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Mark Leonardo, Nutter McClennen & Fish LLP Photo

Mark S. Leonardo

Partner / Boston

Overview

Mark S. Leonardo is a partner in Nutter’s Intellectual Property Department. Drawing on his deep experience in engineering, computer science, technology, and brand development, Mark advises clients on all aspects of intellectual property strategy, including commercial exploitation and management of patent and trademark portfolios, patent and trademark procurement, patent and trademark litigation, and opinion counseling on complex legal and technical issues.

A seasoned intellectual property lawyer, Mark regularly counsels clients in developing comprehensive patent and trademark portfolios that maximize a company’s competitive advantage and protect its products and brands; negotiating technology development, licensing, and technology transfer agreements, including software licensing; and advising on trade secrets and unfair competition. He has extensive experience in complex patent and trademark litigation and often represents technology companies in asserting patent and trademark rights and defending patent and trademark infringement claims. In addition, Mark frequently advises clients in connection with the acquisition and protection of intellectual property rights in transactions, including corporate due diligence and intellectual property investigations in conjunction with acquisitions, divestitures and mergers, secured transactions, venture financing, and public offerings.

Notable Experience and Client Impact

  • Represented private equity firms in connection with intellectual property matters regarding the companies in which they invest, including analysis of intellectual property portfolios, diligence, portfolio management, and enforcement.
  • Counselled a global sporting and apparel company in its patent and trademark portfolio procurement, enforcement, and licensing of its portfolios.
  • Represented trademark owners in transactions involving brand assets including the building, licensing, enforcement, and sale of portfolios.
  • Advised luxury goods brands in trademark and patent procurement portfolio management and enforcement actions.
  • Represented a real estate-focused private equity company as intellectual property counsel for its hotel and leisure offerings.
  • Advised companies and lenders in financing transactions that include perfecting the security interest in intellectual property rights.
  • Represented technology and consumer product companies in providing freedom-to-operate opinions and provided testimony as opinion counsel in various patent infringement litigations.
  • Counselled a well-known restaurant chain in developing and enforcing its brand portfolio.
  • Represented hotel owners in trademark enforcement and portfolio development.
  • Represented and won a trademark trial before the Trademark Trial and Appeal Board on behalf of an iconic 250-year-old international brand on grounds of likelihood of confusion, deceptiveness, and dilution in opposition to an application to register a similar brand.
  • Represented a well-known clothing brand in building its trademark portfolio, developing and implementing a nationwide licensing strategy, and selling the brand to a major sporting goods retailer.
  • Represented clients in restructuring and bankruptcy auction cases which involved assessing, transferring, and protecting intellectual property assets.
  • Represented bankruptcy auction bidders and committee members in resolving certain complex intellectual property estate causes of action against competitors including federal patent litigations.
  • Advised an iconic New York City nightclub brand on anticipated structured financing of trademark and copyright license revenues.
  • Represented a large European fashion and home retailer in building and defending its U.S. intellectual property portfolio in preparation of its U.S. launch.
  • Represented a Fortune 50 medical device company in building and defending a $100 million patent portfolio.
  • Represented a leading shoe manufacturer in defending its iconic trade-dress brand.
  • Represented a hedge fund’s intellectual property interests in its purchase of a large music and film catalog.
  • Represented companies seeking public offerings in the U.S. and AIM listings in the UK on various intellectual property matters.
  • Represented a public company in financing transactions that included perfecting the security interest of lender’s worldwide intellectual property rights in a cross-border transaction.

A leader in the intellectual property field, Mark is a member of numerous industry organizations, including:

  • International Trademark Association (INTA)
  • American Intellectual Property Law Association (AIPLA)
  • Boston Patent Law Association
  • American Bar Association
  • Massachusetts Bar Association

Mark serves as a guest lecturer and panelist at MIT, Boston University, and Babson College. He presented at Ernst & Young’s Insight Exchange CEO Roundtable in Dublin, Ireland as well as at BioConnect Ireland’s “IP Strategies for Emerging Medical Device Businesses” conference. Mark has published numerous articles, including “The Fundamentals of Intellectual Property Protection: A Primer for Biotechnology and Life Science Companies,” in The Journal of Biolaw & Business, Special Supplement: Intellectual Property; “Foreign Service of Process By Letters Rogatory,” in The Law Works; and “Exploring the Perimeters of Whole Business Securitization,” in Global Securitisation and Structured Finance.

Prior to joining Nutter, Mark was a partner in the Boston office of an international law firm. Before that, he served as a patent examiner in the biomedical and medical device arts at the U.S. Patent & Trademark Office.

News & Insights

Honors

Honors

  • Massachusetts Super Lawyers, 2004-2005

Education & Admissions

Education

Cleveland-Marshall College of Law, J.D.
University of Massachusetts, B.S., M.E.

Admissions

  • Massachusetts
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office

Industry Expertise

Mark serves as a guest lecturer and panelist at MIT, Boston University, and Babson College. He presented at Ernst & Young’s Insight Exchange CEO Roundtable in Dublin, Ireland as well as at BioConnect Ireland’s “IP Strategies for Emerging Medical Device Businesses” conference. Mark has published numerous articles on intellectual property topics.

Noteworthy

  • Massachusetts Super Lawyers, 2004-2005
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