Mr. Woldow specializes in counseling clients with regard to intellectual property matters, prosecuting applications to register trademarks and service marks worldwide, maintenance of existing trademark and service mark registrations worldwide, trademark clearance opinions, advice concerning infringement, opposition and cancellation issues, representation of clients before the Trademark Trial and Appeal Board, consent agreements, settlement agreements and intellectual property litigation.
Mr. Woldow takes a proactive role in settlement negotiations prior to adverse and costly litigation actions. His representative matters include negotiation of a worldwide purchase of a blocking portfolio of registrations from a pharmaceutical competitor, negotiation of the purchase of a cosmetic trademark blocking a Swiss company from entrance into the United States under its trade name, the successful opposition of the United States portion of a worldwide drilling industry conflict and the negotiation of a worldwide settlement of a pharmaceutical trade name conflict. Mr. Woldow’s Ex Parte Appeals Practice experience includes the representation of Nuevo Laredo Cantina in a successful appeal of a Geographic Descriptiveness Refusal, representation of Overhead Door Corporation in a successful appeal of a Descriptiveness Refusal and representation of Abkit, Inc. in a successful appeal of a Likelihood of Confusion Refusal.
Mr. Woldow is a sought-after speaker on trademark issues worldwide.
Prior to joining the Firm, Mr. Woldow was a Trademark Examining Attorney for the United States Patent and Trademark Office, with concentrations in the chemical, pharmaceutical and medical device fields.
Mr. Woldow is a member of the State Bar of Maryland, the District of Columbia Bar, the Intellectual Property Section of the District of Columbia Bar and the Government Officials Education and Training Committee of the International Trademark Association.
Mr. Woldow earned his B.A. degree, with honors in Philosophy in 1993 from Hofstra University, where he also earned Minors in Psychology and History. He earned his J.D. degree in 1997 from The American University, Washington College of Law. During law school, Mr. Woldow was a member of Phi Alpha Delta, and he was a trial practice participant. Mr. Woldow also earned a Masters in Business Administration from The American University.
The Importance of Trademark Protection primarily for Startup Companies and New Businesses, Podcast, March 29, 2016.
Hot Topics in Trademark Prosecution – “Post Registration Issues,” on behalf of the International Trademark Association before Government Officials of the USPTO, November 4, 2015.
Trademark presentation to the Amazon “Zonsquad – Amazon Private Seller Organization,” “Make Your Mark: Brand Recognition, Goodwill and Your Company’s Future,” Gaylord National Hotel and Convention Center, National Harbour, October 3, 2015.
INTA Responds to USPTO Request for Comments on Goods/Services ID Amendments Due to Technology Evolution, INTA Bulletin, December 15, 2013.
USPTO Changes Requirements for Specimens and Post-Registration Filings, INTA Bulletin, June 15, 2012.
World Intellectual Property Organization in cooperation with the United States Patent and Trademark Office, Summer School on Intellectual Property, “Geographical Indications,” Alexandria, Virginia, August 2, 2011.
United States Patent and Trademark Office Electronic Filing Focus Group and Panel Discussion, Alexandria, Virginia, June 23, 2011.
USPTO Data Visualization Center Dashboard, INTA Bulletin, June 15, 2011.
Introduction To Intellectual Property Patents, Trademarks, Copyrights and Litigation, Frankfurt, Germany, March 14, 2009.
The Importance of Trademark and Patent Protection in the United States, Intellectual Property Panel Discussion, Wiesbaden, Germany, March 12, 2008.
United States Patent and Trademark Office E-Commerce and Electronic Filing Panel Discussion, Atlanta, Georgia, October, 2001.