Biography

Mark Leonardo’s intellectual property practice is centered on his client’s technology, products, and brands in a wide range of industries that involve transactions, enforcement, technology transfer, and counseling matters. Mark advises clients with respect to business and transactional aspects of intellectual property, including commercial exploitation and management of patent and trademark portfolios, patent and trademark procurement, and opinion counseling on complex legal and technical issues. He assists clients in developing comprehensive and strategic patent and trademark portfolios that maximize a company’s competitive advantage, negotiating technology development, licensing and technology transfer agreements as well as litigation and pre-litigation protective measures.

Mark works with clients to acquire, develop and exploit intellectual property assets and has specific experience in developing arrangements where patents and brands are of ultimate value. He counsels clients regarding the development and enforcement of patent and trademark portfolios, including technology, consumer product, sporting, luxury goods, hotel and leisure, and apparel companies.

Mark is particularly active in counseling clients in connection with the acquisition and protection of intellectual property rights in corporate transactions, including strategies for protecting their organization’s intellectual property, evaluating the intellectual property of their prospective business partners, assessing merger candidates, corporate due diligence, and intellectual property investigations in conjunction with acquisitions, divestitures and mergers, secured transactions, venture financing, and public offerings.

Mark works heavily with the Firm’s Restructuring and Finance practices in assessing intellectual property asset issues before, during and after a restructuring event as well as due diligence and valuation in financings, secured transactions, and mergers and acquisitions. Mark also advises borrowers and lenders about perfecting security interests in intangible property.

Mark has been able to bring a breadth of real-world experience to his clients by routinely acting as "in-house" intellectual property counsel on an as-needed basis. In doing so, Mark has been able to provide unique legal assistance in overseeing the development of intellectual property policies and strategies for client companies and individual business units. This includes analyzing, negotiating, and counseling on various transactions and agreements, as well as analyzing, developing, and implementing offensive and defensive strategies for competitor product lines. Prior to his work at the Firm, Mark was a Patent Examiner in the biomedical and medical device arts at the United States Patent & Trademark Office.

Representation

Representing private equity firms in connection with intellectual property matters regarding the companies, in which they invest, including analysis of intellectual property portfolios, diligence, portfolio management and enforcement.

Representing a worldwide sporting and apparel company in its patent and trademark portfolio procurement, enforcement and licensing of its portfolios.

Representing an iconic 250 year old brand before the USPTO, Trademark Trial and Appeal Board, in opposing an application to register a similar mark.

Representing trademark owners in transactions involving brand assets including the building, licensing, enforcement and sale of portfolios.

Representing luxury goods brands in trademark and patent procurement portfolio management and enforcement actions.

Representing real estate focused private equity company as intellectual property counsel for its hotel and leisure offerings.

Representing companies and lenders in financing transactions that include perfecting the security interest in intellectual property rights.

Representing technology and consumer product companies in providing freedom-to-operate opinions and providing testimony as opinion counsel in various patent infringement litigations.

Representing a well-known restaurant chain in developing and enforcing its brand portfolio.

Representing hotel owners in trademark enforcement and portfolio development.

Represented a well-known clothing brand in building its trademark portfolio, developing and implementing a nationwide licensing strategy and selling the brand to a major sporting goods retailer.

Represented clients in restructuring and bankruptcy auction cases which involved assessing, transferring, and protecting intellectual property assets.

Represented bankruptcy auction bidders and committee members in resolving certain complex intellectual property estate causes of action against competitors including federal patent litigations.

Represented iconic NYC nightclub brand on anticipated structured financing of trademark and copyright license revenues.

Represented a large European fashion and home retailer in building and defending its U.S. intellectual property portfolio in preparation of its U.S. launch.

Represented a Fortune 50 medical device company in building and defending a 100M patent portfolio.

Represented a leading shoe manufacturer in defending its iconic trade-dress brand.

Represented a hedge fund’s intellectual property interests in its purchase of a large music and film catalog.

Represented companies seeking public offerings in the US and AIM listings in the UK on various intellectual property matters.

Represented a public company in financing transactions that included perfecting the security interest of lender’s worldwide intellectual property rights in a cross-border transaction.

Education

Cleveland Marshall – J.D., 1995
University of Massachusetts – B.S., M.E., 1992

Bar Admissions

Massachusetts
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
Publications
"The Fundamentals of Intellectual Property Protection: A Primer for Biotechnology and Life Science Companies," The Journal of Biolaw & Business, Special Supplement: Intellectual Property
"Foreign Service of Process By Letters Rogatory," The Law Works
Co-author, “Exploring the Perimeters of Whole Business Securitization,” Global Securitisation and Structured Finance
Speaking Engagements
Guest lecturer and panelist at MIT, Boston University and Babson College
Guest speaker, Ernst & Young’s Insight Exchange CEO Roundtable, Dublin, Ireland
Guest speaker, Doing Business in the United States, Dublin, Ireland
Guest speaker, IP Strategies for Emerging Medical Device Businesses at BioConnect Ireland – University College, Dublin, Ireland
Professional Affiliations
International Trademark Association (INTA)
American Intellectual Property Law Association (AIPLA)
Boston Patent Law Association
Massachusetts Bar Association
American Bar Association
Awards and Honors
Named to 2008 list of “Nation’s Top 10 Intellectual Property Lawyers” published by United States Lawyer Rankings
Selected in 2004 and 2005 as a Massachusetts "Super Lawyer" by the publishers of Law & Politics