Mark S. Leonardo

Notable Experience and Client Impact

• Act as U.S. counsel for Wayne Gretzky Estates, assisting with protection of their brands as they expand into the U.S. with craft brewing restaurants.

• Represented the seller of the Renaissance masterpiece Salvator Mundi by Leonardo da Vinci which was ultimately resold as a world record for the most expensive work of art at auction.

• Represented private equity firms in connection with intellectual property matters regarding the companies in which they invest, including analysis of intellectual property portfolios, diligence, portfolio management, and enforcement.
• Counselled a global sporting and apparel company in its patent and trademark portfolio procurement, enforcement, and licensing of its portfolios.
• Represented trademark owners in transactions involving brand assets including the building, licensing, enforcement, and sale of portfolios.
• Advised luxury goods brands in trademark and patent procurement portfolio management and enforcement actions.
• Represented a real estate-focused private equity company as intellectual property counsel for its hotel and leisure offerings.
• Advised companies and lenders in financing transactions that include perfecting the security interest in intellectual property rights.
• Represented technology and consumer product companies in providing freedom-to-operate opinions and provided testimony as opinion counsel in various patent infringement litigations.
• Counselled a well-known restaurant chain in developing and enforcing its brand portfolio.
• Represented hotel owners in trademark enforcement and portfolio development.
• Represented and won a trademark trial before the Trademark Trial and Appeal Board on behalf of an iconic 250-year-old international brand on grounds of likelihood of confusion, deceptiveness, and dilution in opposition to an application to register a similar brand.
• Represented a well-known clothing brand in building its trademark portfolio, developing and implementing a nationwide licensing strategy, and selling the brand to a major sporting goods retailer.
• Represented clients in restructuring and bankruptcy auction cases which involved assessing, transferring, and protecting intellectual property assets.
• Represented bankruptcy auction bidders and committee members in resolving certain complex intellectual property estate causes of action against competitors including federal patent litigations.
• Advised an iconic New York City nightclub brand on anticipated structured financing of trademark and copyright license revenues.
• Represented a large European fashion and home retailer in building and defending its U.S. intellectual property portfolio in preparation of its U.S. launch.
• Represented a Fortune 50 medical device company in building and defending a $100 million patent portfolio.
• Represented a leading shoe manufacturer in defending its iconic trade-dress brand.
• Represented a hedge fund’s intellectual property interests in its purchase of a large music and film catalog.
• Represented companies seeking public offerings in the U.S. and AIM listings in the UK on various intellectual property matters.
• Represented a public company in financing transactions that included perfecting the security interest of lender’s worldwide intellectual property rights in a cross-border transaction.

A leader in the intellectual property field, Mark is a member of numerous industry organizations, including:

• International Trademark Association (INTA)
• American Intellectual Property Law Association (AIPLA)
• Boston Patent Law Association
• American Bar Association
• Massachusetts Bar Association

Mark serves as a guest lecturer and panelist at MIT, Boston University, and Babson College. He presented at Ernst & Young’s Insight Exchange CEO Roundtable in Dublin, Ireland as well as at BioConnect Ireland’s “IP Strategies for Emerging Medical Device Businesses” conference. Mark has published numerous articles, including “The Fundamentals of Intellectual Property Protection: A Primer for Biotechnology and Life Science Companies,” in The Journal of Biolaw & Business, Special Supplement: Intellectual Property; “Foreign Service of Process By Letters Rogatory,” in The Law Works; and “Exploring the Perimeters of Whole Business Securitization,” in Global Securitisation and Structured Finance.

Prior to joining Nutter, Mark was a partner in the Boston office of an international law firm. Before that, he served as a patent examiner in the biomedical and medical device arts at the U.S. Patent & Trademark Office.