Elizabeth Atkins

Ms. Atkins practices in the area of intellectual property law with an emphasis on international trademark matters, administrative proceedings and trademark counseling. She has extensive experience in planning and handling worldwide trademark portfolios for large multinational corporations, including related acquisitions, trademark policing, licensing, dispute settlement and worldwide clearance of marks. Ms. Atkins has extensive experience in domain name matters, including UDRP and NAF actions.

Her arguments led to an amendment of the U.S. Lanham Act (see representative matters below). At the time of implementation of the Madrid Protocol in the USA, she was a frequent lecturer on the Madrid System and published an article for the Association of European Trade Mark Owners titled: Tips for the European Practitioner as the U.S. Enters the Madrid System.

From 2002-2003, Atkins was Chair of the Trademark Office Practices Committee of INTA, which includes the European Community Trademark Office, U.S. Patent and Trademark Office and Madrid Protocol subcommittees. In this capacity she worked with officials at the U.S. Trademark Office on rule changes for implementation of the Madrid Protocol. She was also a member of the INTA Emerging Issues Council from 2004 - 2007.  From 2008 - 2011, Ms. Atkins served as the U.S. representative for the Trademark Offices Law and Practice Team of the Marques organization, an association of European trademark owners and attorneys.

Court Memberships

• New York

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Honors

• Selection in the WTR 1000, 2011
• Selected as “Leading Lawyer” by Chambers USA, 2008-2010
• Selected among the world’s top trademark attorneys by Euromoney Institutional Investor.  Recognized in the Guide to the World’s Leading Trademark Law Practitioners, 2008, 2012 editions
• Named as One of the World’s Leading Trademark Practitioners by Managing Intellectual Property magazine

Professional Affiliations

• Chair, Assignment and Licensing Subcommittee of the International Trademark Association (INTA), 2004-2005
• INTA Emerging Issues Council, 2004-2007 
• Chair, Trademark Office Practices Committee of INTA, 2002-2003
• U.S. Representative for the Trademark Offices Law and Practice Team of the Marques Organization

Representative Matters

• Argued International Trademark Association Board Resolution that led to amendment of the Lanham Act to include functionality as a ground for cancellation of incontestable trademarks.
• Represented a major pharmaceutical company in opposition case before the Trademark Office involving deposition of medical staff as to likelihood of confusion between client’s AIDS medication brand and other party’s brand name drugs which could, if substituted for client’s drug, cause considerable harm to patients and lead to mutations of the AIDS virus.
• Among scores of WIPO (World Intellectual Property Organization) proceedings, Ms. Atkins represented TDC A/S, the Danish telephone company, in a STOP proceeding, obtaining a decision for the transfer of the domain name tdc.biz.  A charge of reverse domain name hijacking made by the registrant was also successfully defended.
• Strategic planning and management of international trademark portfolios of large, multinational clients and work with foreign counsel on related litigation and administrative contentious matters.

Publications

Author, US Filing Options - The Pros and Cons, Marques - Association of European Trademark Owners, 2011