Katten Hires Leading Internet and IP Attorney Brian Winterfeldt

Katten Muchin Rosenman LLP announced today that Brian J. Winterfeldt has joined the firm as partner and head of Katten’s new Internet practice. Winterfeldt has experience in all aspects of intellectual property law including domestic and international trademark counseling, enforcement and litigation, but also has a unique concentration in cutting-edge issues dealing with Internet governance and domain name issues. He represents global leaders in the retail and apparel, media, financial, insurance, hospitality, consumer products and Internet and technology industries. This experience extends to the both the for-profit and nonprofit sectors.

“Bringing Brian onboard and launching a new practice area that deals with Internet governance and domain name legal strategies illustrate Katten’s commitment to expand into innovative, emerging new areas,” said Vincent A. F. Sergi, Katten’s chairman. “Brian has a unique skill set in a rapidly growing area of the law and we are thrilled to welcome his leadership and knowledge in this space.”

Winterfeldt has extensive experience in evolving Internet issues such as the new generic top-level domain (gTLD) program and social media, including strategies for brand promotion and

IP protection in these spaces. This is especially significant as the Internet Corporation for Assigned Names and Numbers (ICANN) recently conducted an application process for new gTLDs and hundreds of them are expected to go live in the next year, resulting in an enormous impact on Internet IP and commerce strategies.

“ICANN’s gTLD program is opening up an entirely new universe of possibilities for businesses and how they can market themselves online,” said Roger P. Furey, managing partner of Katten’s Washington, DC office. “It reminds me a bit of the 1990s when some companies didn’t quite know what to make of the Internet, but the smart ones plunged in and started establishing an online presence. The new gTLDs should provide similar opportunities. With more options, however, will come new legal and logistical challenges, which is why Brian’s experience is so valuable to our clients.”

In addition to his nationally recognized Internet practice, Winterfeldt has broad experience in many areas of intellectual property law and represents clients seeking to protect against infringement of their trademarks, trade dress and copyrights in the United States and internationally. He also counsels clients on the creation of trademark and branding strategies.

“Brian adds another dimension to our growing intellectual property practice, and further strengthens our trademark capabilities which are already nationally recognized and have an excellent international reputation,” said Floyd Mandell, partner and co-head of Katten’s national Intellectual Property practice. “Several of our partners have known Brian and his team professionally for several years, and we welcome their knowledge and experience, especially in this growing Internet arena,” added Karen Artz Ash, partner and co-head of Katten’s national Intellectual Property practice.

Winterfeldt is a prominent voice in the trademark arena, authoring numerous articles on trademark law and frequently speaking at industry events on trademark issues, Internet governance and social media. He has been selected as Special Advisor to the Internet Committee for the International Trademark Association (INTA) and Co-Chair to several of INTA’s major conferences. Winterfeldt also serves on ICANN’s Generic Names Supporting Organization (GNSO) Council, an ICANN stakeholder group that creates global domain name policy, and has been a member of the MARQUES European Trademark Association’s Cyberspace Team.

Four other attorneys will be joining Winterfeldt from Steptoe & Johnson. Additionally, Debra Hughes, who has served as IP counsel with the American Red Cross for the past five years, will join Katten’s new Internet practice as special counsel. Hughes has also served on ICANN’s GNSO Council, and has been a member of the Board of Directors for INTA.

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