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William F. Herbert

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William F. Herbert

Attorney

William F. Herbert was born in Holyoke, Massachusetts.  Mr. Herbert studied biology, chemistry and physiological psychology at Boston College where he graduated Cum Laude.  He received his law degree from the Catholic University of America, where he was a staff member of the Catholic University Law Review.  He was admitted to membership in the Bar of the State of Massachusetts in 1981, and the Bar of the District of Columbia in 1984.  He also is admitted to practice before the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court.

Mr. Herbert is engaged in the preparation and prosecution of U.S. and foreign patent applications in the mechanical, biotechnology, chemical, design and plant areas.  Mr. Herbert’s practice is also very actively engaged in unfair competition and trademark matters, including trademark prosecution, oppositions, cancellations and related litigation.  His experience also covers various copyright and international trade matters.

Mr. Herbert is a member of the District of Columbia Bar Association (CLE Committee member 2010 – 2016, Chairman, Patent Committee of the Intellectual Property Section 1993 – 1995, Co-Chairman, Steering Committee of the Intellectual Property Section 1995 – 1998, member Steering Committee of the Intellectual Property Section 1995 – 1999), The Massachusetts Bar Association (Business Law Section and Mentor Program), the American Intellectual Property Law Association, the International Trademark Association and is a member of the Giles S. Rich American Inn of Court (officer 1997 – 2003, President 2002 – 2003).

Mr. Herbert was the Moderator at the District of Columbia Bar Association 1996 Annual Convention seminar entitled “Multi-media and the Law:  What You Don’t Know Could Hurt You!”, has been the sole speaker at the D.C. Bar’s 1996 – 2002 and the Massachusetts Bar’s 2001 seminars entitled “Preparing a Trademark Registrability and Use Opinion”, and was a contributing speaker at the D.C. Bar’s December 1998 – 2001 CLE programs entitled “Developments in Intellectual Property Law”.  Mr. Herbert also spoke in February 2002 to the U.S. Government Intellectual Property Law Association Conference on the topic of “Unauthorized Use of Marks on the Internet”.   Mr. Herbert also spoke at the July 2003 Law Seminars International Trademark Transactions and Litigation Workshop, and was the Co-Chair of the July 2004 work shop entitled “Trademark Portfolio Acquisition & Protection Workshop”.

Mr. Herbert is the recipient of the District of Columbia Bar Association’s Intellectual Property Section Distinguished Service Award (2004).

Mr. Herbert is also the author of “Failure to Disclose the Best Mode:  What the Public Doesn’t Know Will Hurt Them”, 64 Journal of the Patent Office Society 12 (1982), and “Clearing Marks for U.S. Use and Registration”, International Legal Strategy, Vol. VII-3, March 1998.

 Martindale-Hubbell Law Directory Rating:  AV Preeminent 

Professional Associations and Memberships

    • The District of Columbia Bar, 1981 - Present 
      Member
    • The District of Columbia Bar Continuing Legal Education Committee 2010 - 2016
    • The District of Columbia Bar, Intellectual Property Section, 1995 - 1998;  Co-Chairman, Steering Committee
    • The District of Columbia Bar, 1993 - 1995;  Chairman, Patent Law Committee
    • Massachusetts Bar Association, Business Law Section
      Member
    • Massachusetts Bar Association, Mentor Program
      Member
    • American Intellectual Property Law Association
      Member
    • Prettyman-Leventhal American Inn of Court, 1988 - 1991
      Member
    • Giles S. Rich American Inn of Court, 1992 to present
      Member

Published Works

  • "'Failure to Disclose the Best Mode:'What the Public Doesn't Know Will Hurt Them'", 64 J.P.O.S. 12, 1982
  • "Clearing Marks for U.S. Use and Registration", International Legal Strategy, Vol. VII-3, March 15, 1998

Representative Cases

Luv & Care, Inc., v. Ansa Bottle Co., 2 U.S.P.Q. 2d 1955 (SDNY 1987)

The Loglan Institute Inc. v. The Logical Language Group Inc., 22 U.S.P.Q. 2d 1531(Fed. Cir. 1992)

Croydon Co., Inc. v. Unique Furnishings, Ltd., Civil Action No. 3:92-cv-00126-BR (EDNC 1992)

Urbani Tartufi s.n.c.v. Rosario’s Epicureo Ltd., Civil Action No. 1:2003-cv-01214 (EDNY 2003)

AXIA Investment Management, Inc., et al. v. AXA et al., Civil Action No. 4:07-cv-00420 (ND Ok 2007) and companion case, AXA et al. v. AXIA Investment Management, Inc. et al. Civil Action No:  1:07-cv-08293 (SDNY 2007)

Classes/Seminars Taught

  • Lecturer, The District of Columbia Bar, 1996 - 2002
  • Lecturer, The Massachusetts Bar, 2001

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