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Marc H. Trachtenberg

Marc Trachtenberg is an associate in the firm’s Chicago office who focuses his practice in domain name, Internet, social media, marketing, advertising, promotions, trademark, copyright, and privacy matters. Mr. Trachtenberg serves as the chair of the firm's Associates Committee and is a member of the firm's IS Steering Committee.

Mr. Trachtenberg has extensively represented clients in matters involving use of brands online. In this capacity he has recommended brand-specific strategies to protect trademarks and copyrights, identified threats to clients’ online brand presence including domain name and social media abuse, and aggressively enforced these rights on behalf of clients, both informally through industry channels and site-specific dispute policies, as well as formally via UDRP complaints and cybersquatting litigation in federal court.

Mr. Trachtenberg has helped recover more than 1,000 domain names in his career, both in the United States and internationally, and recently helped NBA superstar Chris Bosh recover almost 800 cybersquatted domain names that were identical to the names of various athletes and celebrities. He has also helped various athletes and celebrities recover squatted social media accounts.

Mr. Trachtenberg  has also worked on numerous high value sponsorships agreements on both sponsor side and property side  including those involving:

  • Sports teams such as the Chicago Bears, Chicago Cubs, New York Giants, New York Jets, New York Yankees, Green Bay Packers, Philadelphia Eagles, Atlanta Braves, and Dallas Cowboys;
  • Events and places such as the Olympics, The Grammy's, The Latin Grammy's, The World Cup, The Open Championship, The New York Botanical Gardens, and Jazz at Lincoln Center; and
  • Celebrities such as Dwyane Wade, Chris Bosh, Jimmy Kimmel, and Russell Simmons.

Mr. Trachtenberg has extensively represented and advised clients with regard to promotions and advertising, including some of the largest brand owners and advertising agencies in the world. In this capacity he has provided counsel and helped clear numerous national and international advertisements and promotions, including a sweepstakes for a large software manufacturer that was successfully conducted in more than 30 countries.

Mr. Trachtenberg has extensively represented and advised clients with regard to protection and enforcement of their trademarks, including managing prosecution and maintenance of large trademark portfolios spanning numerous jurisdictions and enforcement of trademark rights through federal court litigation.

Mr. Trachtenberg has also extensively represented and advised clients with regards to privacy matters and has managed and executed numerous national and international data breach notification plans, including one breach requiring notification to more than 60,000 individuals in multiple countries.

At his previous firm, Mr. Trachtenberg managed a unique law firm-run domain name registrar, which registered domain names on a worldwide basis and managed large domain name portfolios for some of the most well-known brands in the world. As a result of his domain name and Internet experience, Mr. Trachtenberg was asked to advise the Chinese government with regard to Internet products, phishing, and fraudulent domain registrar activity.

Prior to becoming an attorney, Mr. Trachtenberg was a software consultant and project manager who advised clients regarding enterprise-class software and web-based technology and managed implantations and customizations of these applications. He also worked as a software consultant and sales engineer for a firm that designed regulatory compliance software and application development for major pharmaceutical companies.

Mr. Trachtenberg received a B.A. in Political Science in 1998 from the University of Michigan and a J.D., magna cum laude, in 2006 from DePaul University College of Law, where he was elected to the Order of the Coif.

Activities

Mr. Trachtenberg is a member of the Internet Committee of the International Trademark Association; the Vice-Chair of the Trademark Committee of the Intellectual Property Law Association of Chicago; a member of the Business Law Section, Cyberspace Committee of the American Bar Association; the Chicago Interactive Marketing Association; and is on the Membership Committee of the ICANN Intellectual Property Constituency.

Publications

Mr. Trachtenberg’s recent speaking engagements include:

  • “Drafting and Negotiating Sponsorship Agreements,” Trademarks in Transactions, International Trademark Association (INTA), Chicago IL (Oct. 11, 2012)
  • “What You Need to Know About Celebrity Endorsements: Deal Memos, Money, Morals Clauses and More,” IEG Sponsorship Seminars, Chicago IL (Aug. 11, 2011)
  • “Advertising Issues for Non-Advertising Lawyers: Social Media,” Advertising Issues for Non-Advertising Lawyers, Intellectual Property Law Association of Chicago, Chicago IL (Oct. 14, 2010)
  • “Domain Update: Introduction of New gTLDs,” 2009 Intellectual Property Law Survey: Trademarks, Copyrights, Domain Names and Trade Secrets, Chicago Bar Association, Chicago, IL (Oct. 6, 2009)
  • “Trademark Protections in New Top Level Domains,” Protecting Your Marks In & From the New Top Level Domains, LexisNexis Seminar, Chicago IL (Sept. 16, 2009)
  • “Domain Name Registration and Protection Strategies for Globally Expanding Businesses,” Intellectual Property and International Law Issues in Representing a Globally Expanding Company, Illinois Bar Association, Chicago IL (June 12, 2008)

Mr. Trachtenberg’s recent publications include:

  • “Basic Principles of Drafting and Negotiating Event Sponsorship Agreements,” The Licensing Journal(February 2013)
  • “Sports stars as product endorsers: Agreements and critical terms,” Journal of Brand Strategy(Summer 2012)
  • “Which Rule to Follow? New Challenges for Advertisers,” e-Commerce Law and Policy (January 2011)
  • “FTC Announces First Investigation of Company Connection With Bloggers,”  BNA Electronic Commerce and Law Report(May 5, 2010)
  • “Columbia Opens Up Registration of ‘co.’ Domain Names,” BNA Electronic Commerce and Law Report (Mar. 24, 2010)

Mr. Trachtenberg was recently quoted in the following articles:

  • “Bloomberg BNA Cyberlaw Outlook for 2013: Keeping Up With Domain Name Explosion, Big Data, Social Media, And Online Innovation Are Top-of-Mind Legal Issues Among Cyberlaw Experts: The Coming Domain Name ‘Land Rush,’” BNA Electronic Commerce and Law Report(Jan. 2, 2013)
  • “How to file a complaint with Twitter,” Managing Intellectual Property(Nov. 10, 2010)
  • “Don’t Lose That Web Site,” Forbes.com(Feb. 29, 2010)
  • “Marketing Attorneys See Room for Creativity In Compliance With FTC Endorsement Guides,” BNA Electronic Commerce and Law Report(Feb. 24, 2010)
  • “Tweet Deals: Social networks spawn legal work,” ABA Journal Law News Now (Feb. 1, 2010)

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