Mark Lerner is Chair of the Trademark, Copyright, Entertainment and Advertising Division of the firm's Intellectual Property Practice Group. He practices in the area of intellectual property law. Mr. Lerner counsels clients on all facets of trademark selection, protection, enforcement and portfolio management, including clearance searches, prosecution of applications, licensing, working with ecommerce and social media platforms, and protecting client’s rights. He regularly assists clients in transactions involving intellectual property, including licenses, sponsorship agreements, work-for-hire agreements, co-branding agreements, and sale and acquisition of IP.
Mr. Lerner has represented an array of clients from startups to multinational corporations in a wide range of industries, including, publishing, advertising, consumer products, fashion, gaming, financial and insurance services, education and food services, among others.
Mr. Lerner has guided clients through litigation matters involving claims of trademark, trade dress and copyright infringement, false advertising, unfair competition, defamation, and breach of contract. He practices in federal and state courts, before the Trademark Trial and Appeal Board in both ex parte and inter parties proceedings, and before WIPO and the NAF in domain name disputes under the UDRP.
In addition, Mr. Lerner has experience in pre-publication and pre-broadcast review, sweepstakes administration, as well as website policies. Mr. Lerner’s clients laud him for his practical advice that “focuses on commercial realities” and his ability to educate his clients on both basic and complex concepts related to trademarks and copyrights. He has been called a “true mentor when it comes to the world of trademarks.”
Mr. Lerner is a 1994 cum laude graduate of New York University School of Law, where he was an editor of the competitions division of the Moot Court Board, and a graduate of Haverford College. He is a member of the International Trademark Association. He has a background in public relations and the performing arts. He lives in New York City with his husband and two children.
Areas of Practice
- Intellectual Property and Media Law
- Litigation and Dispute Resolution
Representative Matters
Represented RB Health (US) LLC in the acquisition of an IP portfolio related to the QUEEN V brand from Brandable LLC, handling negotiation of the APA and providing due diligence on the portfolio.
Successfully defended news website, Newsmax.com in obtaining dismissal under California’s anti-SLAPP statute of libel claims brought by Hollywood celebrity Andrew Keegan. The court found that Keegan could not show actual malice in connection with publication of an article regarding a government raid on his spiritual center. The decision was affirmed on appeal and attorneys’ fees awarded.
Representing Newsmax Media in a high-profile defamation and conspiracy claim stemming from reporting on the 2020 election.
Assisted Newsmax Media in closing a deal for a Program Services and Content Sharing Agreement for the licensee to launch channels in Eastern Europe under the Newsmax brand and licensing content from Newsmax.
Secured dismissal of a defamation claim against Newsmax Media brought by Dr. Jerome Corsi, an author and political commentator, on a motion to dismiss/for summary judgment brought under Florida’s anti-SLAPP law, which was granted on procedural grounds.
Representing NBCUniversal subsidiary E! NETWORKS PRODUCTIONS, LLC in connection with a copyright claim brought by a YouTube “celebrity,” Michelle Fleishman, for alleged infringement based on the use of approximately 3 seconds from an over five minute video; fully litigating this matter based on a fair use defense.
Assisting Scott Brothers Entertainment with the registration of the mark DREW & JONATHAN REVEAL in connection with the launch of a new magazine. The application for the mark was refused due to an existing REVEAL registration owned by the Center for Investigative Reporting; successfully overcame the refusal, and the mark has been approved for publication.
Admissions
- New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. Court of Appeals for the Second Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. Court of Appeals for the Tenth Circuit
Education
- New York University School of Law, J.D., cum laude
- Haverford College, B.A.
Experience
- Duane Morris LLP
- Partner, 2020-present - Satterlee Stevens LLP
- Partner, 1994-2020
Honors and Awards
Listed in The Best Lawyers in America, 2024
- Listed in World Trademark Review 1000 list of the World's Leading Trademark Professionals, 2022-2024
- Listed in New York Metro Super Lawyers, 2018-2021
Professional Activities
International Trademark Association
American Bar Association
Civic and Charitable Activities
- Vice President, Vineyard Theatre Board of Directors
Selected Publications
- Co-author, "The Trademark Modernization Act One Year On: New Tools and Takeaways," World Trademark Review, June 30, 2023
- Quoted, "Ron Desantis Is Targeting the Free Speech Protections That Might Save Fox News," CNN.com, March 29, 2023
- Co-author, "U.S. Patent and Trademark Office Implements Trademark Modernization Act, Paving the Way to Clear the Federal Register," Duane Morris Alert, November 23, 2021
- Co-author, "U.S. Trademark Office Offers New Tools Against Registrations Granted Without Use in Commerce," Duane Morris Alert, January 25, 2021
- Co-author, "New Copyright Claims Board May Have Limited Appeal," Duane Morris Alert, January 19, 2021 (republished in Intellectual Property & Technology Law Journal, May 2021)
Selected Speaking Engagements
- Presenter, "Major Stories in Media Law Over the Course of the COVID-19 Pandemic and Recovery," Duane Morris COVID-19: Navigating Forward Webinar Series, May 20, 2021
- Panelist, "TRAPS IN THE COURT OF PUBLIC OPINION: Ethical, Legal and Practical Considerations for Lawyers When Communicating with the Media and Public," Association of Corporate Counsel, May 12, 2021