Rachel Hofstatter helps clients acquire, protect and enforce intellectual property rights. She prosecutes and manages trademark portfolios worldwide, designs and implements filing and enforcement strategies, counsels clients on trademark and copyright issues, and handles IP transactions including due diligence and licensing. She has represented clients from various industries in intellectual property litigation in federal court, at the US Patent and Trademark Office, and at the National Arbitration Forum. Her litigation experience includes the prosecution and defense of trademark, trade dress, copyright and patent infringements, unfair competition, domain name disputes, trademark oppositions and cancellations, and false advertising claims.
- Prosecution: Managing domestic and international trademark portfolios, including worldwide search and clearance of marks and designs, trademark and trade dress applications, office action responses, ex parte appeals and maintenance of registrations; coordinating foreign applications and registration maintenance; preparing and recording assignments worldwide; preparing and filing US copyright applications; managing domain name registrations.
- Trademark Enforcement and Litigation: Developing and managing enforcement programs; litigating in the Trademark Trial and Appeal Board and in federal courts; defending trademarks against third party objections; mediating trademark cases; arbitrating domain name disputes under policies such as the Uniform Domain Name Dispute Resolution Policy (UDRP).
- Transactions: Negotiating and drafting trademark and copyright licenses, assignment agreements, consent agreements, coexistence agreements, non-disclosure agreements, collaboration agreements, security interest agreements, photograph and video releases, intellectual property warranties and disclosures for acquisition and purchase agreements; conducting due diligence for intellectual property disclosures.
- Client Counseling: Advising clients on trademark and copyright matters, including cost effective and efficient filing strategies, proper use of trademarks, infringement analysis, rights of privacy and publicity; preparing trademark use guidelines; drafting employee policies on trademark use; reviewing client advertising materials for trademark and copyright concerns.
- U.S. Customs and Border Protection (CBP): Recording and renewing trademarks with CBP; managing CBP seizure notifications for clients; conducting training sessions for Customs officers.
- Structured and implemented an enforcement program including anti-phishing take-down measures for a top 25 bank.
- Represented many domestic and international clients with prosecution and maintenance of marks in the US and worldwide.
- Handled and resolved successfully opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
- Trial team for plaintiff resulting in a consent judgment in which the defendant admitted willful infringement.
- Co-authored amicus brief in the Ninth Circuit regarding the genericness of a mark.
- Trained Customs and Border Protection officers on how to determine whether a watch is a counterfeit Swiss watch.
- Manage seizure notifications for counterfeit imports.
- Negotiated dozens of license agreements, consent and coexistence agreements, assignment agreements, and settlement agreements for resolving litigation.
- Counseled clients on brand expansion and new markets.
- Advise clients regarding right of publicity and invasion of privacy inquiries and release documents.
- Drafted employee policies regarding trademarks and social media.
- Successfully defended against a preliminary injunction for a telecommunications client.
- Conducted due diligence and negotiated intellectual property warranties for acquisition agreements.
- Steptoe & Johnson LLP, 2004-2020
- with Highest Honors; Order of the Coif; Senior Notes Editor, The George Washington Law Review
- with Honors and with Highest Distinction; Phi Beta Kappa
- District of Columbia
- U.S. District Court for the District of Maryland
- “Rising Star,” Intellectual Property category, Super Lawyers Washington, DC: 2014, 2015
- World Trademark Review 1000: 2017-2021
- The Legal 500, Intellectual Property: Trademarks: Non-Contentious: 2014 - 2016
Professional & Community Involvement
- International Trademark Association (INTA)
- Unfair Competition Committee, 2020 – 2021
- Enforcement Committee, 2016 – 2019
- Task Force Leader, Pretext Investigations, 2018 – 2019
- Alternative Dispute Resolution Committee, 2012 – 2016
- Jewish Federation of Greater Washington, 2019 – present
- Board member
- Northern Virginia task forces; Women’s Philanthropy lay leadership
- Possesses significant pro bono experience in trademark litigation and prosecution.
News & Insights
- Help Remove Potentially Dangerous Counterfeit Auto Parts from the Market: Automotive Industry Best Practices for Using Trademarks to Combat CounterfeitsPublication | Compliance & Risks |
- COVID CounterfeitersPublication | Intellectual Property Magazine |
Seminars & Events
- INTA Annual Meeting: Practical Ethics Issues for Copyright and Trademark Lawyers, November 2020, Panelist
- INTA Leadership Meeting: Pretext Investigations, November 2019, Presenter
- Trade Dress, Design Patent and Copyright: Strategies to Maximize Protection, Challenge and Defeat Infringement, Strafford Publications, Inc. webinar, May 2018, Presenter
- Trade Dress and Design Patent: Leveraging Recent Lessons to Maximize Protections: Trademark, Patent and Copyright Strategies to Challenge and Defeat Infringement Claims, Strafford Publications, Inc. webinar, May 2016, Presenter