Marc Lieberstein is a partner with Kilpatrick Townsend. Marc focuses his practice on intellectual property licensing and franchising in the commercial and industrial design area, e.g., fashion/apparel and accessories, and consumer products and services, including the drafting, negotiation and enforcement of license and franchise agreements, as well as implementation of branding and commercialization objectives for clients via licensing and franchising. In conjunction with the services above, he counsels clients on creating effective strategies for procuring, protecting and enforcing their global intellectual property assets, including due diligence services, patent, copyright and trademark prosecution, 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. He has also effectively utilized alternative dispute resolution in the form of arbitration and mediation to enforce the intellectual property rights of brand owners. Marc 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 by Super Lawyers magazine in 2015 and the five years immediately preceding, and, for the last five years, Marc was named a Top 100 New York Metro "Super Lawyer" in Intellectual Property. He is listed in the 2016 and the five years immediately preceding 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, 2014 and 2015 by Managing Intellectual Property magazine. Marc was recommended by Legal 500 US in 2015 for Copyright.
The International Trademark Association (INTA) honored Marc with the Volunteer Service Award (VSA) in the Advancement of Committee or Subcommittee Objectives category. The VSAs recognized Marc in 2015 for providing exemplary volunteer service to INTA. As a member of INTA’s Alternative Dispute Resolution Committee’s Neutral Standards & Measurement Subcommittee, Marc made a tremendous impact by volunteering both his time and expertise to support the Association’s goals and objectives. Marc is a recipient of the 2015 Commitment to Justice Award presented by Her Justice recognizing his pro bono work in representing a client who sought help in terminating her arranged marriage. Through skillful negotiation, without any court intervention, Marc secured for the client a divorce on terms very favorable to her and to her children. He is a recipient of the Kilpatrick Townsend 2014 Pro Bono Justice Award. Marc is also a recipient of the 2015 Cardozo Law School Alumni of the Year Award recognizing Marc's leadership and dedication to Cardozo Alums and students.
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: JOE FRESH, BRYAN KEITH, PATTY MADDEN, BILLY REID, ENERGIZER, 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)