Janet Satterthwaite is an experienced and versatile trademark attorney, uniquely capable in all aspects of global trademark prosecution and strategic counseling as well as litigation at the first-chair level. Clients appreciate her seamless, practical, one-stop guidance on counseling, prosecution and portfolio management, licensing, enforcement/litigation, and cyberspace problems. She takes the client from domestic and global selection, clearance and adoption of brands, to brand protection/registration strategy and execution, brand enforcement and licensing strategy, domain name and Internet strategy, and litigation as necessary.

Trademark: Ms. Satterthwaite has been a leading member of Venable's Trademarks, Copyrights and Domain Names practice group since 1996, which makes her the longest-serving member of the Venable Trademark Group. She has prosecuted trademarks in the U.S. and worldwide for over 20 years. Her group ranks highly in two benchmark annual reports: ninth in U.S. trademark applications filed (Trademark Insider, pub. 2010); and 12th in U.S. trademark registrations issued (Intellectual Property Today, pub. 2010). The group is ranked Tier 1 nationally and in Washington, DC (U.S. News - Best Lawyers "Best Law Firms,” 2011-2012). Ms. Satterthwaite is assisted by a skilled team of associates, paralegals and junior partners. In 2011, Ms. Satterthwaite served as an expert witness in a U.K. patent litigation on a specific issue of U.S. Trademark Prosecution Law and Practice.

Internet and Domain Names: Ms. Satterthwaite is recognized as a leading international professional on "best practices" in responding to the rapidly changing problems of brand protection on the Internet, and for this work, was elected to the International Who's Who of Internet, e-Commerce & Data Protection Lawyers for 2011. Ms. Satterthwaite is head of Venable's Domain Name and Cyberpiracy Team, which guides clients through challenges to brands in cyberspace, including Internet domain name disputes and worldwide domain name registration and policing strategies, keyword advertising disputes, online misuse of trademarks, online counterfeiting, false blogs, phishing and data security, and social media. Ms. Satterthwaite has been practicing and influencing domain name and Internet law since 1995.

This most significant change to the Internet in a decade launched in January 2012, when applications for unlimited new top-level domains are being accepted. Ms Satterthwaite is guiding a major firm client through the application process for a new top-level domain. Since 2009, Ms. Satterthwaite has been participating in interactions and meetings with, and has submitted comments to, ICANN, the Internet Corporation for Assigned Names and Numbers, on behalf of trademark owners' organizations and individual clients to ensure that new generic top-level domains include adequate trademark rights-protection mechanisms.
 
She also advises clients on evolving internationalized domain names, and, in 2010, helped a client register one of the first all-Cyrillic domains. In 2011, she coordinated blocking a wide range of client brands, from insurance to Hollywood celebrities, from the launch of the .xxx adult entertainment domain space.

Litigation: Ms. Satterthwaite is a seasoned trademark litigator and has been lead litigation counsel at Venable on many trademark, domain name, copyright and false advertising lawsuits in federal courts, often in New York, Virginia and Maryland, as well as California, Connecticut, New Jersey, Ohio, Louisiana, Colorado, New Mexico, Iowa, Florida, South Carolina, Texas and North Carolina. Many of these cases resulted in preliminary and permanent injunctions in favor of her clients. She also handles dozens of administrative litigation matters before the Trademark Trial and Appeal Board and provides trademark law and survey expert support to numerous trademark litigation matters handled by other Venable colleagues, including landmark cases such as Wal-mart v. Samara (U.S. Supreme Court ) and Gibson Guitars v. Paul Reed Smith (6th Circuit).

Counterfeiting: Ms. Satterthwaite led the Venable team which filed amicus briefs on behalf of perfume manufacturer Coty, Inc., in the Second Circuit Court of Appeals in 2008 and the United States Supreme Court in 2010 in Tiffany v. eBay, which addressed the scope of liability of online market places to prevent the sale of counterfeits. She is working with a client in the consumer goods sector on strategies to work with Customs towards better identification of counterfeit merchandise. Ms. Satterthwaite is a member of the U.S. Chamber of Commerce's Coalition Against Counterfeiting and Piracy (CACP).

Advertising: Ms. Satterthwaite is a member of Venable's Advertising and Marketing team, which was selected in 2010 as a recipient of the Chambers USA Award of Excellence and recognized by Legal 500. She is particularly experienced in Internet keyword advertising, false blogs and other Internet advertising issues.

Representative Clients

Representative Recent Litigation Cases as Lead Counsel

2012: Argued and obtained temporary restraining order and expedited discovery from third parties on behalf of prominent hedge fund who was being impersonated on the Internet by a Ponzi scheme, resulting in immediate shut down of the key website (U.S. District Court for the District of Connecticut)

2011: Concluded successful copyright infringement suit and award of damages, on behalf of a publisher (U.S. District Court for the Middle District of North Carolina)

2010-2011: Obtained cancellation of opponent's Swiss trademark registration and successfully defended client's U.K. registration as part of complex ongoing multinational trademark rights dispute in the financial services industries (Swiss federal court, Basel, and U.K. Intellectual Property office--supervising Swiss and U.K. counsel)

2010: Argued and obtained preliminary injunction, permanent injunction and damages for misuse of client trademarks in search engine keywords and false advertising (U.S. District Court for the Middle District of Louisiana)

2010: Led Amicus Curiae team for Coty, Inc. in Tiffany v. eBay in support of Tiffany's suit against online counterfeits (U.S. Supreme Court)

2010: Successfully fended off challenge to major retailer's credit and loyalty card logo by major credit card issuer (U.S. Trademark Trial and Appeal Board)

2009: Successful lawsuit to recover domain name on behalf of famous resort town in Switzerland (Eastern District of Virginia)

2009: Obtained permanent injunction against unfair competition by British employment website on behalf of multinational insurance company (Eastern District of Virginia )

2008: Amicus Curiae brief in Second Circuit Court of Appeals on behalf of Coty, Inc. in Tiffany v. eBay

2008: Obtained permanent injunction against trademark infringement and recovered domain name (Southern District of New York and Eastern District of Virginia)

2008: Obtained permanent injunction against misuse of client's trademark and recovered domain name (Central District of California)

2008: Obtained key domain name for financial services client from Korean infringer (Eastern District of Virginia)

2007: Obtained permanent injunction and damages in trademark infringement suit by retirement community against real estate development (District of Maryland)

2006: Obtained permanent injunction against developer who was planning to infringe name of famous historic hotel in Rocky Mountains (District of Colorado)

Representative Successful Domain Name Disputes

Alestra, S. de R.L. de C.V. v. Richard Martin, Case No. D2006-1587 (representing respondent)

Damon’s Restaurants, Inc. v. JBR Enterprises, Inc.,Case No. D2007-1603 (representing respondent)

Enzymatic Therapy, Inc. v. VNF Nutrition, Case No. D2001-1310

Factory Mutual Insurance Company v. VW Names, Case No. D2008-1014

Factory Mutual Insurance Company v. Rhianna Leatherwood, Case No. 2009-0144

Hairmarker LLC/Colormetrics v. Element Design Studio, Nominet DRS No. 5200 (January 2008)

Imperial Chemical Industries PLC v. Maxi services, Case No. D2006-0156

International Data Group, Inc. v. K. McGovern, Case No. D2005-0960

K Capital Corporation v. Yang, HaeHyun사건번호, Case No. D2007-1115

Laureate Education Inc. v. Ahmed Altadbeek RE: (YW), Case No. D2010-1085

Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, Case No. D2004-0851

Norm Reeves, Inc. v. Texas International Property Associates, Case No. D2009-1462

Nutz & Boltz, Inc. v. Whois Protection, Case No. D2007-1130

Pepco Holdings Inc. v. Domain Administrator, Case No. D2009-1336

Romance Writers of America v. RWA of Canada, Case No D2009-0448

Sierra Healthstyles LLC v. Jason Becher, Case No D2008-1563

Solvay S.A. v. Karl Sandberg, NAF, Case FA0706001011876

Solvay Advanced Polymers, LLC , Solvay S.A. v. Plastic Distributors, Case No. D2008-0516

STX LLC v. Yu nae ho, Jinsu Kim, Case No. D2006-0567

Wal-Mart Stores, Inc. v. Andre Power, Nominet DRS Number 01301

Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator, Case No. D2005-0322

Yale University v. Interweb Group LLC, Case No. D2008-1568

Yale University v. movcom and Yale Explore  Case No D2011-1367

Activities

In 2004, Ms. Satterthwaite was elected to the Cyberspace Team of Marques, the association of European trademark owners. In 2009, she was elected Vice-Chair of the Cyberspace team. In 2010, she was elected to the Marques IP Outer Borders Team, which studies the hottest developments in brands and challenges to brands, and she leads the sub-team on trademarks in social media. She is also the U.S. Newsletter Correspondent for Marques. Ms. Satterthwaite has written and spoken about trademark and cyberspace issues to international audiences. In February 2012, she will lead a workshop in Brussels for Marques on trademarks and social media

Ms. Satterthwaite provides pro bono trademark and copyright representation to a number of nonprofit organizations.

Ms. Satterthwaite is a fundraiser for the National Cathedral School and former secretary of the local Oxford-Cambridge Alumni Rowing Club. She has also coached youth soccer.