Kevin M. Wallace

Associate

New York
T +1.212.589.4637
F +1.212.589.4201

Overview

Kevin Wallace is an international brand protection attorney, counseling clients on all facets of trademark matters, ranging from trademark creation and clearance to brand enforcement. He advises established companies and start-ups worldwide trademark selection, clearance and registration strategy. He also provides counsel on acquiring and monetizing new brands. Drawing from his commercial litigation experience, Kevin represents clients in U.S. Patent and Trademark Office proceedings and federal district court litigation, and oversees a network of foreign counsel to enforce and defend clients’ trademark rights. Notably, Kevin has particular experience managing trademark and copyright anti-counterfeit enforcement programs for worldwide fashion brands, including conducting ex parte seizures of knockoffs.

While in law school, Kevin served as the editor-in-chief of both the St. John's Law Review and the Journal for Catholic Legal Studies. Upon graduation, Kevin received the Chief Judge Edward B. Rea Award for his outstanding scholarship and service to the law school.

Select Experience

  • Manages anti-counterfeiting enforcement for global fashion brands, including representing clients in civil seizure actions in the Southern and Eastern Districts of New York, supervising anti-counterfeiting investigations, and obtaining preliminary and permanent injunctions and monetary judgments against counterfeiters.
  • Litigated counterfeiting and contributory liability claims against New York-based landlords renting to counterfeiting tenants. Negotiated monetary settlements of these claims and continued monitoring of real property.
  • Manages worldwide trademark portfolios for software and technology companies and digital media publishers. Counsels clients on expanding domestic portfolios of expanding business into foreign jurisdictions.
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Experience

  • Manages anti-counterfeiting enforcement for global fashion brands, including representing clients in civil seizure actions in the Southern and Eastern Districts of New York, supervising anti-counterfeiting investigations, and obtaining preliminary and permanent injunctions and monetary judgments against counterfeiters.
  • Litigated counterfeiting and contributory liability claims against New York-based landlords renting to counterfeiting tenants. Negotiated monetary settlements of these claims and continued monitoring of real property.
  • Manages worldwide trademark portfolios for software and technology companies and digital media publishers. Counsels clients on expanding domestic portfolios of expanding business into foreign jurisdictions.
  • Advises clients on acquiring new brands, including managing due diligence of third-party trademark portfolios.
  • Oversees clients’ global trademark enforcement matters. Represents clients in opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board and manages foreign opposition and cancellation proceedings across five continents. Also negotiates resolutions to domestic and foreign proceedings, including drafting coexistence agreements.
  • Represents a global fashion brand in domestic anti-counterfeiting, trademark, trade dress and copyright enforcement matters.
  • Advises clients on licensing opportunities to expand reach of existing trademark portfolios.
  • Advised an internet security software company on native advertising, including FTC and self-regulatory issues involving consumer notice and disclosure. Also advised on trademark issues and potential litigation risks for native advertising and customer support service issues.
  • Assists digital media companies on issues involving the Digital Millennium Copyright Act (DMCA), including enforcing clients’ copyrights by sending cease-and-desist letters and takedown notices under the DMCA. Also advises clients on responding to DMCA takedown notices.

Recognitions and Memberships

Memberships

  • International Trademark Association
  • American Bar Association
  • New York State Bar Association
  • New York City Bar Association
  • Queens County Catholic Lawyers' Guild

Pro Bono

  • Advises nonprofit organizations on trademark matters including brand protection, creation, and curation.
  • Involved in the New York office’s collaboration with Her Justice (formerly InMotion), representing low-income women living in New York City in the obtainment of child support, custody, divorce and other legal assistance.
  • Won asylum for a Guyanese student who faced persecution from her home government.
  • Assisted in the representation of two minors from Hong Kong seeking Special Immigrant Juvenile status in their appeals in New York state courts.

Prior Positions

  • BakerHostetler Summer Associate (2013)
  • Judicial Intern for the Honorable Joanna Seybert of the United States District Court for the Eastern District of New York (2012)

Admissions

  • U.S. Supreme Court
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • New York, 2015

Education

  • J.D., St. John’s University School of Law, 2014, cum laude; Editor-in-Chief, St. John's Law Review; Editor-in-Chief, Journal for Catholic Legal Studies
  • B.A., College of the Holy Cross, 2011, cum laude

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case
By Megan A. Corrigan, Nancy Rubner Frandsen, Kevin M. Wallace
April 24, 2020
The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By...
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IP Intelligence: Insight on Intellectual Property
3M Joins the Fight Against Rampant Price Gouging
By Brady P. P. Cummins, Kevin M. Wallace
April 21, 2020
Private enterprise has joined state and local governments in the fight against rampant price gouging during the COVID-19 pandemic. In response to the pandemic, state and local governments across the country have declared states of...
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IP Intelligence: Insight on Intellectual Property
US Government Cracks Down on Counterfeits in 2020
By Robertson D. Beckerlegge, Megan A. Corrigan, Heather J. McDonald, Kevin M. Wallace
March 18, 2020
Combating counterfeit goods has become a serious focus of the U.S. government in 2020. This article is the first in an ongoing series about the actions being taken in this fight and the implications for e-commerce platforms and companies...
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