Principal

Brian J. Winterfeldt

email
brian@winterfeldt.law
phone
202-759-5833

Brian J. Winterfeldt, the Founder and Principal of Winterfeldt IP Group, has practiced trademark and Internet law for nearly two decades.

Building on his years of experience in large, global law firms, Brian has brought his vision to life, creating a firm dedicated exclusively to providing organizations and individuals with to the highest caliber trademark and Internet-related legal and policy services.  Brian has assembled a team of top talent that provides a personalized, concierge-style client service experience at an exceptional value.  

Legal Practice

Brian advises clients on the creation of global trademark and branding strategies. He also develops programs to register and enforce clients’ intellectual property rights and protect against infringement of their trademarks and other branding elements in the US and internationally, including domestic and international trademark counseling, clearance, prosecution and enforcement. In addition, Brian advises clients on trade dress, copyright, Internet governance and domain name issues, including domain name disputes such as Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension System (URS) complaints, and other similar processes for country code top-level domains (ccTLDs), to disable or recover infringing domain names. He regularly counsels global leaders across a broad variety of industries.

Industry Experience

  • Apparel and Footwear
  • Consumer Products
  • Entertainment and Media
  • Financial Services
  • Food and Beverage
  • Health & Fitness
  • Hospitality
  • Insurance
  • Internet and Technology
  • Luxury Goods
  • Nonprofit/Charitable Organizations
  • Pharma
  • Retail
  • Spirits
  • Telecom

Brian has developed one of the leading practices specializing in advising on evolving Internet issues, and is an expert on the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) new generic top-level domain (gTLD) program.  Surrounding the 2012 new gTLD application round, his practice participated in drafting and prosecuting over 200 applications for new gTLDs, representing over 10% of the total applicant pool, and has continued to support new gTLD applicants and operators, particularly brand owners, by negotiating related agreements and advising them on the legal and policy work needed to support their registries. He also represented both applicants and objectors in dozens of new gTLD objection proceedings, and advises new gTLD operators on ongoing ICANN compliance matters. Brian counsels clients on preparing for future new gTLD application rounds, including selection of potential gTLD strings and guidance on ongoing policy matters affecting brand owner new gTLD operators.

As the new gTLD program has changed the Internet landscape significantly, Brian also develops advocacy and enforcement strategies in this space for brand owners, including advice surrounding registration of trademarks in the Trademark Clearinghouse (TMCH) and assessment of domain name portfolio management strategies, including both proactive domain name registrations and enforcement against infringing registrations, in light of the influx of new gTLDs. Brian and his team diligently track ICANN policy matters affecting brand owners on the enforcement side, such as developments relating to rights protection mechanisms, and counsel clients on relevant advocacy opportunities. He is a member of ICANN’s Intellectual Property Constituency (IPC), which serves as a voice for brand owner concerns in Internet policy development. He has held leadership roles within the IPC for several years, including serving four years as a representative for the IPC on ICANN’s Generic Names Supporting Organization (GNSO) Council, the body that creates global domain name policy, as well as previously serving as IPC Treasurer.

In addition, Brian regularly counsels clients and provides training on cutting edge Internet issues such as social media platforms, including developing and administering social media policies and promoting and protecting clients’ brands in this ever-evolving space. He supports clients by managing takedowns of infringing profiles and content, while advising on proactive uses of social media that can strengthen online brand presence.

As a prominent voice in the IP arena, Brian has written numerous articles on trademark law and is a frequent speaker at industry events on topics such as trademark law, Internet governance and social media. He has been an active member of the International Trademark Association (INTA) throughout his entire legal career, and has served in leadership roles for much of that time, culminating with currently serving a three-year term on INTA’s Board of Directors. His prior INTA experience includes leadership roles on the Internet Committee, serving on several INTA conference project teams including as a co-chair, and receiving various INTA service awards.

Brian was also recently appointed by the Commissioner of the United States Patent and Trademark Office (USPTO) to serve a three year term on the Trademark Public Advisory Committee (TPAC) for the USPTO.  TPAC is comprised of top trademark practitioners from in-house and private practice, who serve in an advisory capacity to assist the USPTO with all aspects of its Trademark activities, including registration, policy, technology and budgets.

Diversity & Inclusion

In addition to his IP practice, Brian is a leading advocate for diversity and inclusion in the legal industry. Throughout his career, Brian has participated actively in diversity-related legal organizations such as the Institute for Inclusion in the Legal Profession (IILP), for which he has published articles and spoken at several symposia, the Minority Corporate Counsel Association (MCCA), and the LGBT Bar, for which he has chaired an Intellectual Property Law Institute during the organization’s annual Lavender Law conference for the past several years. His support of the diversity community also includes pro bono services for organizations focused on women’s issues and persons with disabilities, and he has both organized and hosted diversity-related panels and participated as a speaker in clients’ diversity events.

Brian currently serves on the Board of Directors for The Trevor Project, the leading provider of suicide prevention and crisis management services for lesbian, gay, bisexual, transgender and questioning youth in the United States, and sits on the Executive Committee for Trevor as Secretary for the organization.  Brian also was awarded the prestigious Rainmaker Award by the Minority Corporate Counsel Association in 2013, an award given to only 15 diverse partners in the United States who distinguish themselves by being leading practitioners with robust practices.  

Pro Bono

Strong brand protection is important for all organizations, particularly when they are providing critical, or even lifesaving, services to benefit their local communities. However, nonprofit and charitable organizations may have limited budgets for legal services. As such, throughout his career, Brian has demonstrated a commitment to pro bono service, with a particular commitment to organizations serving diverse populations. Pro bono clients of the practice have included organizations providing services to: LGBTQ members of the community, including youth; women and girls seeking leadership opportunities; persons with disabilities; and sexual assault survivors. Clients also include arts, cultural, and environmentally-oriented organizations. Pro bono services may include the full range of Winterfeldt IP Group legal services, including trademark counseling and prosecution, enforcement, domain name management and enforcement (including in connection with the new gTLD program), social media counseling and enforcement, and transactional/agreement matters. Brian was awarded INTA’s 2014 Volunteer Service Award for Pro Bono Services, largely in connection with his extensive pro bono work for diversity-related organizations.  

Accolades

  • 2017-2018
    Chambers Ranked Attorney for Trademark,Copyright and Trade Secrets
  • 2017
    National Law Journal IP Trailblazer
  • 2011–2018
    World Trademark Review (WTR) 1000 Ranking the World’s Leading Trademark Practitioners; Gold for Prosecution and Counseling (Washington DC); Gold for New gTLDs (Nationally)
  • 2012-2018
    Euromoney Guide to the World's Leading Trade Mark Law Practitioners
  • 2011
    International Trademark Association Volunteer Service Award for the Advancement of Committee Objectives
  • 2011
    National LGBT Bar Association, Best LGBT Attorneys Under 40
  • 2013
    Minority Corporate Counsel Association, Rainmaker
  • 2011–2018
    Who's Who Legal: Trademarks
  • 2014–2018
    Managing Intellectual Property, IP Star (New York)
  • 2018
    Expert Guides Ranked - The World's Leading Lawyers Chosen by Their Peers for Trademark


Activities

  • United States Patent and Trademark Office Trademark Public Advisory Committee (TPAC)
  • American Apparel & Footwear Association (AAFA), Brand Enforcement Council
  • International Trademark Association, Board of Directors and Special Advisor to the Internet Committee
  • Internet Corporation for Assigned Names and Numbers, Member of the Intellectual Property Constituency (IPC)
  • MARQUES (European Trademark Association)
  • National LGBT Bar Association, Chair of the IP Law Institute 2014-present
  • BNA Electronic Commerce & Law Report, Advisory Board
  • The Trevor Project, Board of Directors, Secretary and Member of the Executive Committee
  • International AntiCounterfeiting Coalition
  • Member of New York City Bar Association

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