Brian J. Winterfeldt, the Founder and Principal of Winterfeldt IP Group, has practiced trademark and Internet law for nearly 25 years.
Brian J. Winterfeldt, the Founder and Principal of Winterfeldt IP Group, has practiced trademark and Internet law for nearly 25 years. He specializes in intellectual property, copyright, domain names, enforcement, ICANN, Internet, policy, social media, trade dress, trade secrets, trademark counseling & prosecution, trademark enforcement, and transactions.
Brian holds a JD from Georgetown University Law Center, an MA from Tulane University, and a BA from Emory University. He is admitted to practice in the District of Columbia and New York.
Building on his years of experience in large, global law firms, Brian has created a firm dedicated to providing organizations and individuals with the highest caliber trademark and Internet-related legal and policy services. Brian has assembled a team of top talent that provides a personalized, concierge-style client service experience at exceptional value.
Brian advises clients on the creation of global trademark and branding strategies. He develops programs to register and enforce clients’ intellectual property rights and protect against infringement of their trademarks and other branding elements in the US and internationally. This includes domestic and international trademark counseling, clearance, prosecution, and enforcement. Brian also advises clients on trade dress, copyright, Internet governance, and domain name issues, including domain name disputes such as UDRP and URS complaints, and other similar processes for ccTLDs to disable or recover infringing domain names. He regularly counsels global leaders across various industries including apparel and footwear, consumer products, entertainment and media, financial services, food and beverage, health & fitness, hospitality, insurance, Internet and technology, luxury goods, nonprofit/charitable organizations, pharma, retail, spirits, and telecom.
Brian is an expert on the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) new generic top-level domain (gTLD) program. Surrounding the 2012 new gTLD application round, his practice participated in drafting and prosecuting over 200 applications for new gTLDs, representing over 10% of the total applicant pool. He has continued to support new gTLD applicants and operators, particularly brand owners, by negotiating related agreements and advising them on the legal and policy work needed to support their registries. He has represented both applicants and objectors in dozens of new gTLD objection proceedings and advises new gTLD operators on ongoing ICANN compliance matters. Brian counsels clients on preparing for future new gTLD application rounds, including the selection of potential gTLD strings and guidance on ongoing policy matters affecting brand owner new gTLD operators.
As the new gTLD program has significantly changed the Internet landscape, Brian also develops advocacy and enforcement strategies for brand owners. This includes advice on registering trademarks in the Trademark Clearinghouse (TMCH) and assessing domain name portfolio management strategies, including both proactive domain name registrations and enforcement against infringing registrations. Brian and his team track ICANN policy matters affecting brand owners on the enforcement side, such as developments relating to rights protection mechanisms, and counsel clients on relevant advocacy opportunities. He is a member of ICANN’s Intellectual Property Constituency (IPC), serving as a voice for brand owner concerns in Internet policy development. He has held leadership roles within the IPC for several years, including serving as a past IPC President, four years as a representative for the IPC on ICANN’s Generic Names Supporting Organization (GNSO) Council, the body that creates global domain name policy, as well as IPC Treasurer.
Brian regularly counsels clients and provides training on cutting-edge Internet issues such as social media platforms, including developing and administering social media policies and promoting and protecting clients’ brands in this ever-evolving space. He supports clients by managing takedowns of infringing profiles and content while advising on proactive uses of social media to strengthen online brand presence. Brian frequently partners with technology providers to develop and execute large-scale digital brand protection programs that encompass domains and websites, mobile apps, online marketplaces, and social media. He advises clients on the protection of their marks in connection with non-fungible tokens (NFTs), including proactive development and offering of NFTs by brand owners and protection against unauthorized use of trademarks and other intellectual property in third-party NFTs.
As a prominent voice in the IP arena, Brian has written numerous articles on trademark law and is a frequent speaker at industry events on topics such as trademark law, Internet governance, and social media. He has been an active member of the International Trademark Association (INTA) throughout his entire legal career and has served in leadership roles for much of that time, including recently serving a three-year term on INTA’s Board of Directors. His prior INTA experience includes leadership roles on the Internet Committee, service on other committees such as the Anti-Counterfeiting and Brands and Innovation Committees, serving on several INTA conference project teams including as a co-chair, and receiving various INTA service awards. He currently serves as a Board member of INTA's Political Action Committee (PAC).
Brian also recently served a three-year term on the Trademark Public Advisory Committee (TPAC) following an appointment by the Commissioner of the United States Patent and Trademark Office (USPTO). TPAC comprises top trademark practitioners from in-house and private practice, who serve in an advisory capacity to assist the USPTO with all aspects of its trademark activities, including registration, policy, technology, and budgets.
In addition to his IP practice, Brian is a leading advocate for diversity and inclusion in the legal industry. Throughout his career, he has actively participated in diversity-related legal organizations such as the Institute for Inclusion in the Legal Profession (IILP), for which he has published articles and spoken at several symposia, the Minority Corporate Counsel Association (MCCA), and the LGBTQ+ Bar, for which he chaired an Intellectual Property Law Institute during the organization’s annual Lavender Law conference for several years. His support of the diversity community also includes pro bono services for organizations focused on women’s issues and persons with disabilities. He has organized and hosted diversity-related panels and participated as a speaker in clients’ diversity events.
Brian previously served on the Board of Directors for The Trevor Project, the leading provider of suicide prevention and crisis management services for lesbian, gay, bisexual, transgender, and questioning youth in the United States, including serving as Secretary for Trevor's Executive Committee. He was awarded the prestigious Rainmaker Award by the Minority Corporate Counsel Association in 2013, an award given to only 15 diverse partners in the United States who distinguish themselves by being leading practitioners with robust practices. In 2018, Brian was named to the OUTstanding Top 100 LGBTQ+ Executives list.
Brian was recently appointed by INTA to serve as an inaugural member of its DEI Council, which was newly formed at the request of INTA's CEO to address diversity, equity, and inclusion issues in the trademark field. Winterfeldt IP Group is one of only a handful of certified LGBTQ+-owned law firms in the United States and has accordingly been certified by the National LGBT Chamber of Commerce (NGLCC) and is a member of the National Association of Minority and Women Owned Law Firms (NAMWOLF), for which Brian is a member of the Intellectual Property Practice Area Committee (IP PAC).
Strong brand protection is important for all organizations, particularly when they are providing critical, or even lifesaving, services to benefit their local communities. However, nonprofit and charitable organizations may have limited budgets for legal services. Throughout his career, Brian has demonstrated a commitment to pro bono service, particularly to organizations serving diverse populations. Pro bono clients of the practice have included organizations providing services to LGBTQ members of the community, including youth; women and girls seeking leadership opportunities; persons with disabilities; and sexual assault survivors. Clients also include arts, cultural, and environmentally-oriented organizations. Pro bono services may include the full range of Winterfeldt IP Group legal services, including trademark counseling and prosecution, enforcement, domain name management and enforcement (including in connection with the new gTLD program), social media counseling and enforcement, and transactional/agreement matters. Brian was awarded INTA’s 2014 Volunteer Service Award for Pro Bono Services, largely in connection with his extensive pro bono work for diversity-related organizations. Brian also recently received the President's Award from United Cerebral Palsy, a leading disability advocacy organization, in recognition of his substantial pro bono work on behalf of this organization.
