Overview

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.

Services

Experience

Representative Matters

  • 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.

Prior Experience

  • Steptoe & Johnson LLP, 2004-2020

Credentials

Education

Admissions

Court Admissions

Recognition

Awards

  • “Rising Star,” Intellectual Property category, Super Lawyers Washington, DC: 2014, 2015
  • World Trademark Review 1000: 2017-2022
    • 2022 - "Rachel has great expertise on all matters relating to trademarks. She responds quickly, gets excellent results, knows her clients’ needs and suggests creative ways to attain key objectives.”
    • 2021 - Hofstatter “manages complex trademark programmes that would otherwise be extremely time-consuming and labour-intensive tasks to handle in-house with great expertise”. 
  • The Legal 500, Intellectual Property: Trademarks: Non-Contentious: 2014 - 2016

Professional & Community Involvement

  • International Trademark Association (INTA)
    • Unfair Competition Committee, 2020 – 2023
      • Emerging Technologies and Practices Task Force Leader, 2022 - 2023
    • 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

Pro Bono

  • Possesses significant pro bono experience in trademark litigation and prosecution.

News & Insights

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

Recognized by World Trademark Review 1000:

"Rachel has great expertise on all matters relating to trademarks. She responds quickly, gets excellent results, knows her clients’ needs and suggests creative ways to attain key objectives.”

_______________________________

Jump to Page

By using this site, you agree to our Privacy Policy and our Disclaimer.