Mark Lerner is Chair of the Trademark, Copyright, Entertainment and Advertising Division of the firm's Intellectual Property Practice Group. He practices in the area of intellectual property law. Mr. Lerner counsels clients on trademark selection and clearance and has extensive experience prosecuting trademark applications and managing international trademark portfolios of clients ranging from publishers to advertising agencies to multinational consumer products companies.
Mr. Lerner is also a litigator with experience in intellectual property disputes and commercial litigation. He has successfully defended clients in trademark, trade dress and false advertising cases in federal court as well as before the Trademark Trial and Appeal Board. In addition, Mr. Lerner has experience in pre-publication and pre-broadcast review and sweepstakes administration. He also regularly assists clients in transactions involving intellectual property and licensing.
Mr. Lerner is a regular speaker on intellectual property issues, having participated in panels at the New York City Bar Association, INTA and the Promotional Marketing Association annual conference.
Mr. Lerner is a 1994 cum laude graduate of New York University School of Law, where he was an editor of the competitions division of the Moot Court Board, and a graduate of Haverford College. He has a background in public relations and the performing arts.
Areas of Practice
- Intellectual Property and Media Law
- Litigation and Dispute Resolution
Represented RB Health (US) LLC in the acquisition of an IP portfolio related to the QUEEN V brand from Brandable LLC, handling negotiation of the APA and providing due diligence on the portfolio.
Successfully defended news website, Newsmax.com in obtaining dismissal under California’s anti-SLAPP statute of libel claims brought by Hollywood celebrity Andrew Keegan. The court found that Keegan could not show actual malice in connection with publication of an article regarding a government raid on his spiritual center. The decision was affirmed on appeal and attorneys’ fees awarded.
Representing Newsmax Media in a high-profile defamation and conspiracy claim stemming from reporting on the 2020 election.
Assisted Newsmax Media in closing a deal for a Program Services and Content Sharing Agreement for the licensee to launch channels in Eastern Europe under the Newsmax brand and licensing content from Newsmax.
Secured dismissal of a defamation claim against Newsmax Media brought by Dr. Jerome Corsi, an author and political commentator, on a motion to dismiss/for summary judgment brought under Florida’s anti-SLAPP law, which was granted on procedural grounds.
Representing NBCUniversal subsidiary E! NETWORKS PRODUCTIONS, LLC in connection with a copyright claim brought by a YouTube “celebrity,” Michelle Fleishman, for alleged infringement based on the use of approximately 3 seconds from an over five minute video; fully litigating this matter based on a fair use defense.
Assisting Scott Brothers Entertainment with the registration of the mark DREW & JONATHAN REVEAL in connection with the launch of a new magazine. The application for the mark was refused due to an existing REVEAL registration owned by the Center for Investigative Reporting; successfully overcame the refusal, and the mark has been approved for publication.
- New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. Court of Appeals for the Second Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. Court of Appeals for the Tenth Circuit
- New York University School of Law, J.D., cum laude
- Haverford College, B.A.
- Duane Morris LLP
- Partner, 2020-present
- Satterlee Stevens LLP
- Partner, 1994-2020
Honors and Awards
- Listed in World Trademark Review 1000 list of the World's Leading Trademark Professionals, 2022
- Listed in New York Metro Super Lawyers, 2018-2021
International Trademark Association
American Bar Association
Civic and Charitable Activities
- Vice President, Vineyard Theatre Board of Directors
- Co-author, "U.S. Patent and Trademark Office Implements Trademark Modernization Act, Paving the Way to Clear the Federal Register," Duane Morris Alert, November 23, 2021
- Co-author, "U.S. Trademark Office Offers New Tools Against Registrations Granted Without Use in Commerce," Duane Morris Alert, January 25, 2021
- Co-author, "New Copyright Claims Board May Have Limited Appeal," Duane Morris Alert, January 19, 2021 (republished in Intellectual Property & Technology Law Journal, May 2021)
Selected Speaking Engagements
- Presenter, "Major Stories in Media Law Over the Course of the COVID-19 Pandemic and Recovery," Duane Morris COVID-19: Navigating Forward Webinar Series, May 20, 2021
- Panelist, "TRAPS IN THE COURT OF PUBLIC OPINION: Ethical, Legal and Practical Considerations for Lawyers When Communicating with the Media and Public," Association of Corporate Counsel, May 12, 2021