Stephen Feingold focuses his practice on trademark, copyright, advertising and Internet law. Trained as a litigator, Mr. Feingold currently divides his time between litigation and transactional projects advising clients with their most complicated trademark, copyright and Internet issues.
On the litigation front, Mr. Feingold has extensive knowledge in the area of trademark fair use and argued before the Third Circuit Court of Appeals in the case leading to that Circuit's first definitive ruling on the standards for establishing the fair use defense. He has also successfully obtained injunctive relief against John Doe defendants perpetuating consumer fraud and trademark on the Internet.
Mr. Feingold's transactional practice is similarly involved with many emerging issues. He is currently advising several clients with respect to the implementation of social networks and the integration of other new media into their business plans. He has also handled complicated licensing agreements with respect to online gaming, merchandising and the implementation of dealer networks to combat the unauthorized sale of gray market goods. In connection with his Internet practice, Mr. Feingold has also advised many clients with respect to privacy related issues and has counseled clients with respect to data breach and notification issues.
Mr. Feingold also leads several teams of lawyers handling the worldwide portfolios of several global companies and in connection with that work has advised clients on international enforcement and registration issues. A hallmark of his approach to portfolio maintenance is to assist clients to reduce costs by restructuring their portfolios so that there is a symmetry between the amount of legal spend for each brand that relates to how much that brand contributes to the clients' bottom line. One client was able to reduce its trademark budget by more than 50 percent after transferring its portfolio from another firm.
While his practice is not limited to any one industry, he has significant experience with the hospitality, gaming, real estate and educational publishing industries. He also has represented several major entertainment brands and in the past has done extensive work for both financial and pharmaceutical companies. Reflecting his commitment to the public interest, he has provided pro bono services to several not-for-profit companies including the American Conference for Diversity and Moving Traditions.
In 2011, Kilpatrick Townsend was awarded the prestigious IP Magazine Domain Name/Online Strategy of the Year Award for its innovative patent-pending domain name evaluation tool – the Namealizer™. The Namealizer™ is the brainchild of Mr. Feingold, who oversaw the creation of a Web application that provides an easy and quick way to determine if a particular domain name is causing actual injury to a brand or is merely an annoyance. It also provides a record of the client’s enforcement efforts, thereby avoiding arguments against selective enforcement. In 2011, Mr. Feingold also co-edited and co-authored two chapters on trademark law and the Internet in the recently released "Intellectual Property Law in Cyberspace" published by BNA.
Mr. Feingold is active in many bar associations and has chaired various committees for the IP Section of the ABA, the New York Intellectual Property Law Association, and INTA. In 2002, he was awarded INTA's Volunteer of the Year Award. He is also a Fellow of the American Bar Foundation. Mr. Feingold was a recipient of the Vanderbilt Prize upon graduation and was recognized as a New York "Super Lawyer" in the area of IP Litigation by Super Lawyers magazine in 2013 and the four years immediately preceding. In 2011, he was recommended in the area of Non-Contentious Trademark Law by Legal 500 US. Mr. Feingold is AV® rated by Martindale-Hubbell.*
*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.
Professional & Community Activities
American Bar Association, Fellow, Member of the Intellectual Property Section and Former Chair of the Trademark Subcommittee
American Management Association, Sales and Marketing Executive Council
Fordham University Law School, Adjunct Professor of Trademark Law (since 2002)
The Intellectual Property Strategist, Editorial Board Member
International Trademark Association, Member and Past Meetings Board Member
Internet Law & Strategy, Editorial Board Member
New York Intellectual Property Law Association, Member, Trademark Committee, Former Chair
The Privacy and Data Protection Legal Reporter, Editorial Board Member