Mitchell C. Stein

Representative Client Work

• Represents software and technology companies in negotiating licenses and business partnerships with leading IT and consulting such as Microsoft, Hewlett-Packard and IBM
• Advises start-up technology and software companies regarding intellectual property rights protection and licensing
• Advises retail food manufacturers regarding trademark and advertising issues, and helped such companies negotiate U.S. and North American distribution agreements
• Represents various clients regarding U.S. trademark registration applications and disputes arising in U.S. trademark office
• Obtained an injunction on behalf of a landmark New York City restaurant preventing the opening of a competitor's restaurant using an infringing name
• Successfully defended a retail food manufacturer in a packaging trade dress infringement suit brought by Kellogg North America Company 
• Successfully represented a leading manufacturer of natural enzyme and phosphate removal products for use in pools, Jacuzzis and spas in settling a patent infringement action against a competitor
• Represented leading designer of premium jeans in connection with nationwide intellectual property enforcement campaign
• Defended apparel distributor and various national and regional department store chains in connection with trademark and copyright infringement suit brought by belt designer
• Represented jewelry designers in connection with the protection of their intellectual property rights and in negotiations with leading home shopping networks
• Conducted nationwide intellectual property protection and enforcement programs, and handled related litigation, on behalf of, among others, Tiger Woods, Arnold Palmer, Jack Nicklaus and their licensing entities, as well as Comedy Partners (South Park), and NCP Marketing Group, Inc. (Tae Bo)
• Served as outside general counsel to direct marketing companies, with responsibilities including day-to-day handling of all licensing, distribution and telemarketing-related agreements and principal responsibility for handling all litigation and arbitrations, including defense of class action lawsuit
• Participated in developing municipal licensing programs for the benefit of the New York City Police and Fire Departments
• Part of team handling representation of Bank Austria in connection with various complex U.S. litigations arising out of the Bernard Madoff Ponzi scheme 
• Represented American marine mutual indemnity and protection insurance club in complex declaratory judgment action against former club members regarding club's obligations to indemnify former members for asbestos and other occupational disease claims

Bar & Court Admissions

• New Jersey, 1988
• New York, 1989
• U.S. District Court, District of New Jersey
• U.S. District Court, Eastern District of New York
• U.S. District Court, Southern District of New York
• U.S. District Court, Western District of Michigan
• U.S. Court of Appeals for the Second Circuit

Publications

• Why President's Day Sales Don't Picture Ronald Reagan, American Public Media's "Marketplace" (February 18, 2013)
• Legalized Poker in the United States?, Poker Pro October 2012
• Design Protection Law Searches for the Right Pattern, IPRinfo (March 2012)
• Making Your Mark, Manhattan Chamber of Commerce's "Business Matters" Winter 2012
• Challenges Await Brand Owners, ICANN, As ICANN Moves Forward With gTLD Program, Washington Internet Daily, Quoted (December 23, 2011)
• Bank Austria Fights Madoff Trustee's Fraud Claims, Securities Law360 and Bloomberg (July 27, 2011)
• New Top-Level Domain Names Worry Intellectual Property Industry, Washington Internet Daily, Quoted (March 29, 2011)
• Stephen Colbert vs. Arianna Huffington: What Their Spat is Really About, The Christian Science Monitor, Quoted (February 18, 2011)
• Rhode Island’s Twin River Racino Looks For Online Rescue, GamblingCompliance, Quoted (February 1, 2010)
• Will Fantasy Sports Always Be Exempted From Gambling Laws? Don't Bet On It, Sports Litigation Alert (August 28, 2009)

Client Advisories

• Second Circuit Muddies DMCA "Safe Harbor" Provisions
• Keep Your Trademarks Out of the New Internet “Red Light” District
• Innocence is No Defense: Case Spotlights the Burden on the Owner
• Key Copyright Case Highlights Pitfalls of Appropriative Art
• U.S. and E.U. Court Decisions Uphold Internet Gambling Restrictions
• Facebook Username Functionality Creates Risk of Trademark Infringement
• Federal Court Affirms News Wire Services' Rights in "Hot News" under New York Law

Speaking Engagements

• "Pirates and Protocols: Trademark Use and Enforcement on the Internet," Association of the Bar of the City of New York (March 18, 2009)

Awards & Honors

• AV Rated, Martindale-Hubbell Law Directory

Professional & Civic Activities

• Bar of the City of New York

Education

• J.D., magna cum laude, Boston University School of Law, 1988
• B.A., magna cum laude, Tufts University, 1984