Mark Lerner

Partner

  • Mark Lerner
  • Phone: +1 212 404 8714

    Import to Address Book

  • Duane Morris LLP
    230 Park Avenue, Suite 1130
    New York, NY 10169-0079
    USA
  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA

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

    Selected Court Litigation/Claims Defense/TTAB Proceedings

  • Scentsible LLC v. Reckitt Benckiser LLC, 16-cv-00658 (N.D. Tex.): Represented Defendant in trademark and trade dress suit concerning the spray for controlling toilet odors.

  • Andrew Keegan Heying v. Newsmax Media, Inc., Case No. SC124897 (Ca. Superior Court): Successfully defended Newsmax in obtaining dismissal under California’s anti-SLAPP statute of libel claims brought by Hollywood celebrity Andrew Keegan for article published on Newsmax.com. The decision was affirmed on appeal and attorneys’ fees awarded.

  • Michelle Fleishman v. E! Networks Productions, LLC, 20-civ-02309 (S.D.N.Y.): Represented NBCUniversal subsidiary E! Networks Productions 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.

  • Wade v. NBCUniversal Media, LLC, 20-cv-0075 (S.D.N.Y.): Represented defendant in copyright infringement claim concerning alleged unlicensed use of photograph.

  • Smartmatic USA Corp. et al. v. Newsmax Media Inc., C.A. No. N21C-11-028 (Del. Superior Ct.); US Dominion, Inc. et al., v Newsmax Media Inc., C.A. No. N21C-08-063 (Del. Superior Ct.):  Represented Newsmax Media in a high-profile defamation and conspiracy claim stemming from reporting on the 2020 election.

  • Jerome Corsi v. Newsmax Media Inc., 20-CV-81396 (S.D. FL):  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.

  • Sands v. Papaya Holdings, LLC, 20-cv-4079 (S.D.N.Y.): Represented defendant in copyright infringement claim concerning alleged unlicensed use of photograph.

  • Polaris Images Corp. v. Oxygen Media, LLC, No. 1:19-cv-9287 (S.D.N.Y.): Represented defendant in copyright infringement claim concerning alleged unlicensed use of photograph in website article.

  • Anthony Causi v. Fansided Inc. 19-cv-09325 (S.D.N.Y.): Represented defendant in copyright infringement claim concerning alleged unlicensed use of photograph.

  • Strange Victory Inc. v. NBCUniversal Media, LLC, 23-cv-05289 (S.D.N.Y.): Represented defendant in copyright infringement claim concerning alleged unlicensed use of photograph on Late Night with Seth Meyers.

  • Represented magazine custom publisher in settling claim that travel guide’s use of photograph of individuals violated rights of publicity.

  • Represented sports fan website in resolving claims of trademark infringement by sports leagues in connection with sale of clothing connected to website.

  • Represented premiere retail book subscription service in enforcement of its trademark against infringing uses.

    • Selected Trademark Trial and Appeal Board Inter Parties Proceedings

  • Reckitt Benckiser LLC v. Shandong Yunze Electronic Commerce Co., Ltd., Opposition No. 91288308: Represented Opposer manufacturer of LYSOL in successful opposition to mark LYZOLICS before the TTAB.

  • LRC Products Limited v. Alva-Amco Pharmacal Companies, LLC, Opposition No. 91286942: Represented Opposer manufacturer of DUREX brand condoms and sexual health products against applicant for DIUREX supplements.  A mutually acceptable settlement was reached.

  • Reckitt Benckiser Health Limited v. Bad Dragon Enterprises, Inc., Opposition No. 91285124: Represented Opposer manufacturer of K-Y brand lubricants and sexual health products applicant for KY’EL sex toy products. A mutually acceptable settlement was reached.

  • RB Health (US) LLC v. Veronica Velez, Opposition No. 90447200. Represented manufacturer of QUEEN V women’s intimate health products against applicant for QUEEN VEE.

  • A La Mode Shoppe Inc. v. American Fruits and Flavors, LLC, Cancellation No. 92075308. Represented ice cream retailer in successful cancellation proceeding.

  • The a2 Milk Company Limited v. Mead Johnson & Company LLC, Opposition No. 91256426: Represented defendant/applicant in opposition by manufacturer of a2 milk products regarding application for ENFAMIL A2. A mutually acceptable settlement was reached.

  • Wolverine Outdoors, Inc. v. Bounce Leisure Ltd., Opposition No. 86596300: Defended applicant entertainment and hospitality venue in opposition proceeding. A mutually acceptable settlement was reached permitting registration of the client’s mark.

  • Gado S.r.l. v. Jay-Y Enterprise Co. Inc., Cancellation No. 92047433: Represented manufacturer of DG (Dolce & Gabbana) sunglasses in successful cancellation petition against sunglass manufacturer on grounds of likelihood of confusion.

    • Transactions/Counseling

  • 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.

  • Represented Oasis Foods/AAK in acquisition of patent and trademark portfolio from Fora Foods Co.

  • Represent Westminster Kennel Club in connection with annual sponsorship agreements for the annual Westminster Dog Show.

  • 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.

  • Routinely assist in due diligence, structuring of representations and warranties, and assignments for transactions involving intellectual property assets.

  • Routinely advise clients on sweepstakes compliance issues.

    • Portfolio Management

  • Manage U.S. clearance and prosecution practice for Fortune 500 consumer products company.

  • Manage international trademark portfolio for print and digital publisher of consumer magazines.

  • Manage international portfolio for major business-to-business directory and lead generation company.

  • Manage trademark portfolio for premiere book subscription service. 

  • Manage trademark portfolio for producer of oldest dog show in the United States.

  • Manage trademark portfolio for commercial food producer.

  • Manage international trademark portfolio for non-profit organization dedicated to protecting waterways.

  • Manage U.S. portfolio for educational publisher and university.

  • Manage U.S. portfolio for transportation hub retailer.

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

Selected Speaking Engagements

  • Speaker, "Practical Impacts of Recent FTC Updates," Association of Corporate Counsel, September 12, 2024
  • 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