Kevin M. Wallace

He | Him | His

Associate

New York
T +1.212.589.4637
F +1.212.589.4201

Overview

Kevin Wallace is a senior international brand protection attorney, counseling clients on all facets of trademark matters, from trademark creation and clearance to brand enforcement and litigation. Kevin’s areas of concentration include managing international trademark portfolios, litigation in federal court and before the Trademark Trial and Appeal Board and supervising anti-counterfeiting programs.

Leveraging his technology background, Kevin advises clients from start-ups to Fortune 500 companies on creating, growing and enforcing their brands in an ever-evolving digital world. He focuses on providing clients with holistic brand strategies based on his understanding and appreciation of their business needs.

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
Decentralized Domains: Metaverse Land Grab
By Lisa Bollinger Gehman, Kevin M. Wallace, Deborah A. Wilcox
June 1, 2022
As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise...
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IP Intelligence: Insight on Intellectual Property
Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions
By Nancy Rubner Frandsen, Kevin M. Wallace
September 22, 2021
On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2...
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IP Intelligence: Insight on Intellectual Property
USPTO Implementing Trademark Modernization Act
By Kevin M. Wallace, Deborah A. Wilcox
May 27, 2021
Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making[1] to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020.[2] The public...
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