Edward T. Colbert
Edward is co-chair of the firm's Intellectual Property and Technology practice. He has over 30 years of experience handling litigation, licensing and other adversarial proceedings concerning all aspects of intellectual property, including patents, trademarks and copyrights, false advertising, unfair competition and trade secrets. Edward’s comfort and skill in the courtroom have enabled him to successfully represent banks and financial services companies, electronic/Internet commerce providers and entertainment companies, as well as manufacturers of medical devices and products, basic chemicals, petroleum products, and general consumer merchandise supply companies, including those in the apparel, food and beverage businesses.
Edward is recognized as a leading lawyer in World Trademark Review 1000 (2015), which says that “he can be trusted to do an ‘outstanding job’ in matters ‘where strategy and results matter,’” and has received recognition from the Legal 500 United States (2016). In addition, he has been selected as a Washington DC Super Lawyer (2016) for intellectual property law and was named a Washington, DC “IP Star” by Managing Intellectual Property (2014). Managing Intellectual Property also recognizes him as a veteran trademark lawyer, whom clients describe as a “top quality litigator” (2014). Edward was named by SmartCEO magazine as a 2013 Washington “Power Player” in Intellectual Property law.
Edward has significant experience in domestic and international intellectual property licensing and acquisitions, and manages the trademark portfolios of leading retailers, companies and organizations worldwide. For example:
- He helped create and shape the United States Olympic Committee licensing program and was involved in the licensing and enforcement of Olympic marketing rights in the United States and certain related worldwide rights for the five Olympic Games and United States Olympic Teams.
- He served as chief trademark advisor in the launch of the Home Shopping Network and Martha Stewart Online and retail catalog operations.
- He has represented clients in due diligence reviews, negotiations and acquisition of numerous diverse properties, from search engine Ask.com to Stolichnaya vodka and Modelo beer.
- He provides pro bono representation to the Special Olympics in connection with maintenance and management of its worldwide trademark and licensing rights portfolio.
Edward is regularly hired as trademark counsel in actions involving famous brands and marks, and has significant copyright infringement experience. For example:
- When the Russian government brought suit in the United States seeking to obtain ownership of the STOLICHNAYA trademark, he secured a dismissal of the claim on behalf of its owner, Allied Domecq, in Federal Treasury Enterprise Sojuzpolodoimport, et al. v. Spirits International, et al., 425 F. Supp. 2d 458 (S.D.N.Y. 2006).
- Edward also represented the United States Olympic Committee in developing and enforcing its exclusivity in commercial uses of Olympic terminology, culminating in representation of the Olympic Committee in USOC v. San Francisco Arts & Athletics, which was argued to the Supreme Court and confirmed the control of the USOC over Olympic marketing in the United States. (483 U.S. 522, 1987).
- In one of the first of the “portal wars,” Edward represented AT&T Corp. in America Online, Inc. v. AT&T Corp., 64 F. Supp. 2d 549 (E.D. Va. 1999), in which he helped AT&T successfully defend against trademark infringement claims by winning a ruling on summary judgment that “you have mail” is generic.
- He won a major victory for start-up client Pintrips, protecting the company against a trademark infringement suit filed by social-media giant Pinterest Inc. In the judgment and decision issued after a 7 day trial, U.S. District Judge Haywood Gilliam Jr. ruled that Pinterest did not own or control the use of the word "pin" in the Internet space despite the registrations for “PIN” owned by Pinterest. Pintrips use of “pin” was held to be a fair use under the Lanham Act based on the term's origin and broad use in electronic communication. The Court also held that trademark PINTRIPS did not infringe on the trademark PINTEREST. Pinterest did not appeal.
- He represented Maker’s Mark Distillery Inc. in a high-stakes battle for protection if its red wax neck coating trademark. The U.S. Sixth Circuit Court of Appeals held that a three dimensional physical attribute of packaging (the irregular red wax coating on the neck of the Maker's Mark bottle) was capable of being a trademark, and did in fact function as a trademark, even though not a traditional work of two dimensional design. (3:09-cv-718 and 3:03-cv-00093, W.D.Ky.)
- He cleared the way for Constellation Brands and its subsidiary, Spirits Marque One, to proceed with a multi-million dollar advertising campaign for its brand SVEDKA vodka, by defending against the copyright claims brought by a well-known Hollywood photographer, concerning the use of a photograph. (CV 10-07175 ODW, C.D. CA).
- He defended against a claim by a computer program designer that the plaintiff, rather than his employer, owned the hedge fund program used to trade over a hundred million dollars a day. The issue of the validity of the IP ownership provision of the contract was a cutting edge decision that required a stay at the Third Circuit, while the question was reviewed by the Pennsylvania Supreme Court. (3rd Cir. PA, 05-1119).
Edward is active in bar association work, particularly the International Trademark Association where he serves as a mediator on the CPR Panel of Distinguished Neutrals, He is also a member of AIPLA, and the American Bar Association Sections on Intellectual Property and on Antitrust, and has also served as Chairman of the Sports and Entertainment Industries Committee. He has also been active in the Maryland State Bar Association and participated on the steering committee to create an intellectual property committee for the Business Law Section. He currently serves as an arbitrator on the International Court of Arbitration for Sport in Lausanne, Switzerland and for the American Arbitration Association.
Edward regularly presents articles, programs and speeches about a wide variety of topics, including trademark dilution, cybersquatting, extension of copyrights in collective works, copyright parodies, the use of surveys in consumer cases, trademark registration rights under foreign conventions, concerted refusals to deal, and market definitions in a variety of markets including general retail and entertainment industries.
Edward began his career as a law clerk to the Honorable Herbert S. Boreman in the United States Court of Appeals for the Fourth Circuit.
- Pinterest Inc. v. Pintrips Inc., 313cv04608 (N.D. CA 2015)
- Fishman Transducers, Inc. v. Stephen Paul D/B/A Esteban, Daystar Productions, and HSN Interactive LLC, 07cv10071 (D. MA 2011), aff’d 11-1663 (1st Circuit 2012)
- Jim Beam Brands Co. v. Tequila Cuervo La Rojeña S.A. de C.V., 08cv600122 (NY Supreme 2011)
- Maker's Mark v. Diageo, 03cv93 (W.D. KY 2010), aff’d 10-5508/5586/5819 (6th Circuit 2012)
- Fleming v. CVS Caremark Corporation, 7:09cv2462 (N.D. AL 2012), aff’d 13-11954 (11th Circuit 2013)
- Charles White v. Constellation Brands, Inc., et al., 2:10cv07175 (C.D. CA 2011)
- Tequila Cuervo La Rojeña S.A. de C.V. v. Jim Beam Brands Co., 10cv0203 (S.D. NY 2011)
- Univision Radio, Inc. v. Texas CBS Radio Broadcasting, L.P. v. Educational Media Foundation (PTO 2010)
- Zimmer v. CooperNeff Advisors, Inc., 2:04cv03816RK (E.D. PA 2010)
- The Pilot Corporation of America, Inc. v. Fisher-Price, Inc., 3:04cv00977 (D.CT. 2008)
- Federal Treasury Enterprise Sojuzplodoimport, et al. v. Spirits International NV, et al. (S.D. NY 2011), aff’d 11-4109 (2nd Circuit 2013); certiorari denied, (2014)
- On-Line Tech Inc. v. Perkin-Elmer Corp., et al., 3:99cv02146 (D. Conn. 2006)
- Frey v. Allied Domecq, 2:2005cv05216 (C.D.CA 2005)
- Simon Systems, Inc. v. LSI Logic, 8:02cv4168 (D. MD 2004)
- Hispanic Broadcasting Corp., et al. v. Educational Media Foundation, 2:02cv07134 (C.D. Cal. 2003)
- Scimed Life Systems and Medinol Ltd. v. Johnson & Johnson, 1:99cv00904 (D. DE 2004)
- America Online, Inc. v. AT&T Corp., 98cv01821 (E.D. VA 2001)
- Copyright Office Promulgates New Regulations for Designation of Registered Agent Under the Digital Millennium Copyright Act (November 10, 2016)
- "Supreme Court Rules TTAB Findings May Have Preclusive Effect on Article III Court Decisions," IP Topics (March 24, 2015)
- "Supreme Court Affirms No 'First Sale' Defense for Foreign-Made Copies," IP Topics (December 13, 2010)
- "Does a State Registration Extend Rights Beyond Common Law?" IP Topics (January 8, 2004)
In The News
- Quoted in "Pinterest Loses Trademark Suit Over 'Pin' Marks," Law360 (October 21, 2015)
- Quoted in "Kenyon & Kenyon Partner Tapped for PTAB Judge Post," Law360 (October 16, 2015)
- Featured in "Kenyon Leader Takes Helm at Time of Transition," New York Law Journal (September 24, 2015)
- Featured in "Kenyon & Kenyon Elects Stephen Colbert’s Brother as Managing Partner," Bloomberg BNA (September 23, 2015)
- Featured in "Colbert Takes the Stage - As Kenyon & Kenyon Managing Partner," The American Lawyer (September 22, 2015)
- Quoted in "Stephen Colbert’s Brother Might Save International Baseball," The Daily Beast (February 5, 2015)
- Mentioned in "WBSC appoints Kenyon & Kenyon's Colbert as General Counsel," Around The Rings (February 4, 2015)
- Mentioned in "Kenyon Gets Role in Baseball-Softball Olympic Bid," USA Today (February 3, 2015)
- Quoted in "Second Circuit Chills Russia’s Stolichnaya Trademark," The AMLaw Litigation Daily (August 6, 2015)
- Quoted in "Mattel Defeats Copyright Claim in 'Princess Charm School' IP Suit," Law360 (June 21, 2013)
- Interviewed regarding Costco v. Omega on Sirius Satellite Radio and bloomberg.com (May 1, 2010)
- Appeared on Comedy Central's "The Colbert Report" to discuss Olympic trademark rights. (February 22, 2010)
- Appeared on Comedy Central's "The Colbert Report" to discuss the "Obama Hope" copyright case. (February 12, 2009)
- Selected as Washington, DC Super Lawyer in Intellectual Property Litigation, Washington Lawyer magazine (2007-2016)
- Profiled as one of the leading Copyright (2013-2015), Trademark Litigation (2013-2016) and Trademark Non-Contentious (2013-2016) lawyers in the United States, The US Legal 500
- Named an "IP Star" in Washington, DC (2013, 2014), a “Patent Star” in Washington, DC (2016), and a "Trademark Star" in Washington, DC (2016) in the IP Stars Handbook published by Managing Intellectual Property
- Recognized as a "Top Five Lawyer" in the D.C. Metro area for trademark enforcement and litigation (2016), World Trademark 1000 (2016)
- Recognized as a Leading National Litigator (2012), a Leading Trademark Professional (2012-2015, 2017) and a Top Litigation Partner (2016), World Trademark Review 1000
- Named as a 2013 Washington “Power Player” in Intellectual Property law, SmartCEO magazine
- Chemicals, Petrochemicals and Refining
- Health Care
- Hospitality and Hotels
- Investment Funds
- Legislative Advocacy
- Manufacturing and Sales
- Private Equity
- Restaurant, Food and Beverage
- Restaurant, Food and Beverage
- Restaurant, Food and Beverage
- Technology and Emerging Companies
- Venture Capital
- Class Action Litigation
- Commercial Litigation
- Copyright Litigation
- Intellectual Property and Technology
- Intellectual Property Litigation
- International Arbitration
- IP Counseling and Licensing
- Patent Litigation
- Securing and Maintaining Trademarks and Brand Names
- Trade Secret/Trade Dress Litigation
- Trade Secrets/Trade Dress
- Trademark Proceedings and Litigation
- JD, 1972, with honors, University of Maryland School of Law, Maryland Law Review
- AB, 1970, University of Maryland
- District of Columbia 1974
- Maryland 1973
- US District Court for the District of Columbia
- US District Court for the District of Maryland
- US District Court for the Northern District of California
- US District Court for the Northern District of Illinois
- US District Court for the Northern District of New York
- US Supreme Court
- US Court of Federal Claims
- US Court of Appeals for the District of Columbia
- US Court of Appeals for the First Circuit
- US Court of Appeals for the Second Circuit
- US Court of Appeals for the Third Circuit
- US Court of Appeals for the Fourth Circuit
- US Court of Appeals for the Fifth Circuit
- US Court of Appeals for the Sixth Circuit
- US Court of Appeals for the Seventh Circuit
- US Court of Appeals for the Ninth Circuit
- US Court of Appeals for the Tenth Circuit
- US Court of Appeals for the Eleventh Circuit
- US Court of Appeals for the Federal Circuit
- Arbitrator for the International Court of Arbitration for Sport in Lausanne Switzerland and for the American Arbitration Association
- Fellow of the Litigation Counsel of America
- Past Chairman of the Sports and Entertainment Industries Committee of the American Bar Association's Antitrust Division
- Member of the Intellectual Property section and the Antitrust Section of the American Bar Association
- The INTA Panel of Distinguished Neutrals
- The International Trademark Association
- The Maryland State Bar Association Business Law Section