JEFFREY (JEFF) H. KAUFMAN, Chair of the firm's Trademark and Copyright practice groups and a member of the firm's Management Committee, practices primarily in the areas of trademark, copyright, and unfair competition law, with an emphasis on counseling and assisting clients in protecting their intellectual property and combating counterfeits.
A former trademark attorney with the United States Patent and Trademark Office (USPTO), Mr. Kaufman applies his insider's perspective and deep knowledge of trademark practice when representing a broad range of international and domestic clients before the Trademark Trial and Appeal Board (TTAB) and when asserting their rights in federal district courts.
Mr. Kaufman advises clients on a broad range of concerns including trademark and copyright issues, the interplay of various forms of IP protection, and preservation of trade secrets. A respected authority on Internet law, Mr. Kaufman represents many companies engaged in e-commerce and possesses extensive experience in domain name and Internet-related intellectual property issues. He has been actively involved in the development of laws relating to domain name issues and trademarks, serving as an early member of the International Trademark Association's special task force on Internet Domain Names, later becoming Chair of the subcommittee that worked with the U.S. government and Congress. He also participated in the evolution and creation of the Internet Corporation for Assigned Names and Numbers (ICANN).
The Arbitration and Mediation Center of the World Intellectual Property Organization and the National Arbitration Forum have both named Mr. Kaufman as a panelist and arbitrator for resolution of domain name disputes under the ICANN Uniform Domain Name Dispute Resolution Policy.
Mr. Kaufman served as the first Chair of the American Intellectual Property Law Association's (AIPLA) Committee on Anti-Counterfeiting and Anti-Piracy. He presently serves as Chair of its Subcommittee on Legislation.
Mr. Kaufman has been chosen by Euromoney's Legal Media Group as one of the world's leading trademark law practitioners. He lectures and writes on issues relating to intellectual property, including trademarks in cyberspace and Internet law-related topics. Previously, he served on the editorial board of the International Trademark Association's Trademark Reporter.
Professional Affiliations
American Bar Association, Section of Patent, Trademark and Copyright Law, Subcommittee Chair, Trademark Automation (1987 - 1989)
American Intellectual Property Law Association (AIPLA), former Chair of Anti-Counterfeiting and Anti-Piracy Committee
Association Internationale Pour la Protection de la Propriété Industrielle (AIPPI)
The District of Columbia Bar
European Communities Trade Mark Association
International Trademark Association (Subcommittee Co-Chair, Legislation Implementation (1988); Internet Domain Name Committee (1994); Subcommittee Chair, Government Affairs, 1997); Trademark Reporter Editorial Board
ISL Law Review, Board of Editors (1976 -1977)
Maryland State Bar Association
Virginia State Bar
Accolades
Martindale-Hubbell® AV® Preeminent™ 5.0 out of 5
Recognized by Euromoney's Legal Media Group as one of the world's leading trademark law practitioners
Trade Mark Law Practitioner Expert (biennial survey: 2000, 2002, 2004, 2006, 2008, 2010)
World Trademark Review (WTR) 1000 (2011, 2012)
Resources
News
World Trademark Review Ranks Oblon Spivak a Top Trademark Firm; Three Partners Named Leading Trademark Professionals
Monday, April 9, 2012
U.S. District Court for the Eastern District of Michigan Rules in Favor of Oblon Spivak Client Paralyzed Veterans of America
Wednesday, April 4, 2012
Oblon, Spivak's Jeffrey Kaufman Quoted in Westlaw Regarding the Bill Imposing Duties on China for IP Rights Violations
Monday, February 13, 2012
Oblon Spivak's Jeffrey Kaufman Quoted in Intellectual Property Watch Regarding the Effect of ICANN's Decision to Allow New Words or Phrases to Become TLDs
Friday, January 20, 2012
Oblon, Spivak's Jeffrey Kaufman Quoted in SupplyChainBrain Regarding the Proposed House Bill That Imposes Duties on China
Wednesday, December 28, 2011
Oblon, Spivak's Jeffrey Kaufman Quoted in World Trademark Review Blog
Monday, November 14, 2011
Oblon, Spivak Creates TTAB Rules Blog in Response to New TTAB Rules Proposal
Wednesday, March 8, 2006
Oblon, Spivak's Moot Court Room Featured on the March 2005 Cover of The Lawyers Magazine
Thursday, March 31, 2005
Oblon, Spivak Announces Appointment of its Members as Internet Domain Name Dispute Arbiters
Monday, May 1, 2000
Oblon, Spivak's Trademark Practice Group Responds To World Intellectual Property Organization's (WIPO) Request For Comments On Internet Domain Names
Monday, March 1, 1999
Publications
Best Practices for Taking Action Against Counterfeit Goods: A Case Study
Wednesday, June 23, 2010
Protection of famous marks under new dilution act
Wednesday, March 26, 2008
Making Sense of the Internet - A Roundtable Discussion
Tuesday, April 17, 2007
Stop Counterfeits At The U.S. Border
Thursday, April 20, 2006
The Use of U.S. Customs to Enforce the Client's IP Rights
Sunday, October 30, 2005
Europe's One-Stop Trademark Shop
Tuesday, July 1, 1997
The Federal Dilution Act Celebrates Its One Year Anniversary
Monday, April 7, 1997
The New European Community Trademark (CTM): An Outline for Consideration
Monday, January 1, 1996
Policies Covering Advertising Injuries May Prove To Be Of Limited Benefit
Sunday, January 1, 1995
Events
INTA Annual Meeting 2011
Saturday, May 14, 2011 - Wednesday, May 18, 2011
132nd Annual Meeting
Saturday, May 22, 2010
2009 Annual Meeting
Thursday, October 15, 2009
2009 Spring Meeting
Wednesday, May 13, 2009
41st World Intellectual Property Congress
Saturday, September 6, 2008
Spring Meeting
Wednesday, May 9, 2007
2005 Annual Meeting
Thursday, October 27, 2005
Presentations
The Use of U.S. Customs to Enforce the Client's IP Rights
Sunday, October 30, 2005
The New Top Level Domains
Monday, October 1, 2001
Protection of E-Marks: Domains and Trademarks
Tuesday, May 1, 2001
Blog
Copyright Office Issues Priorities for Coming Two Years
Tuesday, November 01, 2011
The Register of Copyrights of the U.S. Copyright Office has issued a list of priorities for the next two years regarding copyright policy and administrative practice. The paper, Priorities and Special Projects of the United States Copyright Office is ...
Patsy's: FOOD FIGHT!
Friday, September 02, 2011
The U.S. Court of Appeals for the Second Circuit upheld the District Court's decision that neither Patsy's Italian Restaurant nor Patsy's Pizzeria, located in New York City, has exclusive rights to the name PATSY'S. The Court noted that this was the culmination of a...
Update: Louboutin Request for Preliminary Injunction Against Yves Saint Laurent America Denied
Thursday, August 18, 2011
As previously discussed here Christian Louboutin S.A. ("Louboutin") sought a preliminary injunction to prevent Yves Saint Laurent America, Inc. ("YSL") from marketing any shoes that use the same or a confusingly similar shade of red as...
Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases
Tuesday, July 12, 2011
The USPTO today published a notice in the Federal Register regarding a proposed rule change, entitled "Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases". Click...
Trademark Bullying
Thursday, May 12, 2011
"Trademark Bullying" -- USPTO reports it is unclear whether big companies are bullying smaller companies using unreasonable litigation tactics, or the threat of expensive litigation, but recommends "private sector" involvement in resolving this potential issue.
Trademark Owner Files Lawsuit Over Red-Soled Shoes
Tuesday, April 12, 2011
Seeking an injunction and damages, Christian Louboutin S.A. recently sued Yves Saint Laurent America, Inc. (YSL) in the Southern District of New York for trademark infringement and counterfeiting of Louboutin's red-soled shoes. Click on the above link to read more about this case.