James L. Bikoff is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.
James L. Bikoff’s practice focuses on formulating and implementing worldwide trademark and copyright protection and enforcement programs for clients in the consumer and industrial product sectors, as well as non-profits, and service providers such as banks and insurance companies. He also engages in Internet and domain name counseling and enforcement actions.
Mr. Bikoff has been active for over 40 years directing worldwide trademark and copyright protection, litigation and anti-counterfeiting enforcement. More recently, Mr. Bikoff has been active in Internet and domain name litigation. His clients have included the International Olympic Committee, the United States Olympic Committee, Major League Soccer, the Federation Internationale de Football Association, the American Red Cross, the National Grange and Tristar Insurance. He was in charge of enforcement for the 1994 World Cup Games, the 1996 Olympic Games in Atlanta, Georgia, and the 1999 and 2003 Women’s World Cup Games. Mr. Bikoff also counsels a growing number of wineries and restaurants on trademark and copyright issues.
Mr. Bikoff is chair of the Trademark and Unfair Competition Division of the Intellectual Property Section of the American Bar Association and a member of the European Community Trademark Association (Anticounterfeiting Committee), the International Trademark Association (Data Protection Committee Subcommittee on Legislation), the New York Intellectual Property Law Association (Trademark and Internet Committees), and the Intellectual Property Constituency of ICANN. He has served as co-chair of the Intellectual Property Committee of the D.C. Bar Association. He is also a frequent contributor to several publications, including IP Litigator, International Quarterly, and World Trademark Review.
Mr. Bikoff was lead counsel in a landmark anti-cybersquatting action for the NCAA involving the first freeze of assets against an offshore Internet gambling website, and was lead counsel in a case involving the largest number of domain names ever joined as defendants: International Olympic Committee, United States Olympic Committee and Salt Lake Organizing Committee for the Olympic Winter Games of 2002 v. 2000 Olympic.com, et al., Civ. No. 00-1018-A (E.D.Va. 2000). Mr. Bikoff has also achieved a string of victories in UDRP proceedings on behalf of the American Red Cross, the International Olympic Committee and other clients.
Mr. Bikoff has written and spoken frequently on intellectual property protection and enforcement in the United States and abroad, and has testified before Congress in support of intellectual property legislation. He was actively involved in the enactment of the Trademark Counterfeiting Act of 1984 and the Anti-cybersquatting Consumer Protection Act (“ACPA”). He is the author and co-author of numerous articles on trademark, copyright and domain name issues including “What’s The Next Play for the Redskins? What Blackhorse Really Means For the Football Team” World Trademark Review Daily (June 25, 2014); “Cancellation Action Based On Misrepresentation of Source Does Not Require Use of Mark In U.S. Commerce” World Trademark Review Daily (May 1, 2014)(Bayer FLANAX Case); “The Uniform Rapid Suspension System–A New Weapon in the War Against Cybersquatters” LANDSLIDE (January/February 2014); “TTAB Cancels Mark For Being Highly Descriptive” World Trademark Review Daily (July 30, 2013)(Annapolis Tours Case); “Federal Circuit Provides Trademark Owners Tool To Prevent Repeated Attacks” World Trademark Review Daily (Jan. 28, 2013)(Disney Winnie the Pooh Case); “Legislation Targets Theft of US Property by Rogue Websites” World Trademark Review (Feb/March 2012); “Hauling In the Middleman: Contributory Trademark Infringement in North America” Oxford University Press, Journal of Intellectual Property Law & Practice (February 2010); “The UDRP Turns Ten” World Trademark Review (Aug/Sept. 2009); “Louis Vuitton Holds ISP Accountable for Combined $ 21.6 Million” Oxford University Press, Journal of Intellectual Property Law & Practice (July 2010); “Costco v. Omega: The Foreign First-Sale Doctrine” Westlaw Journal, Intellectual Property (Jan. 12, 2011).
Mr. Bikoff graduated, cum laude, from the University of Cincinnati in 1962. He received his LL.B. from Columbia University School of Law in 1965 and obtained an LL.M. in trade regulation from the New York University School of Law in 1966.
Vice Chair, Trademarks & Unfair Competition Division Committee of the American Bar Association Section of Intellectual Property Law (2018-2019)
Liaison to the ICANN- Intellectual Property Constituency of the American Bar Association Section of Intellectual Property Law
Chair, Trademark Legislation Committee, Intellectual Property Section of the American Bar Association
Member, European Community Trademark Association (Anticounterfeiting Committee)
Chair, Internet Committee Subcommittee on Whois and Privacy Issues of the International Trademark Association
Member, Trademark and Internet Committees, New York Intellectual Property Law Association
Member, The Fellows of the American Bar Foundation
Former Co-Chair, Intellectual Property Committee, DC Bar Association
Member, Advisory Board, IP Litigator
Member, Advisory Board, International Quarterly
Member, Advisory Board, The University of Baltimore Intellectual Property Law Journal
Member, Advisory Board, World eBusiness Law Report
Member, Advisory Board, Law360, Intellectual Property Editorial Board
Cellular South Denied Preliminary Injunction Against Spire, World Trademark Review, October 23, 2017.
Bikoff, J.L. (2017) Fake it ’til we make it: regulating dangerous counterfeit goods. European Communities Trade Mark Association Bulletin, October 2017.
Contributor, “United States.” Brand Protection Online: A Practical Guide to Protection from Online Infringement. Jeremy Blum. Globe Law And Business, 2017. 307-322. Print.
Internet Expansion: How This Affects Your Company – May 22, 2015.
Author, “Summary of Pending Legislation Affecting Trademarks” New York Patent Law Association, April/May, 2015.
Bikoff, J.L. & Heasley, D.K. & Sherman, V & Stripeland, J. (2015) Fake it ’til we make it: regulating dangerous counterfeit goods. Oxford Journals, 10(4), 246-254.
Hail to the Redskins – For Now? Debating the Future of the NFL Team’s Brand, World Trademark Review, April 9, 2015.