Marcus H.H. Luepke

Of Counsel

Marcus Luepke is an experienced international trademark attorney whose practice focuses on trademark clearance and prosecution, as well as on counseling clients in managing and enforcing international trademark portfolios. Having practiced trademark law in Germany for more than a decade, Mr. Luepke possesses broad experience in selecting as well as internationally prosecuting and enforcing trademarks. He has a particularly strong working knowledge of prosecuting European Community Trademarks as well as trademarks under the Madrid Agreement and Protocol.

Mr. Luepke’s trademark work on both sides of the Atlantic, as well as his first-hand knowledge of both the firm and the corporate perspective, blend into a unique experience allowing him to target and avoid the typical difficulties of a multi-jurisdictional and multi-cultural trademark practice. His Trademark Counsel positions with BMW and for The Coca-Cola Company provided him also with first-hand knowledge of the challenges when protecting famous brands globally. Mr. Luepke’s close cooperation with marketing colleagues in name selection and questions of global branding well equips him to understand the objectives of client’s marketing departments. His ability to develop cooperative relations between industries, customs authorities, and enforcement agencies, and his experience in coalition building, render him as well a valuable source for advice on how to improve the level of trademark and brand protection on an industry scale.

Mr. Luepke is also experienced in negotiating global coexistence and license agreements for a diverse range of products, including automotive, financial, clothing, and food and beverage products.

Mr. Luepke worked at Finnegan as a part-time trademark specialist in 2006 while obtaining his LL.M. degree and joined Finnegan full-time in 2007. He speaks regularly on trademark topics of international relevance.

Highlights

• Served for seven years as a key member in the trademark department of the German auto manufacturer BMW at its global headquarters in Munich.
• As Senior Trademark Counsel, managed the majority of BMW’s international trademark portfolio, including global trademark clearance and trademark prosecution, as well as enforcement in challenging jurisdictions, including the United States, Eastern Europe, Asia, and the Middle East.
• Led numerous anti-counterfeiting activities for BMW in China and other Asian markets; gained high familiarity with the various requirements and tasks of such international IP rights enforcement, including cooperating with investigators, enforcement agencies, and other industry members.
• While at BMW, instrumental in creating the Automotive Anti-Counterfeiting Coalition Middle East, a strong deterrent to counterfeiting in the region.
• Consulted as a contract Trademark Counsel for The Coca-Cola Company at its Global Legal Center in Atlanta, Georgia, concentrating on global protection strategies, including the worldwide clearance and prosecution of the company's trademark.

Professional Recognition

• A Buergenthal Scholar at the George Washington University Law School.
• 2007 third place recipient of the Finnegan Award for his research paper, “The Trademark Dilution Revision Act: A Comparison With the Dilution Concept Under European and German Law.”

Professional Activities

• International Trademark Association (Committee on Famous and Well-Known Marks, European Sub-Committee, 2008-present)
• American Intellectual Property Law Association
• MARQUES (Association of European Trademark Owners) (Unfair Competition Team 2009-present, vice-chair 2010-present)
• GRUR (German Association of Intellectual Property Lawyers)
• DAJV (German American Lawyer Association)

Select Publications

• Coauthor. "Trademark in the Age of Social Media," Executive Counsel, Feb./March 2011.
• Coauthor. "Trademarks and Viral Marketing: The Risks, the Rewards, the Rules," TDmonthly, Dec. 2010.
• Coauthor. "The Top 10 Mistakes of Foreign Applicants in U.S. Trademark Registration Practice and How to Avoid Them," Mitteilungen der deutschen Patentanwälte, Dec. 2010.
• Coauthor. "Recent TTAB Decisions Highlight Challenges of Pleading and Proving Fraud after Bose," The Intellectual Property Strategist, Feb. 2010.
• "Trademarks on the Internet - the U.S. Perspective," Intellectual Asset Management, Oct./Nov. 2008.
• Coauthor. "Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities," International Trademark Association, The Trademark Reporter, July/Aug. 2008.
• "Taking Unfair Advantage or Diluting a Famous Mark—A 20/20 Perspective on the Blurred Differences Between U.S. and E.U. Dilution Law," International Trademark Association, The Trademark Reporter, June 13, 2008.
• "Implementation of the Madrid Protocol in India: A Convenient Way to Protect Trademarks Internationally," Halsbury's Law Journal, June 2008.
• Coauthor, "U.S. Trademark Dilution Act Likely to Be Reinvigorated," Trademark World, Oct. 2006.