Sandra Edelman
PEOPLE

Sandra Edelman

Partner
edelman.sandra@dorsey.com

Overview

CLIENTS COUNT ON SANDY TO HELP THEM SELL, ADVERTISE AND PROMOTE THEIR PRODUCTS.

Sandy contributes to clients’ business success by providing strategic advice on trademarks, copyrights, unfair competition, and advertising law.  Her extensive experience in brand name clearance and trademark portfolio management has placed her in the Gold band (the highest possible) of the WTR 1000—a ranking of the world’s leading trademark professionals by the World Trademark Review.  Specifically, in its 2018 rankings, WTR relayed high praise by her peers and clients, who called her “incredibly smart and committed”, described her guidance as “pragmatic and all-inclusive,” and stated that “she has helped to advance the trademark practice as a whole.”

Deep experience in advertising claims review as well as advertising and promotional content in both traditional and social media rounds out Sandy’s full-service advice practice, making her a valuable asset to clients looking to grow and/or protect their market share.  When disputes arise, Sandy is able to play a central role in resolving them.  She acts as lead counsel in NAD advertising challenges, trademark opposition and cancellation proceedings and ex parte appeals before the Trademark Trial and Appeal Board.  She also works seamlessly with Dorsey’s highly-regarded Intellectual Property Litigation Practice Group to develop effective federal court litigation strategy and expert testimony.  When she is not advocating on her clients’ behalf, she often acts as a neutral and has been a mediator in over 30 intellectual property cases.

Sandy serves not only her clients, but also the firm itself.  Sandy is the managing partner of Dorsey's New York office.  She formerly served on Dorsey’s Management Committee and as the Chair of the Trademark Practice Group.  Sandy is also co-creator and co-editor of Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising.  TheTMCA.com was named one of the “Top 50” law blogs by the ABA Journal in 2017.

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

Wine Dispute Has No Legs: Trademark Opposition Alone Insufficient to Create a Justiciable Controversy for Declaratory Judgment Actions
Trademark Practice Tip: How to Settle a Trademark Opposition Proceeding and Obtain Judgment Against the Applicant After an Application is Abandoned
ANDY WARHOL’S PRINCE SERIES PORTRAITS HELD FAIR USE OF PHOTOGRAPH
Third Circuit Analyzes Work for Hire and Assignment Requirements and Explains Why the Distinction Matters
Quirky Questions: Do All TTAB Deadlines Extend Through Weekends/Holidays? Practitioners Beware!
Second Circuit Affirms Louis Vuitton Not Liable for Attorneys’ Fees in Parody Handbag Case
Comparative Advertising Pitfalls – Consumers Shouldn’t Have To Do The Math
#COVFEFE – It’s a Thing, But Not a Trademark
TiVo Proves More than 15 Minutes of Fame to Succeed on Trademark Dilution Claim
Fine Print May Not Be Enough to Avoid False Advertising Liability
Registration of Color Trademarks on Product Packaging: The TTAB Lays Down Some Black and White Rules
Update – Trump Place Sign to Be Removed from NYC Building After Successful DJ Lawsuit
#HonestAds : A Wrap Up from the 2018 NAD Conference
Second Circuit Goes Rogue – Reverses District Court on Priority of Common Law Rights in ROGUE Brand Apparel
In Case You Missed It – Our Top 8 Posts of 2018 So Far
NAD Enters the Spin Zone – Salad Spinner Superiority Claim Found Unsubstantiated
WTF? USPTO to Continue Refusing Scandalous and Immoral Marks…For Now
Trump Brand Loses Trademark Licensing Dispute – Rules of Contract Law Prevail
OG v. OB-GYN: Dr. Drai Drops the Mic on Dr. Dre
Gidget Goes Abandoned (the trademark registrations, that is)
FTC Bugged by Unsubstantiated Mosquito Repellant Claims and Endorsements With Undisclosed Material Connections
“Fastest Growing Brand” – Don’t Mix and Match Ad Claim and Substantiation
Historical Fact or Creative Expression? Anastasia Copyright Dispute Proceeds to Trial
Assembled in the USA – The FTC Confirms What’s Required
An FTC Twofer – Made In USA Claims and Selfie/Self-Certification Marks

News & Press Mentions

Dorsey’s Trademark Lawyers Ranked in World Trademark Review Global Leaders Guide
Super Lawyers Recognizes 15 Dorsey Lawyers in New York
Dorsey’s New York Office Recruiting Efforts Add Key Talent
Managing Intellectual Property Ranks Seventeen Dorsey Attorneys as 2019 IP Stars
Chambers USA 2019 Recognizes Dorsey Lawyers and Practices
Dorsey Names Sandra Edelman as New York Office Head
Dorsey Partners Sandra Edelman and Michael Lindsay Named BTI 2019 Client Service All-Stars
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
Dorsey’s TMCA Blog Named Again as One of ABA’s Top Blogs
Super Lawyers Recognizes 19 Dorsey Lawyers in New York
Seven Dorsey Lawyers in New York Selected for Inclusion in The Best Lawyers in America 2019
Seventeen Dorsey Attorneys Ranked 2018 IP Stars
Chambers USA 2018 Recognizes Dorsey Lawyers and Practices in New York
Dorsey Moves Up Ranks of 2018 Above the Law Power 100
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
Dorsey's TMCA Blog Named One of ABA's Top 50 Blogs
Super Lawyers Recognizes 19 Dorsey Lawyers in New York
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

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 & Financial Institutions
  • Creative Industries
  • Food, Beverage & Agribusiness
  • Healthcare
  • Intellectual Property Litigation
  • Technology
  • 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 Chambers USA 2019 Leading Individual  Chambers USA 2018 Leading Individual  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 BTI Client Service All Stars 2019 logo
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013-2019
  • Named to BTI Client Service All-Star Attorneys, 2016 and 2019
  • Ranked "Leading Individual" in Intellectual Property: Trademark & Copyright Law (New York) by Chambers USA, 2009-2019; 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 2013-2019 by Managing Intellectual Property Handbook
  • Listed in Best Lawyers in America©, 2007-2020
  • Listed in New York Super Lawyers, 2006-2019
  • Ranked by her peers among the Top 20 Experts' Experts in the U.S., World Trademark Review, 2007
Sandra Edelman