Edward T. Colbert

Edward is ranked among World Trademark Review’s Global Leaders: Private Practice honorees (2020-2021) and has been recognized by World Trademark Review 1000 for Trademark Enforcement & Litigation in Washington, DC and nationally for many years (2012-2022). World Trademark Review 1000 has praised his “talent for thinking outside the box” (2022) and noted that clients have referred to him as “practical in coming up with cost-effective, efficient solutions” for trademark issues and “a very reliable and savvy guide … the kind of lawyer that goes the extra mile for the client” (2023).

He has also received recognition from Legal 500 United States for Trademarks: Litigation (2012-2021), Trademarks: Non-Contentious (2013-2019), and Copyright (2013-2015, 2018-2019), among other practice areas. In addition, he has been selected as a Washington DC Super Lawyer (2016-2019) for intellectual property law and was named a Washington, DC IP Star (2013-2014), Trademark Star (2016-2019), and Notable Practitioner (2021) by Managing Intellectual Property, which recognizes him as a veteran trademark lawyer described by clients as a “top quality litigator.” Finally, SmartCEO magazine named Edward as a Washington Power Player in Intellectual Property law (2013).

Edward has significant experience in domestic and international intellectual property licensing and acquisitions, and manages the trademark portfolios of leading retailers, companies, and organizations worldwide. For example:

• He helped create and shape the US Olympic Committee licensing program and was involved in the licensing and enforcement of Olympic marketing rights in the US and certain related worldwide rights for the five Olympic Games and US Olympic Teams.
• He served as chief trademark advisor in the launch of the Home Shopping Network and Martha Stewart Online and retail catalog operations.
• He has represented clients in due diligence reviews, negotiations, and acquisition of numerous diverse properties, from search engine Ask.com to Stolichnaya vodka and Modelo beer.
• He provides pro bono representation to the Special Olympics in connection with maintenance and management of its worldwide trademark and licensing rights portfolio.

Edward is regularly hired as trademark counsel in actions involving famous brands and marks, and has significant copyright infringement experience. For example:

• When the Russian government brought suit in the US seeking to obtain ownership of the STOLICHNAYA trademark, he secured a dismissal of the claim on behalf of its owner, Allied Domecq, in Federal Treasury Enterprise Sojuzpolodoimport, et al. v. Spirits International, et al., 425 F. Supp. 2d 458 (S.D.N.Y. 2006).
• Edward also represented the US Olympic Committee in developing and enforcing its exclusivity in commercial uses of Olympic terminology, culminating in USOC v. San Francisco Arts & Athletics, which was argued to the Supreme Court and confirmed the control of the USOC over Olympic marketing in the United States. (483 U.S. 522, 1987).
• In one of the first of the “portal wars,” Edward represented AT&T Corp. in America Online, Inc. v. AT&T Corp., 64 F. Supp. 2d 549 (E.D. Va. 1999), in which he helped AT&T successfully defend against trademark infringement claims by winning a ruling on summary judgment that “you have mail” is generic.
• He won a major victory for start-up client Pintrips, protecting the company against a trademark infringement suit filed by social-media giant Pinterest Inc. In the judgment and decision issued after a 7-day trial, US District Judge Haywood Gilliam Jr. ruled that Pinterest did not own or control the use of the word “pin” in the Internet space despite the registrations for “PIN” owned by Pinterest. Pintrips use of “pin” was held to be a fair use under the Lanham Act based on the term's origin and broad use in electronic communication. The Court also held that trademark PINTRIPS did not infringe on the trademark PINTEREST. Pinterest did not appeal.
• He represented Maker’s Mark Distillery in a high-stakes battle for protection of its red wax neck coating trademark. The Sixth Circuit Court of Appeals held that a 3D physical attribute of packaging (the irregular red wax coating on the neck of the Maker's Mark bottle) was capable of being a trademark, and did in fact function as a trademark, even though not a traditional work of two dimensional design. (3:09-cv-718 and 3:03-cv-00093, W.D.Ky.)  
• He cleared the way for Constellation Brands and its subsidiary, Spirits Marque One, to proceed with a multi-million dollar advertising campaign for its brand SVEDKA vodka, by defending against the copyright claims brought by a well-known Hollywood photographer, concerning the use of a photograph. (CV 10-07175 ODW, C.D. CA).
• He defended against a claim by a computer program designer that the plaintiff, rather than his employer, owned the hedge fund program used to trade over a hundred million dollars a day. The issue of the validity of the IP ownership provision of the contract was a cutting edge decision that required a stay at the Third Circuit, while the question was reviewed by the Pennsylvania Supreme Court. (3rd Cir. PA, 05-1119).

Edward is active in bar association work, particularly the International Trademark Association where he serves as a mediator on the CPR Panel of Distinguished Neutrals. He is also a member of AIPLA, and the American Bar Association Sections on Intellectual Property and on Antitrust, and has also served as Chairman of the Sports and Entertainment Industries Committee. He has also been active in the Maryland State Bar Association and participated on the steering committee to create an intellectual property committee for the Business Law Section. He currently serves as an arbitrator on the International Court of Arbitration for Sport in Lausanne, Switzerland and for the American Arbitration Association. 

Edward regularly presents articles, programs, and speeches about a wide variety of topics, including trademark dilution, cybersquatting, extension of copyrights in collective works, copyright parodies, the use of surveys in consumer cases, trademark registration rights under foreign conventions, concerted refusals to deal, and market definitions in a variety of markets including general retail and entertainment industries.

Edward began his career as a law clerk to the Honorable Herbert S. Boreman in the United States Court of Appeals for the Fourth Circuit.