A significant part of Marc Lieberstein's practice focuses on intellectual property licensing in the commercial design area, e.g., fashion/apparel and accessories, including the drafting, negotiation and enforcement of such licenses, as well as implementation of branding and commercialization objectives for clients via licensing. In conjunction with the services above, Mr. Lieberstein counsels clients on creating effective strategies for procuring, protecting and enforcing their global intellectual property assets, including copyright and trademark prosecution, opposition and cancellation proceedings in the United States Patent and Trademark Office, and appeals in the United States Copyright Office. He also provides intellectual property litigation services involving patents, trademarks and copyrights, including related e-commerce, domain name, trade secret and unfair competition. Mr. Lieberstein advised and aided a software publisher in developing a copyright registration strategy to enhance protection of a variety of digital publications, including database-driven websites and CD-ROM and downloadable software products. His development of this strategy required an understanding of a wide variety of copyrightable works at issue, including website appearance, website source code, software appearance, software source code, and an automated database. Mr. Lieberstein frequently lectures and writes on intellectual property issues for a variety of intellectual property organizations and publications, including INTA, NYSBA IP Section, National Law Journal, IP Strategist, and The New York Law Journal.

Mr. Lieberstein was listed in the 2011 edition of Chambers USA: America's Leading Lawyers for Business for Intellectual Property: Trademark & Copyright and each of the three years immediately preceding where Chambers makes note that "Mr. Lieberstein impresses sources with his 'deep knowledge of trademark issues'...and [i]n Litigation, he 'turns technical jargon into common words in a way that judges appreciate'." In 2009, Mr. Lieberstein was recognized as a New York "SuperLawyer" in Intellectual Property Litigation by SuperLawyers magazine and in 2011, he was selected as a Top 100 New York "SuperLawyer" by SuperLawyers magazine. Mr. Lieberstein was listed in the 2011 and 2012 editions of World Trademark Review 1000 – The World's Leading Trademark Professionals.

Professional & Community Activities

Benjamin N. Cardozo School of Law, Chair, Alumni Association Pro Bono Committee (2010 - present), Alumni Association, Former Chairperson (2006-2010) and Former Chair of Career Development Committee

International Trademark Association (INTA), Law Firm Committee, Chair (2010-2011), Programs Committee, Member (2005-present), Programs and Standards Subcommittee, Chair (2007-present), E-Learning Committee, Member (2004), INTA Annual Meeting Project Team, Member (2003 and 2005)

New York State Bar Association, Intellectual Property Law Section, Honorary Member and Former Section Chair (2002-2004), Litigation Committee, Co-Chair (2006-present), Trademark Law Committee, Former Co-Chairperson

American Bar Association, Intellectual Property Section, Member

Hebrew Academy of Nassau County (HANC), Board of Directors (2010 - present)

Young Israel of Plainview, Former Vice President of Fundraising (2007-2008) and Little League Director (2004-present)

Education

  • Benjamin N. Cardozo School of Law, J.D. (1992)
  • State University of New York, University at Albany, B.A., History, Minor in Business (1989)
    cum laude

Bar Admissions

  • Connecticut (1992)
  • New York (1993)
  • Colorado (2005)

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit (1995)
  • U.S. Court of Appeals for the Second Circuit (2000)
  • U.S. District Court for the Eastern District of New York (1992)
  • U.S. District Court for the Southern District of New York (1992)
  • U.S. Supreme Court (2005)

Who We Are

What fully engaged means to me:

Being fully engaged means not only being available when the client calls, but also knowing your client's business, understanding the client's short and long term objectives, and then providing cost effective legal and practical advice to best serve your client's interests.

The Grace Building, 1114 Avenue of the Americas
New York, NY, 10036-7703
USA
t +1 212.775.8781
f +1 212.937.3842

Marc A. Lieberstein

Experience Highlights

Global trademark licensing and portfolio management and enforcement for JA Apparel Corp. (dba Joseph Abboud)
The firm serves as global trademark and licensing counsel to JA Apparel Corp., a $400 million worldwide lifestyle apparel, home furnishings and more
Esbin & Alter LLP v. Zappier et al.
Retained to defend independent software developer on a pro bono basis against former law firm employer that alleged copyright infringement, fraud, more
Trademark and copyright advice and counsel to Laminating Services Inc.
Provide advice and counsel in areas of trademark and copyright to Laminating Services Inc., a global manufacturer and supplier of wallcovering more
Trademark and copyright advice and counsel for Economic Development Resource Guide
Advice and counsel in areas of patent, trademark and copyright to Economic Development Resource Guide, a provider of state-of-the-art consulting more