Brian J. Winterfeldt

Partner

• bwinterfeldt@steptoe.com
• vCard
• Washington Office

Brian J. Winterfeldt is a partner in the Washington office of Steptoe & Johnson LLP, where he is a member of the Intellectual Property group. Mr. Winterfeldt’s practice involves most aspects of intellectual property law, including domestic and international trademark counseling, clearance, prosecution, enforcement, and litigation, as well as trade dress and domain name issues.

Mr. Winterfeldt assists clients with the creation of trademark and branding strategies and the development of programs to enforce and protect intellectual property rights. He represents clients seeking to protect against infringement of their copyrights, trademarks, and trade dress in the United States and internationally. Mr. Winterfeldt represents clients who are global leaders in their industries, including the retail and apparel, media, financial, consumer products, and Internet industries.

Mr. Winterfeldt’s practice includes significant work in domain name law and new media counseling and enforcement, including assisting clients with the management of their domain name portfolios and securing domain names that incorporate clients' trademarks through the Uniform Dispute Resolution Policy and other similar processes for foreign domain names.  Mr. Winterfeldt has also counseled clients on cutting edge issues such as social media and Web 2.0, including strategies for brand promotion and protection in these spaces.

Mr. Winterfeldt has also written numerous articles on trademark law and has been selected for the past several years to serve as a reviewer for the Saul Lefkowitz Moot Court Competition by the International Trademark Association.  Mr. Winterfeldt also serves as Co-Chair of Steptoe's GLBT Forum and as a member of Steptoe's Diversity Committee. Mr. Winterfeldt is a prominent and frequent speaker at industry events on topics including trademark issues and social media.

Professional Affiliations

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• International Trademark Association (INTA)
• INTA TMA Committee (2012-2014)
• Subcommittee Chair, Internet Project Team
• INTA Internet Committee (2007-Present)
  • Special Advisor/GNSO Councilor (2012-2013)
  • Subcommittee Chair, Internet Governance and Contractual Relationships Subcommittee (2010-2011)
  • Registration Practice & DNS Administration Subcommittee (2008-2009)
• INTA Bulletin Committee (2000-2007)
• Subcommittee Chair/Editor, Feature Articles: Policy and Practice, INTA Bulletin (2005-2007)
• Subcommittee Chair/Executive Editor, INTA Special Reports (2003-2004)
• Served as a Planning Committee Member for the November 2010 INTA Leadership Meeting
• Internet Corporation for Assigned Names and Numbers (ICANN)
• Generic Names Supporting Organization Council (2011 - 2013)
• Intellectual Property Constituency (IPC)
• Treasurer (2010 - 2011)
• Internet Corporation for Assigned Names and Numbers (ICANN)
• MARQUES (European Trademark Association)
• Member of Cyberspace Team (2010)
• American Apparel & Footwear Association (AAFA)
• Member of Brand Enforcement Council                  
• Human Rights Campaign (HRC)
• Member of Federal Club
• National LGBT Bar Association

Noteworthy

• Recognized by the World Trademark Review as a leading trademark attorney in the WTR 1000 for 2011
• Listed in Who’s Who Legal for Trademarks (2011)  
• Recognized as one of the "Best LGBT Attorneys Under 40" by the National LGBT Bar Association (2011)
• Elected Treasurer, Intellectual Property Constituency (IPC) (2010 - 2011).
• Selected as a Co-Chair for INTA's 2011 Trademark Administrators Conference.
• Recipient of INTA's 2011 Volunteer Service Award for the Advancement of Committee Objectives.

Select News & Events

• Bloomberg BNA Quotes Steptoe’s Winterfeldt on ICANN’s Updated Guidebook
• Steptoe’s Winterfeldt Receives INTA Volunteer Service Award
• Brian Winterfeldt to Receive INTA's 2011 Volunteer Service Award during the INTA Leadership Meeting, November 9, 2011
• "Trademarks and the New Domain Name Extensions," Inter-American Association of Intellectual Property (ASIPI) XVI Work Sessions and Administrative Council, November 2, 2011
• "Trademark Clearinghouse Work Session," ICANN 42nd Meeting, October 26, 2011
• "Succeeding as a Trademark Administrator: Practical Tips, Helpful Strategies, and Heartfelt Advice,” INTA's Trademark Administrators Conference, October 3, 2011
• “Domain Names and the Evolving Internet: Vital Information for a High-Speed Virtual World,” INTA's Trademark Administrators Conference, October 3, 2011
• Counting Down to the New Generic Top-Level Domain Program: Top Ten Tips for Being Prepared, September 27, 2011, (A Steptoe-Sponsored Event)
• National LGBT Bar Association Honors Brian Winterfeldt as a Best Lawyer Under 40
• Managing Intellectual Property Quotes Brian Winterfeldt on New gTLDs
• World Trademark Review Recognizes Steptoe’s Trademark Practice in WTR 1000
• IPWatchdog Interviews Rebecca Edelson and Brian Winterfeldt on IP and Social Media

Selected Publications

• New gTLD Program Updates from the January 5, 2012 ICANN Board of Directors Informational Meeting
  January 10, 2012
• Intellectual Property Advisory: House Holds Hearing on the New Generic Top-Level Domain Program
  December 15, 2011
• Intellectual Property Advisory: Senate Holds Hearing on the New Generic Top-Level Domain Program
  December 9, 2011
• INTA Volunteers Honored in Miami
  Vol. 66 No. 21
  December 1, 2011, INTA Bulletin
• Intellectual Property Advisory: New gTLD Program Updates from the Dakar, Senegal ICANN Meeting
  November 1, 2011
• Building Your Brand Through Social Media
  October 2011, Practising Law Institute's Corporate Counsel Institute 2011
• Intellectual Property Advisory: ICANN Publishes Updated Applicant Guidebook for the New gTLD Program
  September 21, 2011
• Cyberspace Land Rush Coming in January
  August 15, 2011, The National Law Journal

More Publications »