Sheldon is a principal at Gray Plant Mooty and a member of the firm's Intellectual Property, Technology & Privacy team, and the Litigation and Franchise & Distribution practice groups. He has significant experience in counseling, portfolio management, litigation, licensing, and transactions in the areas of trademark, copyright, unfair competition, and advertising law. Sheldon assists clients with a wide range of issues, including selection, clearance, and registration of new trademarks. He conducts IP audits and due diligence investigations and enforces IP rights via federal district court litigation, appellate litigation, and opposition and cancellation proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and foreign trademark offices.
Sheldon represents clients in a variety of industries, including franchise, internet/e-commerce, advertising, telecommunications, broadcast, entertainment, manufacturing, building, food, pharmaceutical, medical device, banking, insurance, and hospitality. He also serves as a trademark law expert in litigation and arbitration.
Experience
- Obtained declaratory judgment of trademark non-infringement on behalf of a major Washington-based trade association after a threat by a key competitor just prior to launch of a major rebranding effort
- Obtained relief for a major U.S. furniture manufacturer from rampant imports of counterfeit goods via litigation, U.S. Customs seizure/destruction of goods at their port of entry and at retail locations in multiple states, and seizure/destruction of goods at their point of manufacture in Taiwan
- Obtained summary judgment, upheld on appeal (Ninth Circuit), against terminated franchisee who continued to use part of a famous international franchisor’s trademark
- Obtained relief from multiple copyright infringements for the creator of a famous graphic work via litigation, and for the owner of a famous sculptural work via negotiation
- Obtained relief for Israeli operator of popular start-up social network/e-commerce Web site from multiple clone sites via cease and desist letters and DMCA takedown notices
- Advised offshore operator of auction Web sites on trademark, copyright, and content issues
- Handled multiple deceptive advertising cases on behalf of a major U.S. telecommunications company and a multinational medical device manufacturer in arbitration before the National Advertising Division of the Council of Better Business Bureaus
- Conducted copyright audits for a famous U.S. author, choreographer, and others
- Resolved a longstanding trademark dispute among two major nonprofit organizations via a creative licensing agreement
Publications
- “Protect Your Brand From Potential Harm In The ‘.XXX’ Domain Name Space,” Gray Plant Mooty IP Alert, September 2011
- “A Key Victory for Keyword Advertising Programs: The Ninth Circuit’s Decision in Network Automation, Inc. v. Advanced Systems Concepts, Inc.” coauthor, IPLaw360, March 17, 2011
- “U.S. Courts Continue to Differ on the ‘Issue of Use’ in the Context of Search Engine Keyword-Triggered Advertising,” coauthor, Trademark World, December/January 2007
- “Use of Trade Marks in Hyphen-triggered Search Engine Advertising: A Hot Topics in Internet Law,” coauthor, Metropolitan Corporate Counsel, May 2005, June 2005
- “The Role of Trade Mark Use in U.S. Infringement, Unfair Competition, and Dilution Proceedings,” chapter coauthor, Trade Mark Use, Oxford University Press, 2005
- “Practice Pointers Protecting Company and Trademark Nicknames,” coauthor, The Intellectual Property Strategist, June 2002
Presentations
- “Advanced Seminar on Trademark Law,” Practising Law Institute, 2007-2012
- “Rosetta Stone, Inc. v. Google, Inc.” Law Seminars International Telebriefing, 2011
- “Is the N.A.D. the Right Forum for You?” AIPLA Webinar, 2010
- “Trademark Boot Camp,” AIPLA, 2009, 2010
- “Legal Considerations in Selecting, Protecting, & Using Brand Names,” BrightTALK Live and On Demand Webinar, www.brighttalk.com, 2010
- “Understanding Trademark Law,” Practising Law Institute, 1995-2009
- “Trademark Declaratory Judgment Actions—Using the Bazooka While Avoiding the Landmines,” Practising Law Institute, 2010
- “Arguing Advertising Disputes Before the N.A.D.,” AIPLA Spring Meeting, 2009
- “Hot ICANN/Domain Name/Trademark Topics,” Intellectual Property Law Association of Florida, 2008
- “Viacom Intl., Inc. v. YouTube, Inc.,” C-SPAN interview on The Communicators, 2007
- “Keyword Triggered Advertising/Sponsored Links,” INTA Annual Meeting, 2007
- “Hot Internet Trademark Topics,” INTA Annual Meeting, 2006
- “Potential Trademark Conflicts Arising from Aggressive Internet Marketing,” AIPLA Mid-Winter Institute, 2005
- “Trademarks and Keywords, and Other Hot Internet/Trademark Topics,” AIPPI Israel Chapter, 2004
- “Opposition and Cancellation Actions/TTAB Practice,” INTA Trademark Administrator’s Conference, 2003
- “U.S. Discovery Tools,” INTA Annual Meeting, 2002
- “Trademarks and the Internet: Recent Developments,” Michigan State Bar IP Law Section Annual Meeting, 2001
- “Music on the Internet,” Practising Law Institute, 2001
- “The Digital Millennium Copyright Act,” Intellectual Property Institute of Canada Annual Meeting, 2000
- “Advanced Practice Before the Trademark Trial and Appeal Board,” INTA, 1995, 1997, 1999
- “Trade Dress Protection,” AIPLA Spring Meeting, 1995
Education
- George Washington University National Law Center, J.D., with honors, 1980
University of Michigan, B.A. in History and Near Eastern Studies, with distinction, 1977
Bar Admissions
- District of Columbia
- Maryland
- U.S. Court of Appeals for District of Columbia, Fourth, Sixth, and Ninth Circuits
- U.S. District Court, District of Columbia
- U.S. District Court, Eastern District of Michigan
- U.S. District Court, Maryland
- U.S. Supreme Court
Professional Activities
- American Intellectual Property Law Association, former officer and board member; AIPLA Fellows, current chair; Trademark Leadership Group, member; Franchise Law Committee, past chair; Trademark Law Committee, past chair; Trademark/Internet Committee, past chair; Trademark Relations with the U.S. Patent and Trademark Office, past chair
- Bar Assn. of DC, Patent, Trademark & Copyright Section, past chair
- DC Law Students in Court Alumni Association Steering Committee
- Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN)
- International Trademark Association, Internet Issues Committee
U.S. Patent and Trademark Office, Trademark Public Advisory Committee, past member
Honors and Distinctions
- Leading Trademark Lawyer, The International Who’s Who of Business Lawyers, 2007-2013
- “Leading Trademark Lawyer,” World Trademark Review 1000, 2011-2012
- “Best Lawyer” in Intellectual Property, Washingtonian, 2011
- AV® Preeminent™ Peer Review Rated from Martindale-Hubbell
Community Involvement
- American Association of Jewish Lawyers & Jurists, Board of Governors; past president of DC Chapter
- Jewish Community Relations Council of Greater Washington, Board of Directors
- Jewish Federation of Greater Washington, “The Network,” Steering Committee
- Legal Aid Society of the District of Columbia, pro bono volunteer
- Melvin J. Berman Hebrew Academy of Greater Washington, Board of Trustees