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 numerous 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. 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 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.).
•Duane Morris LLP
- Associate, 1999, Foreign Legal Consultant, 2003-2005; Associate, 2005 - 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
Selected Speaking Engagements
•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.
•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.