About

Mitchell C. Stein is a partner in the Intellectual Property group and Litigation department of our New York office. He focuses his practice on litigation and licensing related to software, e-commerce, drugs and medical technology, copyrights, trademarks, and rights of publicity.

He has represented companies across a wide range of industries, including software development, e-commerce, biotech, life sciences, medical devices, pharmaceuticals, sports, entertainment, gaming, fashion, and food and restaurants.

In an extensive practice, he represents start-up technology and software companies in the protection of their intellectual property rights protection and in negotiating licenses and business partnerships with Fortune 500 companies. In the biotech and life sciences fields, Mitchell has advised on laboratory service agreements, clinical trial study agreements, site facility agreements and other business arrangements, as well as worldwide trademark rights enforcement.

A prominent role in the retail sector has seen Mitchell: advise retail food manufacturers regarding trademark and advertising issues, and helped such companies to negotiate U.S. and North American distribution agreements; successfully defend a retail food manufacturer in a packaging trade dress infringement suit brought by Kellogg North America Company; represent a leading designer of premium jeans in connection with nationwide intellectual property enforcement campaign; and defend an apparel distributor and various national and regional department store chains in connection with trademark and copyright infringement suit brought by belt designer.

Furthermore, his breadth of IP experience includes handling nationwide intellectual property protection and enforcement programs, and related litigation, on behalf of, among others, Tiger Woods, Arnold Palmer, Jack Nicklaus and their licensing entities, as well as Comedy Partners (South Park), and NCP Marketing Group, Inc. (Tae Bo).

Representative Client Work

  • Represents software and technology companies in negotiating licenses and business partnerships with Fortune 500 companies
  • Advises start-up technology and software companies regarding intellectual property rights protection and licensing
  • Advises biotech companies in negotiation of laboratory service agreements, clinical trial study agreements, site facility agreements and other business arrangements
  • Advises retail food manufacturers regarding trademark and advertising issues, and helped such companies negotiate U.S. and North American distribution agreements
  • Represents various clients regarding U.S. trademark registration applications and disputes arising in U.S. trademark office
  • Obtained an injunction on behalf of a landmark New York City restaurant preventing the opening of a competitor’s restaurant using an infringing name
  • Successfully defended a retail food manufacturer in a packaging trade dress infringement suit brought by Kellogg North America Company
  • Represented medical records company in connection with data transfer agreement in connection with asset sale
  • Advised life sciences company in connection with worldwide trademark rights enforcement
  • Advised clients with respect to risks under US federal and state anti-gambling laws with respect to proposed business ventures and fantasy sports games
  • Served as general IP counsel to not-for-profit organization dedicated to combating certain medical diseases
  • Advised medical devices company with respect to responding to defamatory claims about its products
  • Successfully represented a leading manufacturer of natural enzyme and phosphate removal products for use in pools, Jacuzzis and spas in settling a patent infringement action against a competitor
  • Represented leading designer of premium jeans in connection with nationwide intellectual property enforcement campaign
  • Defended apparel distributor and various national and regional department store chains in connection with trademark and copyright infringement suit brought by belt designer
  • Represented jewelry designers in connection with the protection of their intellectual property rights and in negotiations with leading home shopping networks
  • Conducted nationwide intellectual property protection and enforcement programs, and handled related litigation, on behalf of, among others, Tiger Woods, Arnold Palmer, Jack Nicklaus and their licensing entities, as well as Comedy Partners (South Park), and NCP Marketing Group, Inc. (Tae Bo)
  • Served as outside general counsel to direct marketing companies, with responsibilities including day-to-day handling of all licensing, distribution and telemarketing-related agreements and principal responsibility for handling all litigation and arbitrations, including defense of class action lawsuit
  • Participated in developing municipal licensing programs for the benefit of the New York City Police and Fire Departments
  • Represented a fashion model in a suit against a famous photographer involving the photographer’s allegedly unauthorized use of the model’s publicity rights
  • Part of team handling representation of Bank Austria in connection with various complex U.S. litigations arising out of the Bernard Madoff Ponzi scheme
  • Represented American marine mutual indemnity and protection insurance club in complex declaratory judgment action against former club members regarding club’s obligations to indemnify former members for asbestos and other occupational disease claims