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
Practice Areas
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 World Trademark Review to the WTR 1000 Silver list for Individuals: Enforcement and Litigation, and Individuals: Prosecution and Strategy (2014-2023). 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.
- Selected by his peers for inclusion in The Best Lawyers in America® 2019–2023 editions for Trademark Law.
- Recognized as the Best Lawyers 2023 Trademark Law "Lawyer of the Year" in Boston.
- Recognized by Thomson Reuters, Super Lawyers® from 2020–2022 and Rising Stars from 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
Testimonial
“I have worked with Steve for nearly a decade. I have found him during that time to be an excellent and very knowledgeable trademark attorney. He is insightful and cares a lot for his clients, and I would highly recommend him to anyone who asked me. I have also worked with others at the Sunstein law firm and find the firm to be excellent overall.”
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.
$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.
Publications
Virus-Related Legislation Extends Patent and Trademark Deadlines
Big Changes to Canada’s Trademark Laws
A Joke So Funny Louis Vuitton Forgot to Laugh – The Danger of Suing Over a Parody
Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe
Briefings from the Trademark Universe
Trademark Falsely Suggesting Connection to a Native American People is Denied Registration
Don’t Do It Unless You Mean It — Voluntary Surrender of a Trademark Registration is Irreversible
A Covenant Not to Sue Can Disable a Competitor’s Trademark Cancellation Action–But at What Cost?
Crazy In Love With Trademarks: What Can Jay-Z and Beyoncé Teach Us About Trademark Filing?
New Copyright Law Touches on Publication and Recordkeeping Issues
Generic.com: Should “Generic” Domain Names Be Registerable as Trademarks?
The UPC Code: A New Frontier for Trademark Infringement?
Don’t Just Give it Away: Unless a Product is Sold, European Law Recognizes No Genuine Trademark Use
Has STARBUCKS Been Diluted? The Ongoing Effort to Protect Famous Marks
Practice areas
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