William R. Samuels

Email MeWilliam R. Samuels

Founder
Location:
New York City, New York
Phone:
212-206-9399
Fax:
917-522-9615
Email:

Founder of the IP boutique law firm W.R. Samuels Law PLLC in 2011, Bill Samuels advises clients on protecting, enforcing, and leveraging their intellectual property. Bill and his team tailor strategies and protection plans to achieve each respective client's goals and business objectives.

Bill regularly works with clients to secure domestic and international trademark, copyright, and patent protections, to enforce and defend client rights, and to advise on commercializing intellectual property. He also concentrates on brand development and management, licensing, anti-counterfeiting issues, Internet matters, and more.

Before founding W.R. Samuels Law, Bill began his legal career in San Francisco, CA, as outside general counsel to various startup companies, advising them on intellectual property, business strategies, and general corporate matters. He then spent three years at a California IP boutique advising clients on trademarks, copyright, design and trade dress protection, anti-counterfeiting and customs enforcement, trade secrets and unfair competition, as well as global licensing regimes.

Bill is admitted to practice in New York and California. As Co-Chair of the Trademark Committee of the New York State Bar Association, he speaks to various groups regarding current and emerging IP issues. Bill is a past Articles Editor for the IP law journal New Matter, and he is active with the International Trademark Association (INTA).

A graduate of Emory University School of Law, Bill is a recipient of the TI:GER Certificate in Intellectual Property and IP Commercialization. He holds an MA in English literature from the University of Pennsylvania and a BA from Georgetown University.

Areas of Practice

  • 80% Intellectual Property
  • 20% Intellectual Property Litigation

Bar Admissions

  • New York, 2008

Education

  • Emory University School of Law, Atlanta, Georgia - 2006
  • University of Pennsylvania
    • M.A. - 2000
    • Major: English Literature
  • Georgetown University
    • B.A. cum laude - 1997
    • Honors: Phi Alpha Theta International History Honors Society

Classes/Seminars

  • Host, INTA Roundtable: The Madrid Protocol - Staying Afloat when Navigating the waters of the Madrid Protocol, International Trademark Association, 2016
  • Speakers focused on IP issues specific to start-ups, including whether, when, and why to seek IP protection, and the value-add to outside investors. The panel included inside and outside counsel, and early/late stage investors., Moderator, Venturing Forward: Issues Facing Start-Up Companies, NY State Bar Association, IP Section Fall Meeting 2016, 2016
  • The panel discussed and evaluated current practical considerations in asserting and defending cybersquatting claims, trademark considerations in light of Uniform Domain Name Dispute Resolution Policy (“UDRP”) decisions, litigation concerns under the Anti-Cybersquatting Consumer Protection Act (“ACPA”) 1999 amendment to the Lanham Act, and related enforcement and defense approaches, as well as counseling strategies for assisting clients that are operating and staking claims online., Moderator, Trademarks, Domain Names & Cybersquatting , NY State Bar Association , IP Section Trademark Committee, 2016
  • An overview of trademark licensing basics with additional discussion of more advanced issues., Moderator, Perspectives on Trademark Licensing from In-House and Outside Counsel, New York State Bar Association: IP Section Annual Meeting, 2016
  • Program covered trademark law from initiating a clearance search to litigating a trademark dispute. Attendees learned what trademark law is intended to protect, the registration process, enforcement issues in trademark litigation, and other important knowledge that you need to know if you are practicing trademark law., Speaker, Trademarks: From Clearance Search To Litigation, New York State Bar Association, 2015
  • This panel of in-house counsel, outside counsel, and law enforcement discussed steps taken by global brands and the state and federal government to protect rights holders and to prevent counterfeit goods from entering the US and enforcing criminal liability for the sale of counterfeit goods. An overview about brand enforcement, social media, and new gTLDs in the enforcement context was provided, accenting relevant information about enforcing against counterfeit products. , Moderator, How to Enforce Against Counterfeiters: Strategies and Realities in The Connected Global Marketplace, New York State Bar Association: Fall Meeting, 2014
  • Provided breakdown, information, and understanding of trademark law and domestic and international trademark practice to enable solo and small firms to address such issues for their clients. , Speaker: Trademark Law, A Primer on Intellectual Property, New York State Bar Association, 2014
  • Spoke on copyright, contract, and practical legal issues that affect freelance writers., Speaker, LEGAL CONSIDERATIONS FOR FREELANCERS , New York University, Health & Environmental Reporting Program (SHERP), NYU Science
  • Lecture and discussion of copyright considerations regarding the Internet, digital technology, and file sharing—including a focus on fair use issues., Speaker, TO COPY OR NOT TO COPY: CONSIDERATIONS IN COPYRIGHT LAW, Brooklyn Bar Association, Intellectual Property Law Section
  • Panelists discussd issues of particular concern, including: Bankruptcy treatment of “executory contracts” and criteria for determining whether a licensing agreement is an “executory contract” Special provisions of the Bankruptcy Code governing intellectual property Differences between the bankruptcy treatment of trademarks and other types of IP Strategies for dealing with a licensor’s or licensee’s bankruptcy filing Due diligence of licensing agreements to identify potential bankruptcy issues Emerging and unresolved issues in the bankruptcy treatment of IP, Moderator, IP LICENSES IN BANKRUPTCY , New York State Bar Association, Intellectual Property Law Section Trademark Committee
  • Intellectual Property is often considered the purview of specialized boutique law firms, however, aspects of this practice area can readily be incorporated into solo and small firm practice. In this basic-level program, a seasoned faculty presented a nuts and bolts overview of copyright and trademark registration practice while addressing the various litigation challenges that may arise in those areas. The program also addressed important areas of licensing, trade secrets and changes to patent law under the new America Invents Act., Speaker, Basics of Intellectual Property Law, New York State Bar Association, Trademarks
  • The discussion considered the current state of preliminary and permanent injunctions in trademark matters. Issues covered included the likelihood of getting a preliminary injunction in trademark cases, the cost-benefit analysis of seeking injunctions, how these concerns affect litigation strategy, how to advise clients in such efforts, as well as developments to watch for going forward., Moderator, PRELIMINARY AND PERMANENT INJUNCTIONS IN TRADEMARK CASES, New York State Bar Association, Intellectual Property Law Section Litigation And Trademark Committees
  • Seminar touching on AdWords/keyword use/sales, as well as Web site counterfeiting, copyright issues, trademark infringement, and online IP in general., Host & Organizer, POLICING YOUR BRAND ON THE INTERNET: HOW TO PROTECT & DEFEND WHAT IS YOURS, New York State Bar Association, Intellectual Property Law Section Trademark Committee

Honors and Awards

  • Lawyers of Distinction offers membership to no more than 10% of attorneys in any given state. Lawyers of Distinction uses it own independent criteria, including both objective and subjective factors in determining if an attorney can be recognized as being within the top 10% of attorneys in the United States in their respective field., Lawyers of Distinction -- Top 10% in USA, Lawyers of Distinction, 2017
  • Super Lawyers recognizes the top lawyers in the New York Metro area. These attorneys are selected via peer nomination, independent research and peer evaluation. While up to five percent of the lawyers in a state are named to Super Lawyers, no more than 2.5 percent are named to the Rising Stars list., Super Lawyers, Thomson Reuters, 2016
  • Forbes Legal Black Book created by Forbes Business Division is a compendium of law firms recognized for providing legal services to U.S. and global corporations. , Forbes Legal Black Book, Forbes, 2015
  • Super Lawyers Metro Rising Star, Super Lawyers, Thomson Reuters, 2015
  • Invitation-only, nationwide organization of lawyers in practice today who combine stellar legal credentials with a proven commitment to community engagement and the highest professional standards., Top 40 Under 40: New York IP Lawyers, The American Society of Legal Advocates, 2014
  • Super Lawyers Metro Rising Star, Super Lawyers, Thomson Reuters, 2014
  • Super Lawyers Metro Rising Star, Super Lawyers, Thomson Reuters, 2013

Professional Associations and Memberships

  • TrademarkNow Board of Advisors, 2017
  • Member of the House of Delegates, New York State Bar Association IP Section Delegate, 2014
  • Co-Chair, IP Section Membership Committee: New York State Bar Association
  • U.S. District Court Southern District of California
  • Co-Chair, IP Section Trademark Committee: New York State Bar Association
  • New York
  • U.S. District Court Eastern District of New York
  • U.S. District Court Southern District of New York
  • U.S. District Court Central District of California
  • California
  • IP Section Executive Committee: New York State Bar Association

Pro Bono Activities

  • Volunteer Attorney, California Lawyers for the Arts

Languages

  • English
  • Spanish
  • nysba
  • new york city bar
  • inta | International Trademark Association
  • state bar of california
  • cla | California lawyers for the arts
  • American Society of Legal Advocates (ASLA)
  • aipla