Warshaw Burstein LLP | William Samuels
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Attorneys
William  R. Samuels

PRACTICES

Litigation
Intellectual Property
Intellectual Property Litigation

EDUCATION

Emory University School of Law, J.D.

University of Pennsylvania, M.A.

Georgetown University, B.A.

ADMISSIONS

  • New York
  • California
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Southern District of California

LANGUAGES

  • Spanish
William R. Samuels
Partner
CONTACT INFORMATION
Tel: (212) 984-7754
Fax: (212) 972-9150
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William “Bill” Samuels is a partner who focuses his practice on intellectual property (“IP”) and solving IP-related problems.  He handles all aspects of domestic and international IP matters, including trademarks, copyrights, patents, IP enforcement and defense, IP licenses and agreements, domain names, software services, counterfeit protection, unfair competition, and IP counseling and due diligence.

Mr. Samuels provides advice and counsel to clients with regard to obtaining, protecting, and licensing or otherwise commercializing trademarks, patents, copyrights, and other similar assets both domestically and internationally.  With his clients coming from a wide variety of industries and ranging from startup companies to multinational corporations, Bill tailors his recommendations and client options in a manner that fits each particular client’s needs.

Admitted to practice in New York and California, Bill is also admitted to practice before the U.S. District Courts for the Eastern and Southern Districts of New York, and the U.S. District Courts for the Central and Southern Districts of California.

Mr. Samuels is Secretary of the New York State Bar Intellectual Property Section, co-chair of that section's Trademark Law Committee, and is a frequent speaker in the space. Bill received a Bachelor of Arts in English literature from Georgetown University in 1997 and a Master of Arts in English Literature from the University of Pennsylvania in 2000. He was awarded his Juris Doctor by Emory University School of Law in 2006.

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PRESENTATIONS

  • Moderator, Perspectives on Trademark Licensing from In-House and Outside Counsel, New York State Bar Association: IP Section Annual Meeting, 2016 Moderator, Trademarks, Domain Names & Cybersquatting, NY State Bar Association, IP Section Trademark Committee, 2016
  • Moderator, Venturing Forward: Issues Facing Start-Up Companies, NY State Bar Association, IP Section Fall Meeting, 2016
  • Host, INTA Roundtable: The Madrid Protocol - Staying Afloat when Navigating the waters of the Madrid Protocol, International Trademark Association, 2016
  • Speaker, Trademarks: From Clearance Search To Litigation, New York State Bar Association, 2015
  • Speaker: Trademark Law, A Primer on Intellectual Property, New York State Bar Association, 2014
  • Moderator, How to Enforce Against Counterfeiters: Strategies and Realities in The Connected Global Marketplace, New York State Bar Association: Fall Meeting, 2014
  • Moderator, IP Licenses In Bankruptcy, New York State Bar Association, Intellectual Property Law Section Trademark Committee
  • Moderator, Preliminary And Permanent Injunctions In Trademark Cases, New York State Bar Association, Intellectual Property Law Section Litigation And Trademark Committees
  • Speaker, Basics of Intellectual Property Law, New York State Bar Association, Trademarks
  • Program Chair, New York State Bar Association IP Section Annual Meeting, 2017
  • CLE Organizer & Host, Policing Your Brand On The Internet: How To Protect & Defend What Is Yours, New York State Bar Association, Intellectual Property Law Section Trademark Committee
  • CLE Speaker, Basics of IP Law: Trademarks, New York State Bar Association
  • Speaker, Legal Considerations For Freelancers, New York University, Health & Environmental Reporting Program (SHERP), NYU Science
  • Speaker, To Copy Or Not To Copy: Considerations In Copyright Law, Brooklyn Bar Association, Intellectual Property Law Section

CLASSES/SEMINARS

  • Host, INTA Roundtable: The Madrid Protocol – Staying Afloat when Navigating the waters of the Madrid Protocol, International Trademark Association - 2016
  • Moderator, Venturing Forward: Issues Facing Start-Up Companies, NY State Bar Association, IP Section Fall Meeting 2016, 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, Trademarks, Domain Names & Cybersquatting , NY State Bar Association , IP Section Trademark Committee, 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.
  • Host, Perspectives on Trademark Licensing from In-House and Outside Counsel, New York State Bar Association: IP Section Annual Meeting, 2016.  An overview of trademark licensing basics with additional discussion of more advanced issues.
  • Speaker, Trademarks: From Clearance Search To Litigation, New York State Bar Association, 2015.  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.
  • Moderator, How to Enforce Against Counterfeiters: Strategies and Realities in The Connected Global Marketplace, New York State Bar Association: Fall Meeting, 2014.  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.
  • Speaker: Trademark Law, A Primer on Intellectual Property, New York State Bar Association, 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, LEGAL CONSIDERATIONS FOR FREELANCERS, New York University, Health & Environmental Reporting Program (SHERP), NYU Science.  Spoke on copyright, contract, and practical legal issues that affect freelance writers.
  • Speaker, TO COPY OR NOT TO COPY: CONSIDERATIONS IN COPYRIGHT LAW, Brooklyn Bar Association, Intellectual Property Law Section.  Lecture and discussion of copyright considerations regarding the Internet, digital technology, and file sharing—including a focus on fair use issues. 
  • Moderator, IP LICENSES IN BANKRUPTCY, New York State Bar Association, Intellectual Property Law Section Trademark Committee.  Panelists discussed 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. 
  • Speaker, Basics of Intellectual Property Law, New York State Bar Association, Trademarks. Intellectual Property is often considered the purview of specialized boutique law firm’s, 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.
  • Moderator, PRELIMINARY AND PERMANENT INJUNCTIONS IN TRADEMARK CASES, New York State Bar Association, Intellectual Property Law Section Litigation And Trademark Committees.  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.

AWARDS/HONORS

  • Laywers of Distinction
  • New York Super Lawyers (2018 - 2019)
  • Super Lawyers New York Metro Rising Stars (2013 - 2016)
  • Forbes Legal Black Book