Biography

Donna A. Tobin focuses her practice on intellectual property and has been providing large and small clients in various industries, including the health and wellness, financial services and food and beverage industries with trademark litigation, prosecution, and counseling services for over thirty-five years. Intellectual property is at the forefront of new technologies and industries and Ms. Tobin continually adapts and expands her practice to address them, such as cannabis and non-fungible tokens ("NFTs"). In 2017 Donna was appointed by the U.S. Secretary of Commerce to serve a three-year term on the Trademark Public Advisory Committee ("TPAC") of the U.S. Patent and Trademark Office including as a member of the Office of Policy and International Affairs subcommittee. She is also the editor of Trademarks Throughout The World,  a Thompson Reuters publication. 

Client Experience

  • Private equity funds/family offices with portfolios of food companies

  • Cheese and ice cream manufacturers, retailers, and distributors

  • Ethnic food manufacturers and distributors
  • Furniture companies

  • Fabric companies

  • Cannabis companies
  • Jewelry, fabric, and furniture designers

  • Founder and lead singer of a hardcore band

  • Start-up eyewear company

  • Start-up sock company

  • Menswear company

  • Airlines

  • Film production companies

Personal Insights

My Greatest Strengths
  • Keeping my eye on the client's goals in litigation

  • Delivering value for clients

  • Being invested in outcomes

  • Enjoying my work, my clients, and my partners

  • Mentoring associates and being accessible

I WANT YOU TO KNOW
  • I was named in the World Trademark Review (WTR) 1000: The World’s Leading Trademark Professionals for Enforcement and Litigation, Infringement, and Prosecution and Strategy.

  • I was named a 2021 Leader in World Intellectual Property Review (WIPR), a guide to the world’s leading IP practitioners.
  • I was appointed in 2017 by the U.S. Secretary of Commerce to serve on the Trademark Public Advisory Committee (TPAC) of the U.S. Patent and Trademark Office.

  • I have practiced IP law for over 35 years and have loved it every day.

  • I function as in-house counsel to food and dairy companies.

  • I was named a top Intellectual Property attorney by New York Super Lawyers in 2020, 2021 and 2012.

  • I am recognized by Best Lawyers.

WHAT MAKES ME UNIQUELY ME 
  • I am a native New Yorker and was born and raised in Queens.

  • I own and ride a Vespa.

  • I am a fan of Liverpool Football Club and have been to Anfield Stadium 3 times.

Focus

Practice Focus
  • Cheese and Dairy

  • Wine and Beverages

  • Textiles and Furniture

  • Eyewear, Clothing, and Socks

  • Financial Institutions

  • Banks

  • Cannabis

News

Publications
  • Publication, RCCB Litigation Alert, February 18, 2022
  • Speaking Engagement, Alt Legal , December 9, 2021
  • Publication, RCCB Intellectual Property Alert, September 2, 2021
  • Publication, RCCB Intellectual Property Alert, April 2021
  • Publication, RCCB Litigation Alert, February 2021
  • Video, Darshan Kulkarni Interview Series, October 21, 2020
  • Publication, Thomson Reuters, 2020
  • Publication, RCCB Intellectual Property Alert, May 21, 2020
  • Topic of Geographical Indications
    Speaking Engagement, Federation Internationale de Conseilles en Propriete Intellectuelle Open Forum in St. Petersburg, Russia
  • Geographical Indications: Practical Approaches for Companies Inside and Outside the US
    Speaking Engagement, International Trademark Association Annual Meeting, May 20, 2019
  • Creating a Trademark/Brand Strategy to Leverage IP Rights to their Fullest and Increase a Company’s Valuation 
    Speaking Engagement, Managing Intellectual Property’s Annual Trademark Forum, New York, March 14, 2019
  • Lessons on Leadership 
    Speaking Engagement, Managing Intellectual Property’s International Women’s Leadership Forum, Menlo Park, California, December 4, 2018
  • Ask the Expert
    Speaking Engagement, American Cheese Society’s Annual Conference, July 27, 2018
  • Effective Brand Protection Strategies
    Speaking Engagement, Managing Intellectual Property Global Trademark Roadshow at Convene, New York City, March 15, 2018
  • International Considerations and Licensing
    Podcast, American Cheese Society , February 15, 2018
  • Strategies for Launching and Maintaining a Brand, Trademarks Playbook for General Counsel: The Guide from Legal Brand Strategies for the New York City Bar CLE
    Speaking Engagement, New City Bar CLE, January 19, 2018
  • Advanced Trademark
    Podcast, American Cheese Society webinar, January 18, 2018
  • Intellectual Property Rights Overview 
    Podcast, American Cheese Society webinar, December 14, 2017
  • Intellectual Property Rights Overview
    Podcast, American Cheese Society webinar, September 28, 2017
  • Update of US Trademark Law
    Speaking Engagement, FICPI 2017 Europe/Canada/US Conference, March 13, 2017
  • Licensing a Brand Abroad - What Clients and Their Counsel Need to Know 
    Speaking Engagement, PLI, February 2, 2017

Community & Professional

Community & Professional
  • Fédération Internationale Des Conseils En Propriété Intellectuelle (FICPI), Member
  • International Trademark Association (INTA), Committee Member  
  • Cornell University Adult University, Advisory Board Member
  • New York City Bar Association Member - Trademarks Subcommittee

Education

J.D., Boston University School of Law, 1985

B.S., Cornell University, 1982

Admissions

  • New York State Courts
    U. S. District Courts for the Southern, Western and Eastern Districts of New York
    Second Circuit Court of Appeals
    Ninth Circuit Court of Appeals
    Federal Circuit Court of Appeals

Honors

World Trademark Review (WTR) 1000: The World’s Leading Trademark Professionals

  • Enforcement and Litigation and Infringement, 2021
  • Prosecution and Strategy, 2021
  • Prosecution and Strategy, 2022

2021 Leader in World Intellectual Property Review (WIPR), a guide to the world’s leading IP practitioners

New York Super Lawyers, Intellectual Property, 2020 and 2012

Best Lawyers in America, 2021

EuroMoney Women in Business Law Expert Guide, 2021

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