Marc H. Trachtenberg

Services for Intellectual Property Owners

Marc represents clients of all sizes in matters involving promotion and protection of their intellectual property, both online and in the brick-and-mortar world. In this capacity, he advises clients and helps them implement comprehensive strategies to protect their intellectual property rights, identifies threats to their online brand presence, including through domain name and social media abuse, and aggressively enforces these rights on their behalf.

Marc has recovered or shut down thousands of problematic domain names, social media accounts, email addresses, and content using platform-specific takedown processes, dispute resolution processes like the UDRP, and civil litigation remedies including the Anticybersquatting Consumer Protection Act (ACPA). Marc prefers informal, and cost-effective approaches to dispute resolution, and leverages his extensive network of registry, registrar, e-commerce, social media, online platform, and law enforcement contacts to that effect. 

Marc regularly provides advice and counsel to intellectual property owners in the following areas:

• Recovery or suspension of infringing or abusive domain names, social media handles, email addresses, and mobile apps
• Phishing, pharming and other fraudulent attacks
• Trademark and copyright protection and enforcement
• Purchase and sale of domain names and IP addresses
• Removal of problematic website and social media content
• Sponsored search and online advertising abuse
• Fraudulent or abusive email address and message issues
• Distribution of counterfeit / infringing products online
• Online marketplace issues
• Website terms of use and other policies
• ICANN and internet governance

Services for Registrars, Registries, E-Commerce, Social Media, and Other Online Platform Providers

Marc has actively participated in ICANN for over 20 years and regularly advises some of the largest registries, registrars, e-commerce, social media, search engine, and other online platform providers. He participated in over 40 new gTLD applications and is counsel to the Brand Registry Group.

Based on his experience as a software consultant focused on enterprise class software-as-a-service offerings and obtaining ICANN-accreditation for a domain name registrar and the running all aspects of the registrar business, Marc is well positioned to advise and assist domain name registrars, registries, and virtually all manner of online platforms and intermediaries including:

• ICANN compliance issues
• Registry/Registrar agreements and policies
• Platform policies and intellectual property issues
• New gTLD applications and issues
• Sale and acquisition of new gTLD registries
• Co-promotion and other partnership programs
• Review, negotiation, and drafting of technology usage, licensing, and development agreements

Technology Development, Licensing and other Transactional Services

Marc regularly counsels clients and drafts and reviews agreements related to the development and licensing of various technologies and related transactions including:

• Software and platform development and licensing
• Consulting services
• Purchase and sale of domain names, TLDs, and IP addresses
• Other technology-related transactions

Advertising, Marketing, Promotions, and Sponsorship Services

Marc has represented and advised some of the world’s largest brand owners and advertising agencies regarding their advertising and promotional campaigns. He has provided counsel and helped clear numerous national and international advertisements and promotions, including a sweepstakes for a large software manufacturer that was conducted in more than 30 countries and numerous television commercials shown during the “Big Game.”

Marc also works on high-value sponsorship agreements on both the sponsor side and property side, including those involving celebrities, professional sports teams, landmarks, and internationally televised events. He has drafted, reviewed, and negotiated sponsorship agreements for numerous professional football and baseball teams.

Blockchain, Cryptocurrency, NFTs, and Other Innovative Technologies

Marc is also very active in the area of Blockchain, Cryptocurrency, NFTs, and other innovative technologies such as 3D printing and artificial intelligence. He advises clients regarding the potential implications of such technologies on their intellectual property rights and business processes and has spoken on these topics on numerous occasions, including for the International Trademark Association INTA), Asociación Interamericana de la Propiedad Intelectual (ASIPI), The Pharmaceutical Trademark Group (PTMG), The United States Patent and Trademark Office, and the Department of Homeland Security (DHS).

Outside General Counsel Services

Marc is outside general counsel to a well-known trade association that operates through a network of over 200 chapters in 100 countries which focuses on information security and cybersecurity and offers a number of well-known certifications and related educational services and offerings. He also worked on the in-house legal team for one of the largest consulting companies in the world on a secondment basis.  Marc is practical and business-oriented and can advise companies of all types with small legal departments on how to appropriately and cost-effectively manage legal risk while still pursuing their business objectives.