David I. Greenbaum
David Greenbaum is a partner in Day Pitney's Intellectual Property department. David counsels clients on trademark and design matters across a wide range of industries, including fashion, cosmetics, entertainment, beverage and pharmaceutical. His practice focuses on risk evaluation for trademark use and registration, prosecution, policing, enforcement, and worldwide portfolio management. David also handles inter partes proceedings before the Trademark Trial and Appeal Board, and he litigates disputes involving intellectual property in the federal courts and before the International Trade Commission.
Another side of David's practice is transactional in nature. He negotiates and drafts agreements relating to intellectual property, including licenses and coexistence agreements. David also conducts due diligence on intellectual property portfolios in connection with mergers and acquisitions.
As a registered patent attorney, David has additional insight into the full range of intellectual property protection available to his clients. David is an active member of intellectual property organizations. He is a member of the Nontraditional Trademarks Committee of the International Trademark Association, and a member of the Designs Team of MARQUES, a European-based IP organization.
- Represented a world-famous automobile brand with respect to its trademark enforcement strategy in the United States.
- Managed an international policing program for a client's well-known clothing brand, including advice on initiating opposition and cancellation actions.
- Handled extensive trademark clearance and prosecution for the infant care division of a large multi-national pharmaceutical company.
- Managed design patent portfolios in the areas of footwear and wristwatches.
- Through extensive due diligence, guided companies in the area of intellectual property in mergers and acquisitions and the purchase of intellectual property portfolios.
- Protected the intellectual property interests of a world-renowned music group through policing and enforcement strategies.
- Drafted and successfully prosecuted numerous utility patent applications in the mechanical and electromechanical arts, and wrote legal opinions on the validity and possible infringement of patents in these fields.
- Prevailed at trial on behalf of founder of legendary music band Earth, Wind & Fire, against application for a trademark containing the phrase EARTH WIND & FIRE (Maurice White v. Gary Benson, Opp. No. 91179429 (T.T.A.B. 2009)).
- Represented owner of fedtax.com in UDRP proceeding, successfully fending off transfer of domain name, while establishing that Complainant engaged in reverse domain name hijacking by initiating the dispute (The Federal Tax Authority, LLC v. James Scanlon, Claim No. FA1108001402161 (NAB 2011)).
- On behalf of hedge fund Fermat Capital Management, recovered stolen domain name fcm.com in a UDRP proceeding (Fermat Capital Management LLC v. Mechir Macdonat / Moniker Privacy Services, Case No. D2011-2314 (WIPO 2012)).
News, Publications & Presentations
- Speaker, "Nontraditional Trademarks, Designs, and other IP Exotics," DuPont/Widener University School of Law Intellectual Property Continuing Legal Education Seminar, Delaware, September 30, 2014
- Speaker, "Nontraditional Trademarks: Scent, Shape, Sound and More," ScentWorld 2014, June 13, 2014
- Author, "The Hague Agreement in the US," HouseMARQUES, Issue 42, June 2014
- Featured, "Movers," The National Law Journal, March 17, 2014
- Featured, "Day Pitney Expands IP Practice with New Partner David Greenbaum," Day Pitney Press Release, February 19, 2014
- Author, "No Registration, No Problem," World Trademark Review, Issue 40, December/January 2013
- Co-author, "The International Comparative Legal Guide to: Trade Marks 2013," USA Chapter
- Author, "Taking a Liberal Approach," World Trademark Review, Issue 32, August/September 2011
- Co-author, "Beware the Robots - Moving Away From Formulaic Registration Processes," World Trademark Review, April/May 2011
- Speaker, "Starting and Succeeding with a New Business," NJ State Bar Foundation, March 9, 2011 and March 3, 2010
- Speaker, "Protecting Your Intellectual Property," webinar, February 12, 2009
- Co-author, "Assessing a Trademark's Strengths and Risks of Use," License, Vol. 9 No. 10, November 2006
- Speaker, "The Interplay Between Design Patents, Trademarks and Copyrights," AIPLA Spring Meeting, May 3, 2006, Chicago, IL
- Benjamin N. Cardozo School of Law, J.D., 1998
- Lehigh University, B.S.M.E., 1995
- State of New York
- State of New Jersey
- U.S. Patent and Trademark Office
- U.S. District Court, District of New Jersey
- U.S. District Court, Southern District of New York
- U.S. District Court, Eastern District of New York
- U.S. Supreme Court
- International Trademark Association (INTA), Non-Traditional Trademarks Committee
- MARQUES, Member of the Designs Team
- American Intellectual Property Law Association
- New York Intellectual Property Law Association
- International Association for the Protection of Intellectual Property (AIPPI)