FacultyFaculty/Author Profile
Sheldon H. Klein

Sheldon H. Klein

Gray Plant Mooty

Washington, DC, USA


Sheldon Klein is a member of the firm’s Intellectual Property, Technology & Privacy and Franchise & Distribution practice groups. He has over 35 years’ experience in counseling, portfolio management, litigation, licensing, and transactions in the areas of trademark, copyright, unfair competition, advertising law, and social media. 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, drafts IP licenses and other agreements, and enforces IP rights via negotiation, 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/social media, hospitality, health care, telecommunications, broadcast, entertainment, manufacturing, building, food, pharmaceutical, medical device, banking, and insurance. 

Experience

  • 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 operator of popular 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 audit for a famous U.S. author
  • Resolved a longstanding trademark dispute among two major nonprofit organizations via a creative licensing agreement
  • Manage international trademark portfolios for numerous clients of Columbia Fourth Sixth and Ninth Circuits

Honors / Activities

Professional Activities

  • American Intellectual Property Law Association, Second Vice President, past Treasurer, Secretary; AIPLA Fellows, Past Chair; Trademark Law Committee, Past Chair
  • International Trademark Association, Trademark Office Practices Committee, Member; Internet Committee, Past Member
  • Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), Member
  • U.S. Patent and Trademark Office, Trademark Public Advisory Committee, Past Member
  • Bar Assn. of DC, Patent, Trademark & Copyright Section, Past Chair

Honors and Distinctions

  • Washington, DC Super Lawyer,” Super Lawyers, 2014-2016
  • Leading Trademark Lawyer, The International Who’s Who of Business Lawyers, 2007-2015
  • “Leading Trademark Lawyer,” World Trademark Review, 2011-2013, 2015- 2017
  • “Top Lawyers” in Intellectual Property, Washingtonian Magazine, 2011, 2013 

Community Involvement

  • Jewish Federation of Greater Washington, Vice President
  • Jewish Community Relations Council of Greater Washington, Board of Directors
  • Maryland-Israel Development Center, Montgomery County Steering Committee
  • Melvin J. Berman Academy of Greater Washington, Board of Directors

Industries

  • Food & Beverage
  • Software & Technology
  • Wholesale & Retail Distribution
  • Health Care
  • Advertising & Promotions 

Practices

  • Intellectual Property, Technology & Privacy
  • Trademark
  • Intellectual Property Litigation
  • Software & Technology Licensing
  • Copyright
  • Internet & E-Commerce
  • Trade Secrets 

Education

  • George Washington University, J.D., with honors
  • University of Michigan, B.A., with high distinction

Bar Admissions

  • District of Columbia
  • Maryland 

Court Admissions

  • U.S. Court of Appeals District
  • U.S. District Court District of Columbia Maryland
  • U.S. Supreme Court
Sheldon H. Klein is associated with the following items:
Course Handbooks  Course Handbooks Advanced Trademark Law 2017: Current Issues
On-Demand Web Programs  On-Demand Web Programs Advanced Trademark Law 2017: Current Issues, Thursday, May 18, 2017, New York, NY
Live Seminar  Live Seminar Advanced Trademark Law 2018: Current Issues, Wednesday, March 14, 2018, New York, NY
Live Webcast  Live Webcast Advanced Trademark Law 2018: Current Issues, Wednesday, March 14, 2018, New York, NY
PLI Grpcast-Live Web  PLI Grpcast-Live Web Advanced Trademark Law 2018: Current Issues, Wednesday, March 14, 2018, New Brunswick , NJ
Advanced Trademark Law 2018: Current Issues, Wednesday, March 14, 2018, Indianapolis, IN
Advanced Trademark Law 2018: Current Issues, Wednesday, March 14, 2018, Cleveland, OH
Advanced Trademark Law 2018: Current Issues, Wednesday, March 14, 2018, Atlanta, GA
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