Sandra Edelman

Sandra Edelman




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


  • New York


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


Unwanted Baggage: Asset Acquisition and Successor Liability
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
Context Matters in False Advertising Cases – District Court Judge Denies Chobani Motion for Reconsideration of Scope of Injunction
Who Should Own a Trademark Registration? The Case of the Not-So-Related Parent Company
#Ad! — Lessons from the FTC’s First Case since the Release of its Enforcement Policy on Native Ads
The Truth of the Matter – A Successful Defense to Defamation and Product Disparagement Claims
Going Native? Part 2: The FTC’s Native Advertising Guide for Businesses – The Why, When and How of Effective Disclosures
Going Native? The FTC’s Enforcement Policy Statement on Deceptively Formatted Advertisements Provides a Roadmap – Part 1
Updated FTC Guidance on Endorsements and Testimonials in Social Media Advertising – Does Your Advertising Pass Muster?
When Scientific Research Becomes False Advertising
Full Disclosure in Advertising – Recent Guidance from the FTC
Why Wait Three Years? Cancellation of Lanham Act Section 44(e) and 66(a) Registrations Based on Non-Use Prior to the Three-Year Statutory Period for Presumption of Abandonment, The Trademark Reporter
POM Wonderful: U.S. Supreme Court Holds Lanham Act False Advertising Claims Not Precluded by FDA Statute
Think Big in a Small World: FTC Guidelines for Effective Disclosures in Digital Advertising
Delay in Filing Preliminary Injunction Motions: 2009 Edition,“ The Trademark Reporter
"Proving Your Bona Fides — Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act"
"Medinol and Findings of Fraud in the Procurement of a Trademark Registration: Has the TTAB Gone Too Far?" (co-author) IP Litigator
Is That Trademark Really In Use? The TTAB Provides Further Guidance After Medinol
It’s No Secret - The Supreme Court Rules on the Federal Trademark Dilution Act
"How to Critique a Confusion Survey, or Mistakes to Avoid in Developing Survey Evidence," IP Litigator

News & Press Mentions

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
Eight Dorsey Attorneys Named 2014 IP Stars
Dorsey’s Trademark Lawyers Honored in World Trademark Review
The TTABlog Recommended Reading: Sandra Edelman on Cancellation of Non-Use-Based Registrations Less Than 3-Years Old
Dorsey Congratulates Sandra Edelman, Jamie Nafziger and Lisa Osman on Being Named to the IP Stars-Top 250 Women in IP
Super Lawyers Recognizes 17 Dorsey Lawyers in New York
Chambers USA 2014 Recognizes Dorsey Lawyers and Practice Groups in New York
Chambers USA 2014 Ranks Dorsey Lawyers and Practices
Dorsey Named One of Top Trademark Firms
Nine Dorsey Attorneys Named 2013 IP Stars

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 & 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


Rated by Super Lawyers - Sandy Edelman

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

  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013-2016
  • Named to BTI Client Service All-Star Attorneys, 2016
  • Ranked "Leading Individual" in Trademark & Copyright Law (New York) by Chambers USA, 2009-2016; 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 2013-2016 by Managing Intellectual Property Handbook
  • Listed in Best Lawyers in America©, 2007-2017
  • Listed in New York Super Lawyers, 2006-2016
  • Ranked by her peers among the Top 20 Experts' Experts in the U.S., World Trademark Review, 2007
Sandra Edelman