Intellectual Property Transactions and Licensing
Geoffrey Lottenberg
Partner
As lead of Berger Singerman’s Intellectual Property Group and a Florida Bar Board Certified Intellectual Property attorney, Geoff handles a wide variety of matters, including IP procurement and enforcement, business and technology law, and complex commercial litigation. With a calculated approach, Geoff regularly litigates patent, trademark, and copyright disputes in Federal Court throughout the United States. He also handles a variety of technology-related commercial litigation matters including disputes over software contracts, non-compete agreements, and trade secrets. Geoff is also well-versed in Cybersecurity and Internet law including data privacy, data security, online defamation and reputation defense, and cyber-related forensic investigations.
As a Registered Patent Attorney armed with a background in mechanical engineering, Geoff prosecutes domestic and foreign patents and renders opinions on a variety of cutting-edge technologies, including protective products, semi-conductor and server cooling, nanoparticles, artificial intelligence, automation, facial recognition technology, medical devices, emergency communication devices, software-based systems, and energy devices. Geoff also has hundreds of federal trademark applications and registrations under his belt.
Geoff is an experienced transactional lawyer who works on broad array of corporate intellectual property matters including negotiating and preparing license agreements, software contracts, manufacturing and distribution agreements, and intellectual property asset transfers. Geoff is a key member of our firm’s mergers and acquisitions team and provides support in restructuring and work out matters.
Notable Litigation Results:
- Successfully defended Miami-based craft brewery against claims of trademark infringement made by one of the largest beer companies in the world. Asserted declaratory judgment claims for non-infringement and abandonment, which were later resolved by a covenant-not-to-sue. Representation also included affirmative claims for tortious interference, unfair competition, and violation of the Florida Deceptive and Unfair Trade Practices Act concerning an interrelated professional sports sponsorship agreement.
- Defended prominent streetwear company against claims of trademark/tradedress infringement and counterfeiting asserted by the world’s largest athletic shoes and apparel company. Resolved lawsuit through private settlement. Assisted client with navigating public relations and social media outreach.
- Obtained final default judgment and a substantial money award on behalf of a French-based cosmetics company against its holdover United States distributor for claims of breach of contract and trademark infringement. Representation included leading a significant cross-border investigation in Mexico, Brazil, Portugal, and France.
- Successfully enforced trademark rights on behalf of a Florida-based weight loss company against former manufacturer who created and copycat ecommerce website through which it sold counterfeit products.
- Successfully represented a prominent music, comedy, and lifestyle festival organizer against a former consultant that was alleged to have misappropriated company trade secrets and breached non-compete and non-disclosure obligations. Spearheaded an extensive investigation into the defendant’s wrongdoing through extensive digital forensics and electronic discovery.
- Defended aftermarket specialty performance auto parts retailer against claims of trademark infringement and counterfeiting brought by one of the world’s largest automakers. Strategically resolved the matter through a business-minded approach to the ultimate benefit of the client.
- Successfully enforced the brand and trademarks of one of the world’s largest instant noodle companies against egregious trademark and counterfeiting by a close competitor and its United States distributor.
- Obtained final default judgment of trademark infringement and unfair competition against Houston salvage shipper on behalf of a nationwide shipping and logistics company. Successfully orchestrated injunction enforcement raid in collaboration with the U.S. Marshal Service and Houston Police Department.
Published Opinions
Biscayne Bay Brewing Co., LLC v. La Tropical Holdings, B.V., No. 20-24180-CIV, 2021 WL 1341795 (S.D. Fla. Apr. 9, 2021)
Wolo Mfg Corp. v. Aftak Corp., 349 F. Supp. 3d 176 (E.D.N.Y. 2018)
Delaware Valley Floral Group, Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374 (Fed. Cir. 2010)
Issued Patents:
- U.S. Patent No. 10,294,682 for “Outrigger Debris Netting System”
- U.S. Patent No. 10,240,357 for “Working Deck Netting System and Related Methodology”
- U.S. Patent No. 9,687,025 for “Electronic Pipe”
- U.S. Patent No. 9,538,788 for “Electronic Cigarette”
- U.S. Patent No. 9,122,920 for “Digital Manifold Gauge
- U.S. Patent No. 9,043,161 for “Modular System and Methodology for Testing and Measurement”
- U.S. Patent No. 8,978,394 for “Convertible Refrigerant Recovery, Recycle, and Recharge System”
- U.S. Patent No. 8,186,230 for “System and Method for Airflow Sensing and Monitoring”
- U.S. Patent No. 8,511,856 for “LED Device Having Printable Layer”
- U.S. Patent No. 8,517,466 for “Convertible Boat Seat”
- U.S. Patent No. 8,567,333 for “Protective Boat Rub Rail System”
- U.S. Patent No. 8,628,491 for “Transjugular Intrahepatic Portosystemic Shunt Device”
- U.S. Patent No. 8,661,580 for “Patient Positioning Device”
- U.S. Patent No. 8,701,906 for “Ingredient Dispensing Cap for Mixing Beverages with Push-Pull Drinking Spout”
- U.S. Patent No. 8,739,494 for “Composite Concrete and Framing System and Method for Building Construction”
- U.S. Patent No. 8,740,297 for “Seat with Reversible Seat Back”
- U.S. Patent No. 8,768,429 for “Internal Bleeding Detection Apparatus”
- U.S. Patent No. 8,926,154 for “LED Device Having Printable Layer and Retention Feature”
- U.S. Patent No. D716,362 for “Aerodynamic Fairing for Audiovisual Device”
- Chambers & Partners USA: America's Leading Business Lawyers,
- Intellectual Property, 2024
- Intellectual Property (Up & Coming), 2022-2023
- Florida Super Lawyers, 2021, 2023
- Florida Super Lawyers, Rising Star Selection 2015-2020, 2022
- Florida Bar Board Certified Intellectual Property Attorney
- University of Miami School of Law, Mentor for the Intellectual Property Law Society, 2009-2011
- American Intellectual Property Law Association, Member
- International Trademark Association, Member
- Past Chair, Florida Bar 17th Judicial Circuit Grievance Committee "E"
Nasdaq's TradeTalks Features Geoffrey Lottenberg in, "Assessing Data Privacy and Cybersecurity Risk"
October 7, 2024
InformationWeek Quotes Geoffrey Lottenberg in, "Is Synthetic Data the Future of AI Model Training?"
September 27, 2024
September 5, 2024
Information Week Quotes Geoffrey Lottenberg in, "Sensitive Data of Millions Stolen in MSpy Breach"
July 15, 2024
April 6, 2024
Law360 Cites Geoffrey Lottenberg in, "Penn State Suit Sets Off Debate Over Trademarks' Function"
March 7, 2024
February 1, 2024
October 23, 2023
The Psych Effect Podcast, "You Would Get NIL Money," Featuring Geoffrey Lottenberg
July 13, 2023
June 1, 2023
Berger Singerman Recognized by Chambers USA for Twentieth Consecutive Year
June 1, 2023
South Florida's Young Successes
July 29, 2022
EmotionTrac invites Geoff Lottenberg as a guest for its podcast, "Latte With a Lawyer"
July 11, 2022
July 5, 2022
Twenty-three Berger Singerman Attorneys Recognized in 2022 Edition of Florida Super Lawyers
June 27, 2022
Berger Singerman Recognized by Chambers USA for Nineteenth Consecutive Year
June 1, 2022
September 24, 2021
August 30, 2021
Nineteen Berger Singerman Attorneys Recognized in 2021 Edition of Florida Super Lawyers
June 24, 2021
January 21, 2021
January 15, 2021
October 12, 2020
MedPage Today Quotes Geoffrey Lottenberg in, "Data Security: Telehealth's Achilles Heel?"
September 3, 2020
August 19, 2020
Twenty-Seven Berger Singerman Attorneys Recognized in 2020 Edition of Florida Super Lawyers
June 8, 2020
Hospitality Technology Quotes Geoffrey Lottenberg in, "WFH Now: What Leaders Need to Know"
April 15, 2020
April 8, 2020
CBS News Quotes Geoffrey Lottenberg in "Clemson Lost The Football Game, But Won The Financial Gains"
January 13, 2020
Twenty-Eight Berger Singerman Attorneys Recognized in 2019 Edition of Florida Super Lawyers
May 29, 2019
Berger Singerman Grows Intellectual Property Practice with Addition of Geoffrey Lottenberg
March 3, 2019
March 3, 2019
June 10, 2024
Daily Business Review, "Middle Market Mindset: New Considerations for IP Audits in 2023"
January 31, 2023
Big Awards Underscore Importance of Bolstering Your Company's Trade Secrets Protocols
July 25, 2022
Law360 'It's Time To Modernize Amateurism In College Sports'
April 9, 2021
Daily Business Review "Proposed Data Privacy Legislation Heightens Scrutiny on Fla. Businesses"
March 22, 2021
IP Watchdog "Unexpectedly Active IP Legal Market Bucks Recession Trends and Boosts Outlook"
October 22, 2020
Law360, "COVID-19 Telehealth Boom Demands Better Privacy Practices"
July 1, 2020
Law360, "Imminent College Athlete Licensing Puts Cos. On Notice"
January 2, 2020
IP Watchdog, "Five Practical Settlement Strategies to Get Your Client Out of Dodge "
August 5, 2019
Law360, "High Court Places Heavy Burden On Bankrupt TM Licensors"
May 29, 2019
SCOTUS Finally Clarifies Rights of Licensees of Bankrupt Brands
May 19, 2019
April 4, 2019
Intellectual Property and Generative AI
March 6, 2023
April 1, 2021
Can You Share the Photos Your Employees Took at Your Annual Picnic?
September 26, 2019
Changes at the USPTO for Individual Applicants and Foreign Businesses
September 9, 2019
Eleventh Circuit Affirms Landlord Liability for Infringing Acts of Its Tenants
August 20, 2019
First Amendment Reigns in SCOTUS Trademark Case
June 24, 2019
SCOTUS Finally Clarifies Rights of Licensees of Bankrupt Brands
May 19, 2019
Supreme Court Rules Registration, Not Just Application, Required to Sue for Copyright Infringement
March 4, 2019
- Malin, Haley, DiMaggio, & Bowen, P.A.
- Friedland Vining, P.A.
- Lott & Friedland, P.A.