Marc Lieberstein is a partner with Kilpatrick Townsend. A significant part of Marc’s practice focuses on intellectual property licensing in the consumer products, industrial design and fashion areas. Marc assists clients with drafting, negotiating and enforcing such licenses, as well as implementation of branding and commercialization objectives for clients via licensing and other commercial transactions. In conjunction with the services above, Marc counsels clients on creating effective strategies for procuring, protecting and enforcing their global intellectual property assets, including patent, copyright and trademark prosecution, trademark opposition and cancellation proceedings in the United States Patent and Trademark Office, and appeals in the United States Copyright Office. Marc also provides intellectual property litigation services involving patents, trademarks and copyrights, including related e-commerce, domain name, trade secret and unfair competition services. He frequently lectures and writes on intellectual property issues for a variety of intellectual property organizations and publications, including International Trademark Association (INTA), New York State Bar Association (NYSBA) Intellectual Property Section, Wharton Business Law Association at the University of Pennsylvania, New York University, Association of the Bar of the City of New York Fashion Law Committee, Licensing Industry Merchandisers’ Association (LIMA), National Law Journal, IP Strategist and The New York Law Journal, Practical Law, The Licensing Journal.

Marc is listed in the 2012 and the four years immediately preceding editions of Chambers USA: America’s Leading Lawyers for Business for Intellectual Property: Trademark & Copyright. Chambers noted that Marc Lieberstein has "tremendous business savvy and is tenacious in his work ethic," according to his clients (2012). He was also recognized as a New York “Super Lawyer” in Intellectual Property Litigation by SuperLawyers magazine in 2013 and the four years immediately preceding, and, for the last three years, Marc was named a Top 100 New York Metro "Super Lawyer" in Intellectual Property. He is listed in the 2011, 2012, 2013 and 2014 editions of World Trademark Review 1000 – The World's Leading Trademark Professionals. In 2013, Marc received the Lexology Client Choice Guide - International 2013 Award and is the sole winner in the Intellectual Property: Copyright category for New York. He has been recognized as an "IP Star" in 2013 by Managing Intellectual Property magazine.

Since 2004, Marc provided high-level brand licensing counsel to JOSEPH ABBOUD, and played a key role in:

  • Drafting and negotiating brand license agreements that generated $88 million in royalties from 2005-2013, increased annual licensing revenue from $1 million to over $15 million, and secured additional licensing revenue from 2013 onward of $55 million.
  • Providing advice and counsel in the creation of a strong retail brand focus resulting in the growth of annual retail sales from $20 million to over $400 million.
  • Implementing a newly structured licensing program to generate $77 million in guaranteed licensing revenue with industry leading partners in the apparel area, including deals with PVH, Peerless, Onward Kashiyama, VF and direct-to-retail licenses such as JCPenney and Men’s Wearhouse.
  • Expanding the Joseph Abboud brand internationally from 3 countries to over 50 countries.

Other Representative Clients: BRYAN KEITH, PATTY MADDEN, Georgia-Pacific, Cree, Spectrum Brands, Osram Sylvania and UPS.

Professional & Community Activities

Benjamin N. Cardozo School of Law, Alumni Association Pro Bono Committee, Chair (2010-present), Alumni Association, Former Chairperson (2006-2010) and Career Development Committee, Former Chair

International Trademark Association (INTA), ADR Committee, Neutrals Standards and Measurements Sub-Committee, Chair (2014); Amicus Committee, Member (2012-2013); Law Firm Committee, Chair (2010-2011), Programs Committee, Member (2005-2010), Programs and Standards Subcommittee, Chair (2007-2010), E-Learning Committee, Member (2004), INTA Annual Meeting Project Team, Member (2003 and 2005)

New York State Bar Association, Intellectual Property Law Section, Honorary Member and Former Section Chair (2002-2004), Litigation Committee, Co-Chair (2006-present), Trademark Law Committee, Former Co-Chairperson (1998-2002)

American Bar Association, Intellectual Property Section, Member

Association of the Bar of the City of New York, Fashion Law Committee, Intellectual Property Council Representative

Hebrew Academy of Nassau County (HANC), Board of Directors (2010-present)

Young Israel of Plainview, Board of Trustees (2010-present); Former Vice President of Fundraising (2007-2008) and Little League Director (2004-present)

Education

  • Benjamin N. Cardozo School of Law, J.D. (1992)
  • State University of New York, University at Albany, B.A., History, Minor in Business (1989)
    cum laude

Bar Admissions

  • Connecticut (1992)
  • New York (1993)
  • Colorado (2005)

Admissions

  • U.S. Court of Appeals for the Federal Circuit (1995)
  • U.S. Court of Appeals for the Second Circuit (2000)
  • U.S. District Court for the Eastern District of New York (1992)
  • U.S. District Court for the Southern District of New York (1992)
  • U.S. Supreme Court (2005)

Who We Are

What fully engaged means to me:

Being fully engaged means not only being available when the client calls, but also knowing your client's business, understanding the client's short and long term objectives, and then providing cost effective legal and practical advice to best serve your client's interests.

The Grace Building, 1114 Avenue of the Americas
New York, NY, 10036-7703
USA
t +1 212.775.8781
f +1 212.937.3842

Marc A. Lieberstein

Experience Highlights

Global trademark licensing and portfolio management and enforcement for JA Apparel Corp. (dba Joseph Abboud)
The firm serves as global trademark and licensing counsel to JA Apparel Corp., a $400 million worldwide lifestyle apparel, home furnishings and more
Arbitration of international trademark licensing dispute before the American Arbitration Association on behalf of JA Apparel Corp. (dba Joseph Abboud)
Served as co-lead counsel in an international arbitration proceeding for plaintiff licensor JA Apparel Corp. against a Chinese licensee. After more
License negotiations and intellectual property counseling for Patty Madden Inc.
Represents Patty Madden Inc., a well-known wall covering designer, in drafting and conducting license negotiations in connection with branding of the more
Intellectual property litigation for JA Apparel Corp
After filing demand for arbitration, and conducting mediation, obtained favorable settlement for JA Apparel Corp., a leading men’s more