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. Max litigates cases in U.S. federal district courts and state courts, and represents trademark owners in proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. He also handles matters involving software licensing, e-commerce and Internet use and abuse, including counselling on new generic top level domains (gTLDs) and representing 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, home furnishings, business management consulting, wine and spirits, apparel and entertainment. Admitted in Pennsylvania, New York and Russia, Mr. Voltchenko counsels clients on protecting their intellectual property in the U.S., Russia and worldwide, including under the Madrid filing system. Mr. Voltchenko represents start-ups and individual entrepreneurs as well as established companies and multinationals.
Max has authored articles and blog postings, in Russian and English, on various legal issues and spoken at conferences including at Annual Conference of Licensing Executives Society International (LESI) in Moscow, Russia in May 2014 and at the Independent Software Developers Forum (ISDEF.org) in Moscow, Russia in September 2013 and 2015. Mr. Voltchenko is a member and actively participates in the International Trademark Association (INTA). He has moderated table topics and roundtables, and is a member of the 2014-2015 and 2016-2017 INTA Legal Practice Resources 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.).
- Prosecution and defense of trademark registration matters in U.S. Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board.
- Procure the trademark registrations for and manage 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. In particular, manage the worldwide trademark portfolio of and obtain copyright registrations for source codes of a company that sells award-winning trading software for charting, backtesting and multi-broker automated stock trading.
- Counseled 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.
- Counseled a nationwide junior apparel retailer in obtaining, enforcing and defending trademarks and copyrights.
- Manage the trademark portfolio of a major U.S. sport apparel company in Russia.
- Manage the trademark portfolio of a U.S. raisin company in Russia.
- A 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 for a leading global organizational and business management and executive compensation consultancy that helps its clients, boards, CEOs, top executives, and HR managers on virtually all aspects of their people-related business issues.
- Guide clients through multi-million dollar financing and re-financing transactions where intellectual property assets are leveraged as collateral, including due diligence, assignments (and security interests) and licensing of trademark and copyright assets in client portfolios.
- Represented an individual real estate developer and entrepreneur, who applied to register marks for coffee shop services, but was refused over a mark owned by a restaurant under Section 2(d) of the Lanham Act in an ex parte appeal before the TTAB.
- A Pro Bono IP Counsel to the National Association of Women Lawyers (NAWL).
- Enforcement (prosecution) and defense of trademark and copyright infringement and unfair competition actions in federal district courts and state courts.
- Domain name dispute actions in WIPO and the National Arbitration Forum.
- Prepare and file infringement claims to remove infringing listings on internet shopping platforms such as Amazon, eBay and Alibaba.
- Represented a private, liberal arts college in a trademark infringement and counterfeiting case against a print-on-demand company that sells t-shirts and other clothing via its online store in a federal district court.
- Represented a company based in Lehigh Valley, Pennsylvania that makes and sells water purification and wastewater treatment systems used for military field operations; potable and utility water in emergency response/disaster relief situations against a competitor in an action for declaratory judgment of non-infringement of a trademark in district court.
- Represented a national retailer of young women's clothing in a trademark opposition before the TTAB against an application for a confusingly similar design mark.
- Represented a national retailer of young women's clothing defending several actions of alleged copyright infringement and contributory infringement by an alleged owner of copyright in common textile print designs in federal district court.
- Represented a Canada-based company that sells SIM cards to travelers against a company that sells prepaid phones in an action for declaratory judgment of non-infringement of trademarks in district court.
- Represented a manufacturer and online retailer of innovative pet products in a defamation claim brought by a former distributor whose account was suspended on Amazon.com for unauthorized use of the pet products company's name and trademark and product reviews associated with the company's branded product.
- Represented a Florida-based private cabinetry company in defending against a patent infringement lawsuit that resulted in a settlement the client found favorable.
- Counseled Law Firm in a successful opposition proceeding before the China Trademark Review and Adjudication Board (TRAB) against a local trademark squatter.
- Represented a company specializing in manufacturing, packaging and supplying pool and spa care products in an action for declaratory judgment that its product label did not infringe a registered trademark and unregistered trade dress of a competitor, which resulted in a favorable settlement.
- Represented a regional transportation authority in a lawsuit against plaintiff's personal injury law firm seeking an injunction enjoining the firm from unauthorized use of the transportation authority's name and its trademarks and service marks in advertising its own services in a federal district court, which resulted in a favorable settlement.
- Represented a manufacturer of custom chassis and customized specialty trucks and vehicles, such as fire engine, rescue vehicles, etc. in a trademark infringement lawsuit against a competitor, which resulted in a favorable settlement
- Represented a publicly-traded company that provides enterprise mobility and radio frequency identification (RFID) solutions in a TTAB opposition in defending against a trademark bully that was alleging there was a likelihood of confusion between its BED TRACKING mark for tracking beds in hospitals and hotels and the client's HEALTH TRAX mark for software for administering medication and other treatments, which resulted in a favorable settlement and dismissal of the opposition with prejudice.
- Represented Plaintiff manufacturer of orthopedic and surgical implants and products in trademark infringement suit and trademark opposition against a competitor using a phonetic equivalent product name, which resulted in a favorable settlement and acquisition of the competitor's trademark rights.
- Represented a non-profit Pennsylvania (PA) corporation dedicated to promoting performing arts and culture in the greater Lehigh Valley area in a TTAB opposition in defending its trademark application against a trademark bully that was alleging that the PA corporation's trademark was "synonymous" and "promoted together" with another mark of applicant and because that another mark of applicant can cause a likelihood of confusion with opposer's mark. The opposition was dismissed with prejudice based on the client's motion to dismiss for failure to state a claim for lack of standing on the part of oppose.
- A 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).
- Represented a U.S. jewelry company in a trademark infringement action against a competitor in a federal district court.
- Represent a national retailer of young women's clothing in an action for declaratory judgment of non-infringement of trademarks and trade dress against a global women's lingerie brand in a federal district court.
- Represented a distillery based in the Republic of Belarus before the TTAB against a petition to cancel the distillery's trademark registration under Section 2(a) as falsely suggesting a connection with and disparaging an artist.
- Represented a privately held company that owns one of the fastest growing and most innovative luxury brands in the home furnishings marketplace (positioned as a lifestyle brand and design authority, offering dominant assortments across a growing number of categories, including furniture, lighting, textiles, bathware, decor, outdoor and garden, as well as baby and child products) in two successful UDRP proceedings before the National Arbitration Forum.
- Represented a leader in supplying advanced building solutions to the Exterior Insulation Finish System and Stucco markets in successful UDRP proceedings before the National Arbitration Forum.
- Advised an interested party regarding regulatory compliance with the U.S. economic sanctions with respect to certain Russian persons and entities over the crisis in Ukraine administered by the Office of Foreign Assets Control (OFAC).
- Counselled a global luxury car brand on commercial contracts in Russia and antimonopoly (antitrust) issues.
- Counsel a U.S. company providing an industry-leading cloud platform and data analytics software and services on Russia's personal data law and localization requirement.
Prosecution and Counseling
Litigation and Other Adversarial Proceedings
Areas of Practice
- Intellectual Property Law — Trademarks, Copyrights, Trade Secrets, Technology Transfers
- Intellectual Property Litigation
- International Transactions — Russia
- Information Technology
- New York
- 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 in International Business Law, 1996
- Tomsk University, Russia, LL.B., 1993
- Duane Morris LLP
- Associate, 1999, Foreign Legal Consultant, 2003-2005; Associate, 2005-2013
- Special Counsel, 2013-present
- Coudert Brothers LLP, Moscow, Russia
- Associate, 2000-2003
- Deloitte & Touche, Moscow, Russia
- Consultant, 1999-2000
- Eckert Seamans Cherin & Mellott
- Law Clerk and Foreign Legal Consultant, 1997-1999
- Bank Aurum, Novosibirsk, Russia
- In-house Counsel, 1993-1995
- International Trademark Association (INTA); member of the 2016-2017 INTA Legal Practice Resources Committee
- RSPN Russian Speaking Professionals Network of the Greater Philadelphia (RSPnetwork.org), member of the Board of Directors
- Independent Software Developers Forum (ISDEF.org)
- Philadelphia Intellectual Property Law Association (PIPLA)
- The Benjamin Franklin American Inn of Court
- Co-author, "Russia's Personal Data Localization Law: Expanding Enforcement," Duane Morris Alert, April 27, 2016
- Co-author, "Russia's Personal Data Localization Law Goes into Effect," Duane Morris Alert, October 16, 2015
- Author, "Clarifications Published on Russia's Personal Data Localization Law," Duane Morris Alert, September 2, 2015
- Author, "Russia Takes Steps to Implement Import Substitution Plan for Software," Duane Morris Alert, July 15, 2015
- Co-author, "Russia's New Personal Data Localization Law Goes into Effect in September 2015," Duane Morris Alert, June 15, 2015
- RUSSIA Rospatent Rules Against Apple Trademark on iPAD Front Display, International Trademark Association's INTA Bulletin, June 1, 2013, Vol. 68 No. 10.
- RUSSIA Vacheron Constantin Prevails Against a Free-Rider, INTA Bulletin, September 15, 2012, Vol. 67 No. 16.
- As Russia Joins the WTO, It Streamlines Official Fees and Is Expected to Improve IP Protection, INTA Bulletin, September 1, 2012, Vol. 67 No. 15.
- RUSSIA Specialized IP Court Will be Introduced in 2013, INTA Bulletin, March 15, 2012 Vol. 67 No. 6.
- "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.
- 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, 4/2009
- Competitors' Trademarks in Keyword Advertising May Constitute Infringement (in co-authorship with Lewis F. Gould, Jr.), Intellectual Property Supplement to The Legal Intelligencer, October 16, 2006.
- Software Development Outsourcing: NDAs Go Beyond Intellectual Property Laws — But How Far? The Computer Law Association Bulletin, Volume 20, No. 3, 2005.
- Legal Foundations for e-Business in Russia: Do They Exist or Not (in Russian), Finansist, May 2000
- Russian Highest Judicial Authority in Commercial Law Issues a Letter Interpreting the 1992 Russian Trademark Act, 88 The Trademark Reporter, 63 (1998)(Official Journal of the International Trademark Association).
- ITAR-TASS Russian News Agency v. Russian Kurier: Federal District Court Applies United States, Russian and International Copyright Law, 1988 B.C. Intell Prop & Tech. F. 042401; also in IP Litigator, Nov/Dec 1998; also in Russian Mass Media Law Bulletin No. 1-2 (41-42) 1998 (in Russian) available on-line at http://www.internews.ru/ZiP/41-42/action.html.
- Remedial Provisions of the New Russian Civil Code: An Analysis From A Comparative Perspective, Parker School Journal of East European Law (Columbia University), 1996/Vol. 3 No. 6.
Selected Speaking Engagements
- Moderator, "U.S.-Russia Business Relations: Challenges and Opportunities in the New Norm," Philadelphia, May 10, 2016
- Co-led a panel at the Benjamin Franklin American Inn of Court meeting on trademarks for wines and craft beers, Philadelphia, November 2015.
- How to protect your brand internationally: Madrid filing system. Presentation at the annual conference of the Independent Software Developers Forum (ISDEF) in Moscow, Russia, September 2015.
- Trademark Licensing. US Perspective. Recent Case Law: Never Doll Moment. Presentation at the Annual Conference of Licensing, Executives Society International (LESI) in Moscow, Russia in May 2014.
- How to choose your trademark and company name. Presentation at the annual conference of the Independent Software Developers Forum (ISDEF) in Moscow, Russia, September 2013.
- Mr. Voltchenko participated in CRDF GLOBAL COMMERCIALIZATION PATHFINDER BOOTCAMP in Zelenograd, Russia in December 17-19, 2012 where he trained, mentored and judged 20 young entrepreneurs and start-up executives including those selected by Skolkovo.
- Maxim A. Voltchenko, along with his colleague Lewis F. Gould, Jr. and Nicholas Holmes of Davies Collison Cave (Australia) and Dr. Alexey Vakhnin of Vakhnina & Partners — Innotec Group (Russia), organized a roundtable discussion on "Madrid Protocol 103 and Beyond — A Cross-Jurisdictional Perspective: Overview of Trademark Filing Issues from Australia, New Zealand, Russia and U.S. Perspectives" on Monday, May 7, 2012 in Washington, D.C.
- "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 Independent 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 Independent 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 (Independent Software Developers Forum) in Moscow, Russia, October 2007.
- Unauthorized Use of Someone's Trademark in Search Engine Keyword Advertising Domain Names and Related Legal Issues Presentation at ISDEF-2006 (Independent Software Developers Forum) in Moscow, Russia, October 5-8.
- IP Issues in Software Outsourcing, Featured panel presentation at the Fifth Annual Russian Outsourcing & Software Summit (ROSS-2005) in 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, Featured panel presentation at the U.S.-Russia technology conference as part of CeBIT-America in New York, May 27, 2004 and at the Fourth Annual Russian Outsourcing & Software Summit (ROSS-2004) in St. Petersburg, Russia, June 9-12, 2004.
- Doing Business Abroad: RUSSIA. Key Legal Issues and Regulations Presentation at a 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.