Senior Associate

Phillip Marano

email
phil@winterfeldt.law
phone
202-759-5834

Phil Marano is a senior associate at Winterfeldt IP Group, and has practiced trademark and Internet law for ten years, primarily at large global law firms.

Phillip V. Marano, a Senior Associate with Winterfeldt IP Group, has practiced at the intersection of intellectual property law and the Internet for ten years, primarily at international law firms advising global leaders in the apparel, entertainment, financial services, hospitality, insurance, luxury goods, media, nonprofit, pharmaceutical, retail, spirits, sports, technology, and telecommunications industries.     

Phil has significant experience counseling clients on all aspects of global trademark selection, clearance, prosecution, management and enforcement. He provides pre-litigation advice on trademark disputes, and litigates cancellation and opposition proceedings before the Trademark Trial and Appeal Board.  He also negotiates trademark consent and coexistence agreements, as well as all a wide array of intellectual property licenses, assignments, and marketing agreements. Prior to entering private practice, Phil conducted ex parte examinations of trademark applications filed with the U.S. Patent and Trademark Office.

Phil also regularly partners with Internet intermediaries to identify and limit liability, determine acceptable legal and compliance risk, and align legal strategies with business goals. He advises on intermediary liability for copyright and trademark infringement, and assists clients in the development of internal and external notice and takedown policies. He advises on liability and safe harbors related to, among other areas, the Federal Trade Commission Act, the Communications Decency Act, the Computer Fraud and Abuse Act, and the Digital Millennium Copyright Act. He also helps clients create requests for vendor proposals, and he negotiates a broad array of transactions with an emphasis on intellectual property and technology. Those transactions include nondisclosure agreements, master service agreements, statements of work, data and cash escrow agreements, accreditation agreements for registration authorities, website privacy policies, terms of service, abuse policies, privacy policies, and auction bidder agreements.

As the landscape online has changed dramatically over the last decade, Phil has also developed unique experience counseling clients on Internet governance matters and a wealth of knowledge about the domain name industry. He manages global domain name portfolios and recovers domain names from cybersquatters worldwide through arbitration under the Uniform Domain Name Dispute Resolution Policy and litigation under the U.S. Anti-Cybersquatting Consumer Protection Act. He develops and executes strategies for new generic Top-Level Domain objections, acquisitions and operations. And he collaborates with Internet ecosystem stakeholders to advance policy positions, and shape regulations and national legislation, concerning the Internet Corporation for Assigned Names and Numbers, having attended their international public meetings since 2010.

Accolades


Activities

  • ‍International Trademark Association (INTA), Data Protection Best Practices Subcommittee Chairperson
  • Internet Corporation for Assigned Names and Numbers (ICANN), Intellectual Property Constituency (IPC)

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