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 Robert Maldonado-2sm

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Areas of Expertise:

Robert specializes in intellectual property litigation, including patent, trademark, copyright, false advertising and unfair competition matters in federal court.  He also has experience with obtaining United States utility and design patents, primarily in the mechanical, material and process arts.  He also is skilled in obtaining trademark and copyright protection.  He has negotiated and drafted major intellectual property licensing agreements, in areas such as consumer products, as well as pharmaceuticals.  He has extensive litigation experience at both the trial court and appellate court levels, as well as before the Trademark Trial and Appeal Board.  He also has experience drafting opinion letters regarding patent validity and infringement, as well as trademark clearance, validity and infringement opinions.

Education:

  • Stanford University, Stanford Law School, J.D., 1993
  • Massachusetts Institute of Technology, B.S., Mech. Eng., 1990

Bar Admissions:

  • New York State
  • United States Supreme Court
  • United States Courts of Appeal for the Second, Fifth, Ninth and Federal Circuits
  • United States District Court for the Southern and Eastern Districts of New York, and for the District of New Jersey
  • United States Patent & Trademark Office, registered patent attorney

Honors & Awards:

 

  • 2014 Judicial Conference of the Second Circuit, Program & Planning Committee, member
  • American Bar Foundation, Fellow, 2013
  • "El Award," El Diario La Prensa, 2013
  • Hispanic National Bar Association, Regional President of the Year, 2013
  • Super Lawyers, Intellectual Property Litigation, 2012, 2013, 2014

  

Professional Associations:

  • Hispanic National Bar Association, National President-Elect (2014-2015); Regional President (2012-2014), National Chair of LGBT Section (2010-2013), member (1999-present)
  • The Hispanic Lawyers Society of New York (Top Hispanic Lawyers in New York Metro Area)
  • American Bar Association
  • Puerto Rican Bar Association
  • New York Intellectual Property Lawyers Association
  • International Lawyers Network
  • National LGBT Bar Association
  • LGBT Law Association Foundation of Greater New York, Inc., Board member (2013-present)
  • Out Professionals
  • Association of the Bar of the City of New York, former member of the Copyright & Literary Property Committee (1999-2002); Committee on Land Use Planning and Zoning (1995-97)
  • MIT Alumni Association, MIT Club of New York.

Publications:

  • “Is That a Coach Bag?  Product Configuration Trade Dress in the Second Circuit,” Intellectual Property Today, July 2002
  • “False Comparative Advertising,” Intellectual Property Counseling and Litigation (Matthew Bender & Co., Inc.), 1996

Lectures/Presentations:

  • "Protecting Your Brand:  Strategies For Handling Counterfeiting and Trademark Infringement," Hispanic National Bar Association, Corporate Counsel Conference, Orlando, Florida, Panelist, March 2014
  • "Volunteering is Best:  Feel Better by Doing Good," New York State Bar Association Annual Meeting, Panelist, January 2014
  • "Partners for Diversity:  Improving Participation and Retention in Bar Associations," New York State Conference of Bar Leaders Workshop, Panelist, Spring 2013
  • "The Effects of DOMA on Latinos on the State and National Level:  The Everyday Struggles for Lesbian, Gay, Bisexual and Transgender (LGBT) Latinos Due to the Defense of Marriage Act," Hispanic National Bar Association Annual Convention, Seattle, Washington, Panel Moderator, August 2012
  • ABA Commission of Hispanic Legal Rights & Responsibilities, Testified at Midwest Regional Hearing, November 2011
  • “Counterfeiting in the Virtual World,” Lavender Law Conference, Miami, Florida, August 2010
  • “Obtaining Intellectual Property Protection,” Montclair State University, April 2004