Sheldon Klein is a principal at Gray Plant Mooty and a member of the firm's Intellectual Property, Technology & Privacy team, and the Litigation and Franchise & Distribution practice groups. He has significant experience in counseling, portfolio management, litigation, licensing, and transactions in the areas of trademark, copyright, unfair competition, and advertising law. Sheldon assists clients with a wide range of issues, including selection, clearance, and registration of new trademarks. He conducts IP audits and due diligence investigations and enforces IP rights via federal district court litigation, appellate litigation, and opposition and cancellation proceedings before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board and foreign trademark offices.
Sheldon represents clients in a variety of industries, including franchise, internet/e-commerce, advertising, telecommunications, broadcast, entertainment, manufacturing, building, food, pharmaceutical, medical device, banking, insurance, and hospitality. He also serves as a trademark law expert in litigation and arbitration.
- Obtained declaratory judgment of trademark non-infringement on behalf of a major Washington-based trade association after a threat by a key competitor just prior to launch of a major rebranding effort
- Obtained relief for a major U.S. furniture manufacturer from rampant imports of counterfeit goods via litigation, U.S. Customs seizure/destruction of goods at their port of entry and at retail locations in multiple states, and seizure/destruction of goods at their point of manufacture in Taiwan
- Obtained summary judgment, upheld on appeal (Ninth Circuit), against terminated franchisee who continued to use part of a famous international franchisor's trademark
- Obtained relief from multiple copyright infringements for the creator of a famous graphic work via litigation, and for the owner of a famous sculptural work via negotiation
- Obtained relief for Israeli operator of popular start-up social network/e-commerce Web site from multiple clone sites via cease and desist letters and DMCA takedown notices
- Advised offshore operator of auction Web sites on trademark, copyright, and content issues
- Handled multiple deceptive advertising cases on behalf of a major U.S. telecommunications company and a multinational medical device manufacturer in arbitration before the National Advertising Division of the Council of Better Business Bureaus
- Conducted copyright audits for a famous U.S. author, choreographer, and others
- Resolved a longstanding trademark dispute among two major nonprofit organizations via a creative licensing agreement