FacultyFaculty/Author Profile
Clark W. Lackert

Clark W. Lackert

Reed Smith LLP

New York, NY, USA


Clark joined Reed Smith in 2013 and is a partner in the firm's Intellectual Property Group. His primary focus is on trademark, copyright, domain name, licensing, and anti-counterfeiting, with particular experience in international matters, including litigation in the Supreme Courts of Iceland, Denmark, and South Korea, multiple enforcement actions in China, litigation in Australia, South Africa, Germany, and actions and projects in many other countries. He has worked on numerous U.S. and international conflicts and litigation cases, acquisitions and divestitures involving due diligence for intellectual property assets, and intellectual property portfolio management projects. Clark is consistently considered one of the world’s top trademark lawyers by various rankings.

Clark is a domain name arbitrator for WIPO (World Intellectual Property Organization), and a leading voice on ICANN issues (the Internet Corporation for Assigned Names and Numbers -- the international organization that governs domain names on the internet) and its roll-out of more than 1,000 new generic top level domains (gTLDs) and related Trademark Clearinghouse (TMCH). He has been a consultant to the U.S. Government on implementation of the World Trade Organization TRIPS Agreement concerning trademark, patent, and copyright issues, and counsels in IP areas as diverse as geographical indications, famous trademarks, international IP law and treaties, licensing, and right of publicity/personality.  

Clark has again been chosen by Expert Guides to be in the Top 30 trademark attorneys in the United States for 2015. He was in the last edition in 2013 as well. Clark has been selected by peers for inclusion in the 21st Edition of The Best Lawyers in America in the practice areas of: Litigation - Intellectual Property and Trademark Law. Clark is a New York Super Lawyer 2015 and is listed as one of the Global "Top 25" Trademark Lawyers in "Best of the Best 2015" in The International Who's Who of Trademark Lawyers (2015) and in the 2013 World's Leading Trade Mark Law Practitioners. He has also been included in the New York section of the 2015 edition of the Best Lawyers in America guide. Clark has been very active in professional organizations and has served as President of the U.S. Group of the world’s oldest IP law association, International Association for the Protection of Intellectual Property (AIPPI), founded in 1897. He is the former Chair of the ABA Copyright Division of the Intellectual Property Law Section and separately former Chair of the ABA Trademark Division as well. He is the current 2012-2013 Chair of the INTA Related Rights Committee (covering designs, right of publicity, geographical indications, and indigenous rights), has chaired other INTA committees, including the Amicus Brief Committee, External Affairs Committee, Issues and Policy Committee, Geographical Indications Committee, and the International Bulletin Committee, as well as the INTA Presidential Task Force on Online Liability. He was also a member of the Executive Committee of the INTA Board of Directors. In addition, Clark is a member of ASIS (American Society of Industrial Security) International, the preeminent security professional organization, due to his work in global brand enforcement and anti-counterfeiting.

Clark is a frequent speaker on trademark and domain name topics, and has lectured on six continents to various professional groups including the China Trademark Association - CTA, the Brazilian Intellectual Property Association – ABPI, the Institute of Patent and Trademark Attorneys of Australia – IPTA, the AIPPI South Africa, the U.K. Institute of Trade Mark Attorneys (of which he is a long standing member), the Coalition of Intellectual Property Rights – CIPR (in both Moldova and Russian Federation), and many others. He had also presented IP programs to law schools from Yale and NYU on the East Coast of the U.S.A. to USC and University of San Francisco on the West Coast. Clark is also an author of an upcoming chapter on China in a treatise on international IP litigation, an editor of a treatise on trademark assignment and chain of title law and practice, and many other articles involving online liability for trademark infringers and counterfeiters, geographical indications, and famous trademarks, among other topics.

Representative Matters

  • Won an important appellate court decision in the United Arab Emirates concerning trade name and trademark use and registration of a client's corporate name
  • Won a trademark litigation case in the Supreme Court of South Korea
  • Handled many court actions and raids in China
  • Counseled on global requirements for an international trademark licensing initiative of a multinational client
  • Worked with a name generation firm to analyze trademark availability and suitability for a global rebranding project for a major U.S. corporation.

Publications

  • "Cybersecurity's Weapon of Choice - Companies are advised to use their IP rights to counter cyberthreats.," Corporate Counsel, May 2015
  • "Counterfeits and infringements online - a global overview of liability," World Trademark Review, January 2014
  • "Inside the Minds: Defending Intellectual Property Rights in China (Co-Author)," Thomson Reuters, September 2013
  • "Pharmaceutical Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 21, October/November 2009
  • "Non-Traditional Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 20, August/September 2009
  • "Trademark Enforcement - U.S. (Co-Author)," World Trademark Review, Issue 19, June/July 2009
  • "Advanced Trademark Prosecution Issues," World Trademark Review, Issue 18, April 2009
  • "Internet Issues for Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 17, February/March 2009
  • "Protection for Unregistered Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 16, November/December 2008
  • "Chinese Domain Names in the 21st Century," Asia Law, April 2007
  • "IP Rights May be Used to Combat Internet Fraud (Co-Author)," The National Law Journal, April 2004
  • "The Madrid Protocol: Mechanics, Strategies, and Beyond," National Legal Center for the Public Interest, August 2003
  • "Famous Marks Dilution - Does the U.S. Meet TRIPS Standards? (Co-Author)," NYLJ, May 2002
  • "Famous Marks," International Quarterly, Volume 10, April 1998
  • "Geographical Indications: What Does the WTO TRIPs Agreement Require?," Trademark World, 1998
  • "Worldwide Trademark Transfers (Editor)," International Trademark Association (INTA), 1998
  • "Intellectual Property Rights Reform in the Middle East," Middle East Commercial Law Review, 1996
  • "International Efforts Against Trademark Counterfeiting," Columbia Business Law Review, 1988

Speaking Engagements

  • "International Searching and Filing Strategies," Fundamentals of Trademark Law in the Global Marketplace 2015, New York, New York, 14 July 2015
  • "New Legal Issues Impacting IP Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets," IP Issues in Business Transactions 2015, New York, New York, 12-13 January 2015
  • "International Searching and Filing Strategies," Fundamentals of Trademark Law in the Global Marketplace 2014, New York, New York, 15 July 2014
  • Reed Smith at INTA's Annual Meeting 2014, Hong Kong, 10 May 2014
  • "New Legal Issues Impacting IP Transactions: Trademarks, Domain Names, Patents, and Trade Secrets," IP Issues in Business Transactions 2014, New York, New York, 13-14 January 2014
  • "International Searching and Filing Strategies," PLI’s Understanding Trademark Law in the Global Marketplace 2013, New York, New York, 16 July 2013
  • "Global Protection for Famous Trademarks," INTA International Academy, Washington, D.C., 5 May 2013
  • "Special Issues in Copyright and Trademark Law," PLI IP Issues in Business Transactions 2013, New York, New York, 3 January 2013
  • "The Right Mechanics: Trademark Searching and Clearance in a Global Environment," INTA Trademark Administrators Conference, Charlotte, North Carolina, 14-16 October 2012
  • "International Searching and Filing Strategies," PLI’s Understanding Trademark Law in the Global Marketplace 2012, New York, New York, 17 July 2012
  • "Global Protection for Famous Trademarks," INTA International Academy, Washington, D.C., 6 May 2012
  • "IP Practitioner in Residence," Indiana University Maurer School of Law, Bloomington, Indiana, 15 February 2012
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, London, 16 November 2011
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, Milan, 14-15 November 2011
  • "Online Trademark Infringements: U.S. and International Developments and Best Practices," New Jersey Trademark Counsel Luncheon Club, Basking Ridge, New Jersey, 3 November 2011
  • "International Searching and Filing Strategies," PLI Understanding Trademark Law, New York, New York, 19 July 2011
  • "Fighting Counterfeiting and Trademark Infringement in China," NYIPLA Half-Day Trademark CLE Program, New York, New York, 14 June 2011
  • "Global Protection for Famous Trademarks," INTA International Academy, San Francisco, California, 14 May 2011
  • "AdWords: A Comparative Analysis," Fordham Annual IP Conference, New York, New York, 29 April 2011
  • "EU & US Trademark Dilution," Fordham Annual IP Conference, New York, New York, 28 April 2011
  • "Handling Complex Prosecution Issues," INTA Roundtable, Irvine, California, 15 April 2011
  • "IP Practitioner in Residence," Indiana University Maurer School of Law, Bloomington, Indiana, 29-30 March 2011
  • "The Intersection of Trademark and Copyright and the Right of Publicity," USC Gould School of Law 2011 IP Institute, Beverly Hills, California, 22 March 2011
  • "Global Brand Protection Against Online Infringements," Bird & Bird LLP, Milan, 16 February 2011
  • "Global Brand Protection Against Online Infringements," ITMA London Evening Meeting, London, 15 February 2011
  • "Legal Remedies Available for Brand Owners in the United States," INTA U.S.P.T.O. Study Tour on I.P. and Enforcement for Latin American Judges, New York, New York, 3 November 2010
  • "Global Brand Protection Against Online Infringements," ACC-NY CLE Program, New York, New York, 2 November 2010
  • "Trademarks," Korea Electric Association (KEA) IP Seminar, Seoul, 28 September 2010
  • "Trademark Law (US) Committee: Use and Abuse of Trademarks on the Internet," IPO Annual Meeting, Atlanta, Georgia, 13 September 2010
  • "Global and U.S. Trademark Enforcement and Anti-Counterfeiting Issues," USPTO Global Intellectual Property Academy and the Thai Central IP and International Trade Court Seminar on Enforcement of Intellectual Property Rights, Alexandria, Virginia, 16 August 2010
  • "International Searching and Filing Strategies," PLI’s Understanding Trademark Law 2010, New York, New York, 20 July 2010
  • "Famous Marks Doctrine from a Global Perspective," INTA Famous and Well Known Marks Committee, New York, New York, 20 July 2010
  • "Challenges in Protecting Foreign GIs in the U.S. as well as AOPs in Foreign Jurisdictions," ORIGIN Conference - American Origin Products (AOP) Economic and Legal Perspectives, Washington, D.C., 3 June 2010

Employment History

  • 2013 - Reed Smith
  • 2010 - Dickstein Shapiro
  • King & Spalding

Education

New York University, LL.M., Trade Regulation
State University of New York at Buffalo, J.D.
Cornell University, A.B., cum laude

Professional Admissions / Qualifications

New York

Court Admissions

U.S. District Court - Eastern District of New York
U.S. District Court - Southern District of New York
U.S. Court of Appeals - Federal Circuit

Clark W. Lackert is associated with the following items:
Web Segment  Web Segment New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets - IP Issues in Business Transactions 2017, Wednesday, January 11, 2017
MP3 Audio  MP3 Audio New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets - New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets, Wednesday, January 11, 2017
Transcripts  Transcripts New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets - New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets, Wednesday, January 11, 2017
MP4 - Mobile Video Seg  MP4 - Mobile Video Seg New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets - New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets, Wednesday, January 11, 2017
On-Demand Web Programs  On-Demand Web Programs IP Issues in Business Transactions 2017, Tuesday, January 17, 2017, New York, NY
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