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Attorney
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PETER
S. SLOANE Direct Dial: 914.821.9073
PROFESSIONAL PROFILE: PETER S. SLOANE counsels clients, prosecutes trademark and copyright applications, and litigates intellectual property disputes. His clients span from major well-known companies to privately owned businesses to individuals. They operate in fields as diverse as consumer electronics, luxury goods, entertainment, pharmaceuticals and industrial products.
Mr. Sloane is a prolific writer and speaker on trademark and copyright issues. He has written articles published in Trademark World, Entrepreneur, the Andrews Computer & Internet Litigation Reporter, the Intellectual Property & Technology Law Journal, and Law Works. He has also spoken at events sponsored by the International Trademark Association, the New York State Bar Association, the Association of Patent Law Firms, Fordham University Law School and the Benjamin N. Cardozo School of Law.
Mr. Sloane has also been widely quoted in the press for his views on intellectual property issues. He has been quoted in publications including Computerworld, Crain’s New York, Retail Customer Experience Magazine, The Washington Times, Fortune, The Patent Lawyer, and the Boston Globe.
Before joining Leason Ellis, Mr. Sloane was a Partner at Ostrolenk Faber, LLP, where he served as the marketing and hiring attorney. Mr. Sloane was also an associate at Fross Zelnick Lehrman & Zissu, LLP, where he specialized in trademark and copyright prosecution matters and Nims, Howes, Collison, Hansen & Lackert, LLP, where he litigated intellectual property disputes.
Trademark Selection, Searching and Clearance Mr. Sloane counsels clients on all aspects of trademark adoption and protection including licensing. From advising clients on issues of inherent registrability to computer database and full searching, he is adept at taking the steps necessary to ensure that a mark is properly vetted prior to adoption. Where a client has plans to use its mark abroad, Mr. Sloane is familiar with the issues that arise in foreign trademark searching. He also knows his audience well, whether he is dealing with the president of a company, its inside legal counsel, or its marketing manager, and is able to tailor his advice to the needs of the client. He is also sensitive to his client’s tolerance for risk and its impact upon whether to adopt a new mark in light of the search results.
Trademark Prosecution and Maintenance Before filing a trademark application, Mr. Sloane takes great effort to identify issues that may give rise to unnecessary Office Actions. This results in minimized cost to the client and expedited registration. Where objections to registration are raised, Mr. Sloane concisely explains the issues to his clients and files persuasive responses aimed at overcoming the obstacles. Post registration, he advises clients on maintenance issues and files the declarations and renewals necessary to preserve registration. Over the years, Mr. Sloane has also handled a number of global trademark portfolios. In that role, he has taken steps to maximize protection while minimizing cost to his clients.
Copyright Protection and Litigation Mr. Sloane advises clients on various issues related to the protection of copyright including validity, ownership and duration. He also files copyright applications with the U.S. Copyright Office and any necessary responses and appeals. Over the years, Mr. Sloane has obtained registration of copyrights in works as diverse as wedding dresses, jewelry design, books and other printed materials. He has also litigated various copyright matters in federal court. In Odegard, Inc. v. Safavieh Carpets, Inc., 398 F. Supp. 2d 275 (S.D.N.Y. 2005), Mr. Sloane obtained dismissal on summary judgment for client Safavieh in a case involving the alleged infringement of carpet design.
Trademark Disputes and Litigation Prior to litigation, Mr. Sloane records trademark registrations with the U.S. Customs and Border Protection Service and works with Customs on ways to prevent counterfeiting and gray market infringement. In the U.S. Patent and Trademark Office, Mr. Sloane litigates ex parte appeals and inter partes opposition and cancellation actions before the Trademark Trial and Appeal Board. In federal court, he litigates trademark infringement cases and related causes of action including dilution, false advertising, and unfair competition. He also tries domain name disputes before the World Intellectual Property Organization and the National Arbitration Forum. On the international front, he further oversees foreign trademark disputes in various countries around the world on behalf of his clients. Always mindful of costs to his clients, however, Mr. Sloane attempts to negotiate settlement where possible and where warranted. BAR ADMISSIONSNew York EDUCATIONJ.D., Benjamin N. Cardozo School of Law, 1994
B.A., Cornell University,
1991 |
