Steven A. Abreu

Steven A. Abreu

Partner, Trademark Chair

t:
617-443-9292, ext 309
f:
617-443-0004
e:
sabreu@sunsteinlaw.com
Moritz College of Law, The Ohio State University
J.D., Order of the Coif
University of Illinois
B.A.

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Awards

  • DSN 8288 Recommended Logos Individuals376
  • Best Law Firms Standard Badge
  • Sl badge l w 2021
  • Saa-best-lawyers-2019

Education

  • Moritz College of Law, The Ohio State University J.D., Order of the Coif
  • University of Illinois B.A.

Profile

Steve Abreu takes a pragmatic approach to trademark clearance, registration and enforcement to help a wide range of enterprises meet their intellectual property protection and business goals. Steve’s clients are varied and include renowned institutions of higher learning, consumer and medical product companies, and specialty magazines. He also represents well-known manufacturers of pharmaceuticals and biotechnology products.

Steve’s strategic outlook on trademark and copyright protection has assisted both large clients and small businesses in the United States and abroad. He also counsels foreign trademark applicants to successful registration of their Madrid-based U.S. trademark applications. Steve is Chair of the Trademark and Copyright Practice.

Experience

  • Steve has filed and prosecuted hundreds of trademark applications with the U.S. Patent and Trademark Office, and assisted clients with their international trademark protection strategies.
  • Steve has successfully represented many clients before the Trademark Trial and Appeal Board and federal courts
  • Steve advises clients engaged in international trademark oppositions before various administrative bodies in Europe, Australia and Asia.
  • Steve works with many small businesses and start-ups to determine how to best protect intellectual property and the beginning of a business venture.
  • Steve also specializes in trademark and copyright licensing, and has experience licensing world famous consumer brands for cross-market promotional purposes.

Professional and Community Involvement

  • Member of the Boston Patent Law Association's Foreign Practices Committee
  • Member of the International Trademark Association
  • Member of the Boston Bar Association
  • President of the United States Tchoukball Association, governing body for tchoukball in the United States and dedicated to growing interest in the sport of tchoukball among amateur athletes in the United States.
  • Participates in mentoring activities with the Citizen Schools 8th Grade Academy program.

Bar and Court Admissions

  • Commonwealth of Massachusetts
  • State of Ohio
  • U.S. District Court for the Southern District of Ohio

Honors

  • Selected by peers for inclusion in Best Lawyers in America® 2019-2021 for Trademark Law.
  • Listed in World Trademark Review’s WTR 1000 for prosecution and strategy as well as enforcement and litigation (2014-2021). The WTR 1000 is the only definitive guide dedicated to identifying the world’s leading trademark legal services providers. An extensive research process conducted by a team of highly qualified, full-time analysts, the publication identifies the leading trademark law firms and individuals in over 80 global jurisdictions.
  • Named a Super Lawyer for Intellectual Property (2020), and a "Rising Star" (2010-2019) in Massachusetts.

Recent Publications/Presentations

Big Changes to Canada’s Trademark Laws—January 15, 2019

Study Demonstrates Positive Economic Impact of Trademark Filing—July 17, 2018

A Joke So Funny Louis Vuitton Forgot to Laugh – The Danger of Suing Over a Parody—February 14, 2017

Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe—April 15, 2016

Issues Resolved in an Administrative Trademark Proceeding May Bind Federal Courts in Subsequent Infringement Actions—July 21, 2015

Briefings from the Trademark Universe—February 26, 2015

Results

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

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$16 million judgment

FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc.

We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.

Join Our Team

Sunstein seeks talented candidates interested in joining our dynamic, motivated, and talented professional team.

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