Diane B. Melnick

Diane B. Melnick

Partner
New York, NY
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  • BIOGRAPHY
  • EXPERTISE
  • BLOG/PRESS/MEDIA

ABOUT

Diane has spent over 20 years focusing on domestic and international trademark matters, including clearance, prosecution, portfolio management, oppositions, and licensing. As a former Trademark Examining Attorney at the United States Patent & Trademark Office, Diane brings a keen perspective to and an encyclopedic knowledge of the complex issues surrounding the prosecution of U.S. trademarks. Diane has managed trademark matters for many well-known brands around the world including Eastman Kodak, Care Innovations LLC, General Electric, and Honeywell International, but has has exceptional success advising smaller companies as well.

She has significant experience that spans across many industries, including pharmaceuticals and medical devices, industrial and electronics, computer hardware and software, retail, luxury products, and financial services. She counsels clients on trademark and brand clearance, including reviewing searches for clients, and evaluating potential obstacles to registration and use of marks, advising on registrability and use of marks, prepare and file applications and allegations of use, respond to Office Actions, and prepare briefs in ex parte appeals to the Trademark Trial and Appeal Board. She also handles trademark disputes economically and efficiently.

Diane is the co-author of Chapter 6 (“Extraordinary Circumstances and Relief”) of Trademark Infringement Remedies, 3rd Edition, published by Bloomberg BNA, in association with the American Bar Association’s Section of Intellectual Property Law.

Diane is an avid reader and music lover. She appreciates the arts, in all its forms. She has been fortunate to be able to travel, to find art all around the world, in the museums she’s visited, the architectural details in the cities she’s explored, the food she’s tried and the wine she’s enjoyed. For her, artistic expression is all around us, you just have to take a moment to look for it.

PRACTICE AREAS

ADMISSIONS

  • District of Columbia 1995
  • Eastern District of Michigan
  • Eastern District of New York
  • Michigan 1992
  • New York 2001
  • Southern District of New York

LANGUAGE

  • English

EDUCATION

Emory University School of Law
J.D
University of Michigan – Honors Program
B.A. in Political Science

FUN FACTS

FAVORITE QUOTE

Favorite Quote

“When people tell you who they are, believe them.”

Maya Angelou
  • Favorite Book
    Favorite Book

    The Joy of Cooking by Irma S. Rombauer

  • Favorite Song
    Favorite Song

    “Shelter from the Storm” by Bob Dylan

  • Favorite Movie
    Favorite Movie

    The Big Chill

  • Favorite Vacation
    Favorite Vacation

    Barcelona, Spain

  • Favorite Meal
    Favorite Meal

    New York City pizza…thin crust

  • Favorite Artist
    Favorite Artist

    Edward Hopper

ALTERNATE CAREER PATH

Alternate Carrer Path

If I weren’t a lawyer, I would be a psychologist.

PRACTICE AREAS

ADMISSIONS

  • District of Columbia 1995
  • Eastern District of Michigan
  • Eastern District of New York
  • Michigan 1992
  • New York 2001
  • Southern District of New York

LANGUAGE

  • English

EDUCATION

Emory University School of Law
J.D
University of Michigan – Honors Program
B.A. in Political Science

RELEVANT EXPERIENCE

Prior to joining Practus, Diane served as Counsel at Powley & Gibson, where she focused on trademark and IP counseling, clearance and prosecution, and domestic/international disputes and oppositions, primarily for small and mid-sized clients. She previously worked at a large Wall St. law firm, in-house at both Honeywell and GE, as well as a joint venture in the healthcare space, now known as Care Innovations, LLC.

As a former Trademark Examining Attorney at the United States Patent & Trademark Office (USPTO), Diane examined applications to determine registrability of thousands of trademarks, issued statutory refusals and procedural requirements on all issues, prepared appeal briefs before the Trademark Trial and Appeal Board, and counseled new examining attorneys on agency practice and trademark law.

In each of these diverse environments, she handled trademark counseling, clearance and prosecution for domestic and non-U.S. trademarks, as well as trademark searches, applications, and disputes, and managed portfolios of trademarks around the world to enhance the brand identity and value of her clients.

Diane’s areas of expertise include:

Intellectual property, Trademarks, Copyrights, Corporate Transactions, Domestic and International Trademark matters, Licensing, Prosecution, USPTO, Marks, Trademark Counseling, Trademark Policing, and Enforcement


REPRESENTATIVE MATTERS

Filed trademark applications and handled other branding issues for the launch of innovative joint venture in the area of telehealth.

Managed global trademark portfolio for two multi-national conglomerates, unifying companies’ respective brand identities across disparate areas, including health technologies, consumer products, aerospace, and industrial equipment.

Handled complex issues of trademark clearance and prosecution for an innovative pharmaceutical for use as an adjunct therapy for epilepsy.

 

 

TALKS/SEMINARS

17th All Ohio Institute on Intellectual Property, “Trademark Office Practice Tips,” Sept. 18 & 19, 2007.

International Trademark Association, Annual Meeting 2007: “USPTO Practice Developments – Examination Guides” (led roundtable discussion)

PROFESSIONAL ASSOCIATIONS & BOARD MEMBERSHIPS

International Trademark Association; Association of the Bar of the City of New York

PRESS

Co-authored Chapter 6 (“Extraordinary Circumstances and Relief”) of Trademark Infringement Remedies, 3rd Edition, published by Bloomberg BNA, in association with the American Bar Association’s Section of Intellectual Property Law.

Assisted in editing three online research resources published by the International Trademark Association: Country Guides: Essential Information on Trademark Protection Worldwide, International Opposition Guide: Comparative Practice and Procedures, and Practical Guide to the Madrid Agreement and Protocol (2009)

INTA Practice Guides


CONNECT WITH ME

At Practus, we handle complex and challenging legal matters. I look forward to talking to you about how we can best meet your goals.

CONTACT ME
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