Sandra Edelman
PEOPLE

Sandra Edelman

Partner
edelman.sandra@dorsey.com

Overview

SANDY'S PRACTICE FOCUSES ON TRADEMARKS AND UNFAIR COMPETITION, COPYRIGHT AND ADVERTISING LAW, PROVIDING CLIENTS WITH A FULL RANGE OF SERVICES TO HELP THEM SELL, ADVERTISE AND PROMOTE THEIR PRODUCTS.

She has extensive experience in brand name clearance and trademark portfolio management, advertising claims review and counseling on advertising and promotional content in both traditional and social media.

She acts as lead counsel in trademark opposition and cancellation proceedings and ex parte appeals before the Trademark Trial and Appeal Board, and advises clients on offensive and defensive litigation strategy. Sandy has also been the mediator in more than 30 intellectual property cases.

Education & Admissions

Cornell University (B.A., 1978), With distinction

George Washington University Law School (J.D., 1981), With honors, Order of the Coif, Managing Editor, George Washington Law Review

Admissions

  • New York

Experience

Client Achievements

Representative Work

  • Availability review of hundreds of brand names, advertising slogans and label designs for SAMUEL ADAMS beer, REBEL IPA and ANGRY ORCHARD Hard Cider
  • Assistance with the design of market research studies necessary to support comparative advertising claims of superior product performance and follow-through review of ad claims based on the research
  • Copyright and trademark advice on a multi-component marketing system that encompasses computer programs, interactive website templates and sales brochures
  • Successful ex parte appeal in the Trademark Trial and Appeal Board of refusal to register the VirusScan mark on grounds of genericness and descriptiveness
  • Initiation and successful settlement of dozens of TTAB opposition and cancellation proceedings
  • Defense and successful settlement of trademark infringement claims asserted against clients' products and brand extensions
  • Trademark adoption and registration advice for an online publisher's collaborative social media platform to share scientific research
  • Extensive experience in pharmaceutical brand name clearance, including FDA-regulatory considerations
  • Advice on trademark registration strategy for the updating and modernization of client's principal logo design

News & Resources

Articles

The Latest Influencer Advertising Tips from the FTC – When, How & Where to Make Effective Disclosures
The FTC Throws Shade at Influencer Bruhs Who Failed to Disclose Material Connections
Who Owns that Trademark? An Incomplete Answer Voids Application
Tea Rose, Swiss Cheese and Slam Dunk Evidence of Infringement – The 9th Circuit Weighs in on Remote Geographic Trademark Users
Endorsement Disclosures on the Front Burner Again at the FTC
Who Owns That Trademark – The Manufacturer or the Exclusive Distributor?
Lack of Bona Fide Intent to Use and Its Consequences According to the 6th Circuit
Crossing the Line – Two More NAD Decisions on Unsubstantiated Comparative Line Claims
The Second Circuit Gets the Joke – Affirms Dismissal of Trademark Parody Lawsuit
Friends, Family and High Blood Pressure – FTC Takes Action Against Undisclosed Family Reviews and Unsubstantiated Claims for Mobile Health App
Comparative Advertising Do’s and Don’ts from the NAD – Part 2
Comparative Advertising Do’s and Don’ts from the NAD – Part 1
“Meandering Evening Stroll” Helps Defeat Preliminary Injunction Motion Against AMAZON FIRE TV
Is Marriage a “Material Connection”? The FTC Challenges an “Independent” Expert Based on Marital Status
A Diamond is Forever. What About Your Advertising Claim?
In What Way is False Advertising False and Why it Makes a Difference
POM Wonderful Returns – Lanham Act False Advertising Claim Against Home Pregnancy Tests Not Precluded by FDCA
Trump Hotel False Advertising Suit Against Culinary Workers Union Gets Chopped
Unwanted Baggage: Asset Acquisition and Successor Liability
BRAND NAMES AS FALSE ADVERTISING AND OTHER LESSONS ON COMPARATIVE PRODUCT TESTING
Empire State Building Trademark Owner Vanquishes Beer Logo Design
The Second Circuit Re-Visits Dawn Donut and the Geographic Scope of Injunctive Relief in Trademark Cases
How to Infringe a Certification Mark – The Second Circuit Counts the Ways
Nominative Fair Use of a Trademark: The Second Circuit Weighs In
Who Should Own a Trademark Registration? The Case of the Not-So-Related Parent Company, The Licensing Journal

News & Press Mentions

Six Dorsey Lawyers in New York Selected for Inclusion in The Best Lawyers in America 2018
Dorsey's TMCA Blog Recently Featured as ABA's Blawg of the Week
Chambers USA 2017 Recognizes Dorsey Lawyers and Practice Groups in New York
Chambers USA 2017 Recognizes Dorsey Lawyers and Practices
Dorsey Partner Sandra Edelman Named BTI 2017 Client Service All-Star
Dorsey Partner Sandra Edelman Named Top Attorney for Client Service
Twelve Dorsey Attorneys Named 2017 IP Stars
Dorsey’s Trademark Lawyers Honored in World Trademark Review 2017
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by U.S. News – Best Lawyers Best Law Firms
Super Lawyers Recognizes 18 Dorsey Lawyers in New York
6 Dorsey Lawyers in New York Selected for Inclusion in The Best Lawyers in America 2017
Dorsey Partner Sandy Edelman Discusses Guthrie Healthcare Trademark Case
Chambers USA 2016 Recognizes Dorsey Lawyers and Practice Groups in New York
Chambers USA 2016 Ranks Dorsey Lawyers and Practices
Thirteen Dorsey Attorneys Named 2016 IP Stars
Dorsey Partners Edelman, Marsalek and Tygesson Named BTI 2016 Client Service All-Stars
Dorsey Partner Sandra Edelman Named a Top Lawyer for Client Service
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey & Whitney Announces New IP Blog: The TMCA
Super Lawyers Recognizes 20 Dorsey Lawyers in New York
8 Dorsey Lawyers in New York Selected for Inclusion in The Best Lawyers in America® 2016
Dorsey Partner Sandra Edelman Receives 2015 Ladas Memorial Award
Nine Dorsey Attorneys Named 2015 IP Stars
Dorsey Partner Sandra Edelman Discuss the WTCA Trademark Case
Chambers USA 2015 Recognizes Dorsey Lawyers and Practice Groups in New York

Select Presentations

  • Speaker, 2012 PTO Day Meeting, Bona Fide Intent to Use – Attorney and Client Obligations
  • Speaker, Women Legal 2009 Conference
  • Speaker, INTA Next Level Forum, Master Class: War and Peace (March 2009)
  • Moderator, INTA Annual Meeting, "Survey Says … Survey Strategy in Trademark Litigation," Berlin, Germany (May 19, 2008)
  • Speaker, INTA Annual Meeting, "Fundamentals of a U.S. Trademark Dilution Claim" (May 2004)
  • Speaker, Law Education Institute, "Trade Dress and Other Recent Developments Under Section 43(a)" (January 2004

Industries & Practices

  • Banking
  • Food, Beverage & Agribusiness
  • Health Care
  • Intellectual Property Litigation
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • Editor-in-Chief of The Trademark Reporter, published by the International Trademark Association (INTA) (2004-2005)
  • Mediator for the federal court for the Southern District of New York Program of Mandatory Alternative Dispute Resolution and member of the INTA Trademark Mediators Network

Accolades

Rated by Super Lawyers - Sandy Edelman

Ranked in USA Chambers 2017 Leading Individual  Ranked In - USA Chambers and Partners 2016 - Leading Individual   Ranked in Chambers USA 2015 - Leading Individual  

  BTI Client Service MVP 2017
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013-2017
  • Named to BTI Client Service All-Star Attorneys, 2016
  • Ranked "Leading Individual" in Trademark & Copyright Law (New York) by Chambers USA, 2009-2017; mentioned in Trademark & Copyright Law (New York) "Leading Firm" Profile by Chambers USA, 2008 
  • 2015 Recipient of the Ladas Memorial Award, International Trademark Association's recognition for “Excellence in Writing in the Field of Trademark Law”
  • Listed in "Top 250 Women in IP" by Managing Intellectual Property, 2013-2014
  • Recognized as "IP Star" in 2013-2017 by Managing Intellectual Property Handbook
  • Listed in Best Lawyers in America©, 2007-2018
  • Listed in New York Super Lawyers, 2006-2017
  • Ranked by her peers among the Top 20 Experts' Experts in the U.S., World Trademark Review, 2007
Sandra Edelman