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Clark W. Lackert

Clark W. Lackert

Shareholder

Overview

Clark focuses his practice on trademark, copyright, domain name, licensing, and anti-counterfeiting matters, both in the United States and internationally. He has more than two decades of experience in all aspects of international trademark and copyright laws, including conflict and litigation cases, acquisitions and divestitures involving due diligence for intellectual property assets, licensing and franchising, enforcement actions, and global portfolio management. As part of his sophisticated international practice, he has worked with local counsel in more than 200 countries and coordinated litigation in the United States and abroad. His clients include multinational corporations, startup companies, Fortune 200 companies, and household names.

Clark is known for his thought leadership and knowledge of the field, which enables him to provide a cost-effective and strategic approach to his clients’ challenges. He is a frequent author on issues involving online liability for trademark infringers and counterfeiters, geographical indications, and famous trademarks, among other topics, and has lectured on these topics to various professional groups throughout the United States and on six continents, including to the China Trademark Association, the Brazilian Intellectual Property Association, the Institute of Patent and Trade Mark Attorneys of Australia, the AIPPI South Africa, the U.K. Institute of Trade Mark Attorneys (of which he is a long-standing member), the Japan Patent Attorneys Association, the Coalition of Intellectual Property Rights, the International Association of Intellectual Property, and many others.

He is also active in various professional associations. He is the past president of the U.S. group of the International Association for the Protection of Intellectual Property (AIPPI) and a former member of the executive committee of the board of directors for the International Trademark Association (INTA), and has chaired numerous ABA and INTA trademark and copyright committees. As an internet domain name arbitrator for the World Intellectual Property Organization (WIPO), Clark has rendered 57 published decisions and is an active member of the Intellectual Property Constituency (IPC) of the Internet Corporation for Assigned Names and Numbers (ICANN). He previously served as a consultant to the U.S. government on implementation of the World Trade Organization TRIPS Agreement concerning trademark, patent, and copyright issues.

Clark is consistently considered one of the world’s top trademark lawyers by various rankings.

All Insights

10.03.2019



06.01.2018

02.01.2018

01.01.2018

07.21.2015
ICANN 53 Global Meeting
Technology Law Dispatch

05.01.2015



11.01.2009
Pharmaceutical Trademarks - U.S.
World Trademark Review, Issue 21

09.01.2009
Non-Traditional Trademarks - U.S.
World Trademark Review, Issue 20

07.01.2009
Trademark Enforcement - U.S.
World Trademark Review, Issue 19

06.01.2009

04.01.2009
Advanced Trademark Prosecution Issues
World Trademark Review, Issue 19

03.01.2009
Internet Issues for Trademarks - U.S.
World Trademark Review, Issue 17

12.01.2008
Protection for Unregistered Trademarks - U.S.
World Trademark Review, Issue 16





04.01.2004

08.01.2003
The Madrid Protocol: Mechanics, Strategies, and Beyond
National Legal Center for Public Interest

06.01.2003
INTA and the International Courts
Trademark Reporter (INTA)


12.01.1998
Worldwide Trademark Transfers
International Trademark Association (INTA)


04.01.1998
Famous Marks
International Quarterly, Volume 10

06.01.1996
Intellectual Property Rights Reform in the Middle East
Middle East Commercial Law Review

06.01.1988

Recognition

  • The Best Lawyers in America, Litigation – Intellectual Property, Trademark Law (2007–2020)
  • WTR1000
  • New York Super Lawyers (2007–2012, 2014–2019)
  • Who's Who Legal

Professional & Community Involvement

  • International Association for the Protection of Intellectual Property (U.S. Group)
    • President (2006–2008)
    • Secretary (2001–2006)
  • International Trademark Association
    • Executive Committee of the Board of Directors
    • Chair, Amicus Brief Committee
    • Chair, Issues and Policy Committee
    • Chair, External Affairs Committee
    • Chair, Geographical Indications Committee
    • Chair, Related Rights Committee
    • Chair, Bulletin Committee
  • American Bar Association
    • Chair, Copyright and Trademark Division
    • Chair, International Trademark Committee
    • Chair, Trade Secrets Committee
    • Chair, Franchising Committee
  • American Intellectual Property Law Association
    • Editorial Board, AlPLA Quarterly Journal (2019–2022)
  • The Coalition for Intellectual Property Rights
  • Pharmaceutical Trade Marks Group
  • Pharmaceutical Research and Manufacturers of America
  • New York Intellectual Property Law Association
  • New York State Bar Association

Speaking Engagements

  • "International Trademark Law and Practice," INTA Annual Meeting, Boston, MA (2019)
  • "Global Protection for Famous Trademarks," INTA Annual Meetings (2012–2019)
  • "U.S. Trademark Law Update," IPTA conference, Perth, Australia (2017)
  • "U.S. Trademark Law Update," JPAA, Tokyo, Japan (2017)
  • "U.S. Trademark Law Update," Chofn, Shenzhen and Hangzhou, China (2017)
  • "International Searching and Filing Strategies," PLI Understanding Trademark Law in the Global Marketplace 2012, New York, NY (July 17, 2012)
  • "Global Protection for Famous Trademarks," INTA International Academy, Washington, D.C. (May 5, 2013)
  • "Special Issues in Copyright and Trademark Law," PLI IP Issues in Business Transactions 2013, New York, NY (January 3, 2013)
  • "The Right Mechanics: Trademark Searching and Clearance in a Global Environment," INTA Trademark Administrators Conference, Charlotte, NC (October 14–16, 2012)
  • "International Searching and Filing Strategies," PLI Understanding Trademark Law in the Global Marketplace 2012, New York, NY (July 17, 2012)
  • "Global Protection for Famous Trademarks," INTA International Academy, Washington, D.C. (May 6, 2012)
  • "IP Practitioner in Residence," Indiana University Maurer School of Law, Bloomington, IN (February 15, 2012)
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, London, UK (November 16, 2011)
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, Milan, Italy (November 15, 2011)
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, Milan, Italy (November 14, 2011)
  • "Online Trademark Infringements: U.S. and International Developments and Best Practices," New Jersey Trademark Counsel Luncheon Club, Basking Ridge, NJ (November 3, 2011)
  • "International Searching and Filing Strategies," PLI Understanding Trademark Law, New York, NY (July 19, 2011)
  • "Fighting Counterfeiting and Trademark Infringement in China," NYIPLA Half-Day Trademark CLE Program, New York, NY (June 14, 2011)
  • "Global Protection for Famous Trademarks," INTA International Academy, San Francisco, CA (May 14, 2011)
  • "AdWords: A Comparative Analysis," Fordham Annual IP Conference, New York, NY (April 29, 2011)
  • "EU & U.S. Trademark Dilution," Fordham Annual IP Conference, New York, NY (April 28, 2011)
  • "Handling Complex Prosecution Issues," INTA Roundtable, Irvine, CA (April 15, 2011)
  • "IP Practitioner in Residence," Indiana University Maurer School of Law, Bloomington, IN (March 29–30, 2011)
  • "The Intersection of Trademark and Copyright and the Right of Publicity," USC Gould School of Law 2011 IP Institute, Beverly Hills, CA (March 22, 2011)
  • "Global Brand Protection Against Online Infringements," Bird & Bird LLP, Milan, Italy (February 16, 2011)
  • "Global Brand Protection Against Online Infringements," ITMA London Evening Meeting, London, UK (February 15, 2011)
  • "Legal Remedies Available for Brand Owners in the United States," INTA USPTO Study Tour on IP and Enforcement for Latin American Judges, New York, NY (November 3, 2010)
  • "Global Brand Protection Against Online Infringements,"ACC-NY CLE Program, New York, NY (November 2, 2010)
  • "Trademarks," Korea Electric Association (KEA) IP Seminar, Seoul, South Korea (September 28, 2010)
  • "Trademark Law (US) Committee: Use and Abuse of Trademarks on the Internet," IPO Annual Meeting, Atlanta, GA (September 13, 2010)
  • "Global and U.S. Trademark Enforcement and Anti-Counterfeiting Issues," USPTO Global Intellectual Property Academy and the Thai Central IP and International Trade Court Seminar on Enforcement of Intellectual Property Rights, Alexandria, VA (August 16, 2010)
  • "International Searching and Filing Strategies," PLI Understanding Trademark Law 2010, New York, NY (July 20, 2010)
  • "Famous Marks Doctrine from a Global Perspective," INTA Famous and Well-Known Marks Committee, New York, NY (July 20, 2010)
  • "Challenges in Protecting Foreign GIs in the U.S. as well as AOPs in Foreign Jurisdictions," ORIGIN Conference – American Origin Products (AOP): Economic and Legal Perspectives, Washington, D.C. (June 3, 2010)

Credentials

Education
  • New York University School of Law (LL.M., Trade Regulation, 1983)
  • University at Buffalo School of Law (J.D., 1976)
  • Cornell University (A.B., cum laude, 1973)
Bar Admissions
  • New York

Background

  • Partner and Counsel, Reed Smith LLP, New York, NY (2013–2019)
  • Partner, Dickstein Shapiro LLP, New York, NY (2010–2013)
  • Partner and Deputy Practice Group Leader (IP), King & Spalding LLP, New York, NY (2001–2010)
  • UDRP Domain Name Panelist – Arbitrator, WIPO, Geneva, Switzerland (2000–present)
  • Named Partner, Nims, Howes, Collison, Hansen & Lackert, New York, NY (1981–2001)

Disclaimer

The information on this website is presented as a service for our clients and Internet users and is not intended to be legal advice, nor should you consider it as such. Although we welcome your inquiries, please keep in mind that merely contacting us will not establish an attorney-client relationship between us. Consequently, you should not convey any confidential information to us until a formal attorney-client relationship has been established. Please remember that electronic correspondence on the internet is not secure and that you should not include sensitive or confidential information in messages. With that in mind, we look forward to hearing from you.