Janet F. Satterthwaite

Janet Satterthwaite is an experienced and versatile trademark attorney, uniquely capable in all aspects of global trademark prosecution and strategic counseling as well as litigation at the first-chair level. Clients appreciate her seamless, practical, one-stop guidance on counseling, prosecution and portfolio management, licensing, enforcement/litigation, and cyberspace problems. She takes the client from domestic and global selection, clearance and adoption of brands, to brand protection/registration strategy and execution, brand enforcement and licensing strategy, domain name and Internet strategy, and litigation as necessary.

Trademark: Ms. Satterthwaite has been a leading member of Venable's Trademarks, Copyrights and Domain Names practice group since 1996, which makes her the longest-serving member of the Venable Trademark Group. She has prosecuted trademarks in the U.S. and worldwide for over 20 years. Her group ranks highly in two benchmark annual reports: ninth in U.S. trademark applications filed (Trademark Insider, pub. 2010); and 12th in U.S. trademark registrations issued (Intellectual Property Today, pub. 2010). The group is ranked Tier 1 nationally and in Washington, DC (U.S. News - Best Lawyers "Best Law Firms,” 2011-2012). Ms. Satterthwaite is assisted by a skilled team of associates, paralegals and junior partners. In 2011, Ms. Satterthwaite served as an expert witness in a U.K. patent litigation on a specific issue of U.S. Trademark Prosecution Law and Practice.

Internet and Domain Names: Ms. Satterthwaite is recognized as a leading international professional on "best practices" in responding to the rapidly changing problems of brand protection on the Internet, and for this work, was elected to the International Who's Who of Internet, e-Commerce & Data Protection Lawyers for 2011. Ms. Satterthwaite is head of Venable's Domain Name and Cyberpiracy Team, which guides clients through challenges to brands in cyberspace, including Internet domain name disputes and worldwide domain name registration and policing strategies, keyword advertising disputes, online misuse of trademarks, online counterfeiting, false blogs, phishing and data security, and social media. Ms. Satterthwaite has been practicing and influencing domain name and Internet law since 1995.

This most significant change to the Internet in a decade launched in January 2012, when applications for unlimited new top-level domains are being accepted. Ms Satterthwaite is guiding a major firm client through the application process for a new top-level domain. Since 2009, Ms. Satterthwaite has been participating in interactions and meetings with, and has submitted comments to, ICANN, the Internet Corporation for Assigned Names and Numbers, on behalf of trademark owners' organizations and individual clients to ensure that new generic top-level domains include adequate trademark rights-protection mechanisms.

She also advises clients on evolving internationalized domain names, and, in 2010, helped a client register one of the first all-Cyrillic domains. In 2011, she coordinated blocking a wide range of client brands, from insurance to Hollywood celebrities, from the launch of the .xxx adult entertainment domain space.

Litigation: Ms. Satterthwaite is a seasoned trademark litigator and has been lead litigation counsel at Venable on many trademark, domain name, copyright and false advertising lawsuits in federal courts, often in New York, Virginia and Maryland, as well as California, Connecticut, New Jersey, Ohio, Louisiana, Colorado, New Mexico, Iowa, Florida, South Carolina, Texas and North Carolina. Many of these cases resulted in preliminary and permanent injunctions in favor of her clients. She also handles dozens of administrative litigation matters before the Trademark Trial and Appeal Board and provides trademark law and survey expert support to numerous trademark litigation matters handled by other Venable colleagues, including landmark cases such as Wal-mart v. Samara (U.S. Supreme Court ) and Gibson Guitars v. Paul Reed Smith (6th Circuit).

Counterfeiting: Ms. Satterthwaite led the Venable team which filed amicus briefs on behalf of perfume manufacturer Coty, Inc., in the Second Circuit Court of Appeals in 2008 and the United States Supreme Court in 2010 in Tiffany v. eBay, which addressed the scope of liability of online market places to prevent the sale of counterfeits. She is working with a client in the consumer goods sector on strategies to work with Customs towards better identification of counterfeit merchandise. Ms. Satterthwaite is a member of the U.S. Chamber of Commerce's Coalition Against Counterfeiting and Piracy (CACP).

Advertising: Ms. Satterthwaite is a member of Venable's Advertising and Marketing team, which was selected in 2010 as a recipient of the Chambers USA Award of Excellence and recognized by Legal 500. She is particularly experienced in Internet keyword advertising, false blogs and other Internet advertising issues.

Good to know

Areas of Practice 1) Trademarks and Brand Protection, 2) Intellectual Property, 3) Brand Protection, 4) Advertising and Marketing, 5) Intellectual Property Litigation, 6) Trademark Litigation, 7) Copyrights and Licensing, 8) Domain Names and Cyber Protection and 9) Patent Litigation
Law School University of Virginia School of Law (J.D., 1986)
Education Yale University (B.A., 1982)
Bar Member / Association District of Columbia Bar Association, Virginia State Bar Association
Most recent firm Venable LLP
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