Donna A. Tobin co-chairs the Trademark & Brand Management Group and is a member of the Litigation Group. An Internationally recognized IP practitioner, Ms. Tobin was recently included in World Trademark Review’s list of The World’s Leading Trademark Professionals (2017). She also regularly appears in Best Lawyers’ and Super Lawyers’ lists of the top IP lawyers.
Ms. Tobin represents established and emerging companies worldwide in a variety of consumer products and services industries -- including fashion, jewelry, specialty foods, beverages, and home furnishings. She also represents well-known media, entertainment and sports entities.
A trusted advisor for more than 30 years, Ms. Tobin regularly counsels clients of all sizes on business strategy, and on how best to obtain, protect, enforce and monetize their trademarks, copyrights, trade secrets and patents. Ms. Tobin advises on complex areas of trademark and related laws, including in the areas of geographical indications, trade dress and designs. She promptly renders trademark search and clearance opinions, effectively counsels on trademark portfolio management and monetization, and successfully handles oppositions and cancellations before the Trademark Trial and Appeal Board. She has an extensive intellectual property licensing practice, and advises clients on international as well as domestic filing strategies. Ms. Tobin is an experienced IP litigator, helping her clients enforce their rights and defend against unfounded infringement allegations. All of her clients benefit from her deep knowledge of their industries and responsiveness to their concerns.
Ms. Tobin is a member of the International Trademark Association (INTA) and a contributing member of the INTA Bulletin. She is also a member of the Federal Bar Council, Intellectual Property Section, and the New York State Bar Association, Section on Women in IP.
Ms. Tobin is a board member of Nomi Network, a group providing support for survivors of human trafficking, and a legal advisor to Women Across Frontiers, a magazine focusing on gender equality.
She is admitted to practice in New York State Courts; in the United States Courts of Appeals for the Second, Ninth and Federal Circuits; and in the United States District Courts for the Southern and Eastern Districts of New York.
Prior to joining Frankfurt Kurnit, Ms. Tobin was a partner with BakerHostetler.
awards & recognition
Best Lawyers in America recognition for Trademark Law
New York-area Super Lawyer for Intellectual Property
EuroMoney Legal Media Group Guide to the World's Leading Women in Business Law for trademark work
Recognized by The World's Leading Trademark Professionals 2017
Boston University School of Law (JD, 1985)
Cornell University College of Agriculture and Life Science (BS, 1982)
Upcoming Speaking Engagements
Past Speaking Engagements
Trademark Basics for Corporate Counsel
September 28 2017
INTA Annual Meeting Barcelona 2017
Donna Tobin leads a discussion on "Protection and Enforcement Options for Furniture Designs", and Christopher Chase speaks on “The Use of Trademarks in Comparative Advertising Campaigns” at the INTA annual conference in Barcelona, Spain.
May 21 2017
FICPI 2017 Europe/Canada/US Conference
Donna Tobin speaks on US Trademark Law at the FICPI 2017 Europe/Canada/US Conference in Miami.
March 13 2017
Donna Tobin presents an update on US Trademark Law at the FICPI 2017 Europe/Canada/US Conference at the Biltmore Hotel in Miami.
March 13 2017
Licensing a Brand Abroad – What Clients and Their Counsel Need to Know
February 2 2017
Donna Tobin at the Federation Internationale de Conseilles en Propriete Intellectuelle Open Forum
Donna Tobin speaks at the Federation Internationale de Conseilles en Propriete Intellectuelle Open Forum in St. Petersburg. Donna will be the US panelist on the Geographical Indications panel.
news & press
Inside the In-N-Out, Smashburger Trademark Case
Boston Restaurant Could Not Enforce Geographically Descriptive Trademark Against Celebrity Chef
In a closely watched trademark battle with implications for food, beverage and other industries, a federal court has found for celebrity chef and television personality Christopher Kimball and his new media company, CHRISTOPHER KIMBALL'S MILK STREET. An allegedly competing business, MILK STREET CAFÉ, had sued CHRISTOPHER KIMBALL'S MILK STREET, arguing that Kimball's use of CHRISTOPHER KIMBALL'S MILK STREET was likely to cause confusion with MILK STREET CAFÉ.
Hasbro Says DC Comics Infringes ‘Transformers’ Toy Mark
Law360 mentioned Maura J. Wogan, Donna A. Tobin and Catherine M.C. Farrelly as the lawyers for Hasbro Inc. in a high-profile toy industry IP dispute in New York federal court. The article discusses Hasbro Inc.’s allegation that DC Comics copied the name of its yellow “Bumblebee” character from Hasbro’s famous Transformers character. (Article behind a paywall)
The Best Lawyers in America 2018
Best Lawyers "Best Law Firms" ranked Frankfurt Kurnit nationally in "Tier 1" in Advertising, Copyright, Entertainment - Motion Pictures and Television, and Trademark Law, "Tier 2" in Litigation - Intellectual Property, Media Law, and Trusts & Estates Law, and "Tier 3" in Commercial Litigation and Regulatory
Titleist Doesn’t Find This Lewd Golf Parody Funny
#Covfefe: Trending - But Can You Register It As a Trademark?
President Trump recently tweeted, without context, "Despite the constant negative press covfefe". Within minutes, the Internet was ablaze with commentary, speculation, and humor regarding the newly invented term.
Ivanka Fights to Protect Her First Name
Is the Trademark “Marijuanaville” Too Similar to “Margaritaville”?
Does IP Law Protect Cake and Pastry Designs?
A chef who created a cake for President Obama's inauguration in 2013 recently tweeted a photograph showing two cakes. According to the chef, one was created for the Obama inauguration and the other was for an inaugural ball for President Trump. The Trump cake baker apparently admitted copying the Obama cake design (and stated the proceeds would be donated to a charity). So among the many legal questions raised by the new Trump administration, there lies an interesting IP question: can a baker, chef or restaurateur use intellectual property law to protect a cake or pastry design?
Frankfurt Kurnit in the World Trademark Review
The World Trademark Review includes Frankfurt Kurnit in "The World's Leading Trademark Professionals 2017" saying, "'It’s easy to recommend the trademark team at Frankfurt Kurnit Klein & Selz to any company seeking the absolute best in advice and counselling."
Ten Resolutions for a Happy and Healthy Trademark Portfolio
Here are our top ten resolutions to ensure your trademark portfolio is happy and healthy.
Donna Tobin in Boston University’s School of Law Alumni Magazine
Lack of Documentary Evidence Sinks Two Recent Trademark Applications
Business owners do not have to wait until they are actually using a trademark in commerce before seeking to register it with the Trademark Office.
Thinking of Licensing Your Brand Abroad?
Licensing a trademark abroad - for manufacture or distribution of goods or services - is not easy.
Donna Tobin in Cornell Alumni Magazine
The Best Lawyers in America 2017
In its 2017 edition, Best Lawyers "Best Law Firms" ranked Frankfurt Kurnit nationally in "Tier 1" in Advertising, Copyright, Entertainment - Motion Pictures and Television, and Trademark Law, "Tier 2" in Litigation - Intellectual Property, Media Law, and Trusts & Estates Law, and "Tier 3" in Commercial Litigation and Regulatory Enforcement Litigation.
Will Brexit Impact my Trademark Rights in Europe?
Rest easy, trademark owners! While the UK has voted to leave the European Union, it is expected to take at least two years for that to occur. Here is what trademark owners need to know.
Donna Tobin in the New York Law Journal
Donna Tobin is featured in New York Law Journal's "On the Move" section. (Article behind paywall)