead of trends and has the ability to assess risks without catastrophizing, which makes global rights procurement and enforcement manageable. He’s a key strategic adviser with an in-depth understanding of underlying technology and his clients’ overall go-to-market strategy, which is so vital when protecting trademarks in the world of technology.”
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) trademark registrations for the shape of a bottle of vodka and for laboratory instrument by assembling evidence showing the bottle had acquired distinctiveness or "secondary meaning."
Represented well-known consumer brand client in litigation to prevent a competitor from using a trademark that incorporated the essential component of the client's trade identity. Settled the case on terms very favorable to the client.
Successfully filed Letter of Protest with United States Patent and Trademark Office (USPTO) which resulted in USPTO denying registration of litigation opponent’s trademark. Won opposition to attempted registration of client’s trademark by squatter in China.
Succeeded in having knock-offs of client’s websites taken down.
Have recovered many domain names from cybersquatters for clients.
Areas of Practice
- Intellectual Property
- Trademark and Copyrights
- Anti-Counterfeiting
Admissions
- California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. District Court for the Eastern District of California
- U.S. District Court for the Central District of California
Education
- University of California College of the Law, San Francisco, 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
- Public Information Committee
- Alternative Dispute Resolution Committee (Prior)
- Emerging Issues Committee (Prior)
Honors and Awards
- Listed in The Best Lawyers in America, 2022-2024
- Listed in World Intellectual Property Review (WIPR) Leaders Directory, 2022 and 2023
Listed in World Trademark Review 1000 list of the World's Leading Trademark Professionals, 2012-2024
- Chambers USA: America's Leading Lawyers for Business, Recognized Practitioner 2014 and 2015
- Listed in Expert Guides Best of the Best 2012 USA–Trademark Law
- Annual Listing in Managing Intellectual Property Guide to the World's Leading Trademark Law Practitioners
- AV Preeminent® Peer Review Rated by Martindale-Hubbell®
Board Memberships
- San Francisco Chamber of Commerce Board Member, 2015-2019
- Lowell High School Alumni Association Board of Directors, 2013-2021
Civic and Charitable Activities
- Pro Bono representation of low income clients
Selected Publications
- "Cliff House No More? Battle Brews Over S.F. Landmark’s Name," San Francisco Chronicle
"Trump Versus Daniels: A Storm Brews Over Copyright," San Francisco/Los Angeles Daily Journal
"Brand Enforcement: How to Stop a Trademark Infringement," Accuchex Blog
"The In-N-Outs of Brand Protection," Accuchex Blog
"Brand Selection: Choosing a Distinctive and Protectable Name," Accuchex Blog
"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, Fireside Chat Q & A regarding trademark and copyright protection and enforcement, Keiretsu Capital, June 20, 2022
- Speaker, “Trademark and Copyright Protection,” 4thly Accelerator, June 26, 2020
- Speaker, “Product and Packaging Trade Dress Protection,” ProVisors Bay Area Branding, Marketing, and Sales Affinity Group, June 23, 2020
Speaker, "Legal Issues Around Brand Protection," Business Leadership Council, San Francisco, March 13, 2019
Speaker, "Legal Issues Around Brand Protection," Bay Area Branding, Licensing, IP, & Strategic Services Affinity Group, San Francisco, January 22, 2019
- 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