Intellectual Property Lawyers Named to Maryland Super Lawyers 2025

Intellectual property lawyers Jim Astrachan, Donna Thomas, and Kaitlin Corey have been selected for inclusion in the 2025 edition of Maryland Super Lawyers. Kaitlin appears in the Rising Stars section.

All are partners at Goodell DeVries and experienced intellectual property lawyers. They have been honored in Maryland Super Lawyers for consecutive years.

Jim Astrachan - Intellectual Property Lawyer

Jim represents clients in intellectual property law and litigation, mediation, and business, regulatory, and transactional matters. He is a frequent author and speaker and has taught IP at Maryland’s two law schools for more than two decades.

 

Donna Thomas - Baltimore Intellectual Property Lawyer

Donna represents clients in commercial and intellectual property transactions and disputes. She handles everything from multi-million dollar sales, mergers and acquisitions for publicly-traded corporations to business agreements, business counseling, advertising clearance and the clearance, registration, licensing, protection and defense of copyrights and trademarks for individuals and businesses.

 

Kaitlin represents clients in negotiating business transactions and agreements, litigation involving copyright, trademark and unfair competition matters, and clearance, protection, registration and licensing of trademarks and copyrights. In addition, Kaitlin handles tax controversy matters.

Reach out to any member of the group by visiting our Contact Us page.

 

The Perils of Secondary Liability for Copyright Infringement

The Perils of Secondary Liability for Copyright InfringementVicarious and contributory liability are terms well-known to every tort lawyer and law student.  They should also be familiar to business owners and managers.

The legal theories of vicarious and contributory liability are well-established in copyright law and are employed to impose liability for another’s direct infringement where a third party, such as a distributor or landlord, contributed to the infringement by encouraging or providing the means to infringe, or where the party had the means to stop the infringement and benefited financially from it.

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Trademarks: Only Use in Commerce Establishes Ownership

Trademarks can be a business’s most valuable assets. Apple’s mark is estimated to be worth more than $355 billion. The Amazon mark lags behind by a hair at $350 billion.

When the value of a company’s trademark can be so high, it makes good sense to carefully develop, grow and protect marks.

Trademarks can take many forms but first and foremost a mark must serve the purpose of identifying the source of goods in the minds of consumers. Letters, numbers, domain names, abbreviations, nicknames, words, slogans, color, alone or in combination with other colors, and designs can serve as marks.

The configuration of products or packaging, called “trade dress” also can serve as a mark if not functional.  Generic terms (computertraining.com) can never serve as a trademark because they remain available for anyone to use. Marks that are merely descriptive of the goods (Ever Sharp) must acquire secondary meaning, being an association in the consumers’ minds between the goods and their source.

“First come, first served” is the basic rule of acquiring rights in a mark. Ownership of a distinctive mark goes to the first to use it in commerce; ownership of a descriptive mark belongs to the first mark that acquires secondary meaning through use. Continue reading

We Have a New Team Member. Meet Jim O’Brien, Lawyer in Business/Corporate, IP, Estates and Trusts Matters

Jim O'Brien - Business/Corporate, IP, Estates and Trusts Lawyer - Baltimore, MD

Jim O’Brien

We are pleased to welcome a new colleague. James Patrick O’Brien has joined Goodell DeVries as an associate. Jim practices in our Business and Corporate LawIntellectual Property, and Commercial and Business Tort Litigation groups.

He represents clients involving corporate governance, business transactions, intellectual property protection and management, and commercial disputes. Jim also handles estates and trusts matters, creating personalized estate plans for individuals and families as well as guiding fiduciaries through the estate administration process after a loved one passes away. Continue reading

Intellectual Property Lawyer Kaitlin Corey Scores Win in WIPO Trademark Proceeding

Kaitlin Corey - Business and intellectual property lawyer at Goodell DeVries

Kaitlin Corey – Business and intellectual property lawyer at Goodell DeVries

Intellectual property lawyer Kaitlin Corey recently secured a win for her client, a process serving company, in an administrative panel decision in the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center. The complaint, which was filed by a competing process serving company, alleged that the client’s use of a particular domain name for its website infringed the complainant’s federally registered trademark.

In her WIPO response, Kaitlin established that the complainant’s federally registered trademark is merely descriptive, and the complainant failed to prove secondary meaning to establish a protectable mark. The Panelist also found that the complainant brought its WIPO complaint in bad faith, finding that its attempt to transfer the domain name was an attempt at “Reverse Domain Name Hijacking.”

This case serves as a worthwhile lesson to business owners to choose protectable trademarks and steer clear of descriptive marks.

Jim Astrachan Named Baltimore Lawyer of the Year for Intellectual Property Litigation

Jim Astrachan - Intellectual Property Lawyer

Jim Astrachan

Congratulations to our partner, Jim Astrachan, on being named the 2025 Baltimore Lawyer of the Year in Intellectual Property Litigation by Best Lawyers.

The Best Lawyers Lawyer of the Year honors are awarded to only one lawyer per practice area in each region with extremely high overall feedback from their peers, making it an exceptional distinction. Continue reading

Should I Register My Mark? Yes!

Should I Register My Trademark? YesA pal and I walked across the parking lot at the Maryland State Bar Association conference last month looking for a lunch joint; the topic of our conversation was whether and why copyright and trademark registrations are necessary and beneficial.

My bud correctly pointed out that a trademark acquires common law rights as soon as it is used on goods or services, and a copyright exists as soon as the work is fixed in a tangible medium of expression. The bulb over my head lit up; my June column was born. I offered to buy him an adult beverage, or two, for the idea.

“You’re correct,” I said. “Both copyrights and trademarks exist without registration, but registration of both confers substantial and valuable rights.”

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Intellectual Property Lawyers Jim Astrachan and Donna Thomas Recognized in Chambers 2024

Congratulations to Jim Astrachan and Donna Thomas, who were recognized in the 2024 edition of Chambers, a leading ranking of the world’s top lawyers. Both were selected for the Maryland Intellectual Property category.

Jim and Donna are ranked in Chambers every year, which is a testament to the stellar reputation their IP practice has earned (and held) for decades.

Jim Astrachan - Intellectual Property Lawyer

Jim Astrachan

Donna Thomas - Baltimore Intellectual Property Lawyer

Donna Thomas