FacultyFaculty/Author Profile

Sandra Edelman

Dorsey & Whitney LLP

New York, NY, USA


Sandra Edelman
Partner

Experience
Sandra Edelman is a partner and former head of the firm's Trademark, Copyright, Advertising and Brand Management group. Her practice involves counseling, litigation and mediation in the areas of trademark and unfair competition, copyright and false advertising law, as well as extensive experience in brand name clearance, advertising claims review and licensing issues.

She acts as lead counsel in a wide variety of trademark opposition and cancellation proceedings in the Trademark Trial and Appeal Board and has been the mediator in more than 25 intellectual property cases. She manages and supervises several international trademark registration portfolios and advises clients in a variety of industries, including alcoholic beverages; pharmaceuticals, nutritionals and cosmetics; publishing, banking and information services.

Sandra was previously Chair of the firm's Diversity Committee from 2002 through 2005. In 2004-2005, she served as Editor-in-Chief of The Trademark Reporter, the leading journal of trademark law published by the International Trademark Association.

Representative Work

Litigation
  Dozens of opposition and cancellation proceedings before the Trademark Trial and Appeal  Board
  In re Network Associates Technology, Inc. (T.T.A.B. 2005) (unpublished) (successful appeal  of a refusal to register the mark  VIRUSSCAN on the grounds of genericness and  descriptiveness)
  Design Options v. BellePointe, 940 F. Supp. 86 (S.D.N.Y. 1996) (lead trial counsel for  plaintiff in copyright infringement case involving sweater designs; $180,000 in damages  awarded)
  Jaguar Cars v. Skandrani, 711 F. Supp. 1178 (S.D. Fla. 1991) (lead trial counsel for plaintiff in trademark and trade dress infringement action involving Jaguar name and "Leaping  Jaguar" logo; injunction entered)
  E.I. du Pont v. Sunlyra (unpublished) (lead counsel for opposer in trademark opposition  proceeding in the Trademark Trial and Appeal Board involving the LYCRA trademark; opposition to registration of LYRA trademark sustained)

Counseling
  Brand Name Clearance - Advises clients on availability, registrability and litigation risks  associated with adoption of brands and slogans 
  Advertising Claims Review - Evaluates proposed advertising and promotional material for claims substantiation requirements and risks of false advertising claims
  Publishing Issues - Counseling on authorship and plagiarism disputes

Transactions
  Development of licensing template to permit internet access to an archive of scientific publications and conference proceedings
  Acquisition of Playtex Apparel Co. by Sara Lee Corp. (all trademark aspects of corporate  acquisition)

Admissions
  New York
  United States Supreme Court
  United States Court of Appeals for the Second Circuit
  United States District Courts for the Southern, Eastern and Western Districts of New York

Honors
  Ranked "Leading Individual" in Trademark & Copyright Law (New York) by Chambers USA,  2009; mentioned in Trademark & Copyright Law (New York) "Leading Firm" Profile by  Chambers USA, 2008
  Best Lawyers in America, 2006-2010
  New York Super Lawyers, 2006-2010
  Ranked by her peers among the Top 20 Experts' Experts in the U.S., World Trademark  Review, 2007

Education
George Washington University Law School
  J.D., 1981, With honors, Order of the Coif, Managing Editor, George Washington Law Review

Cornell University
  B.A., 1978, With distinction

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