Stephen P. Demm

For decades, Steve has used his deep intellectual property experience and his blend of litigation and counseling skills to guide clients across IP disciplines, from high-stakes trademark and copyright litigation to contentious and non-contentious US Patent and Trademark Office (USPTO) proceedings to brand-building to IP transactions.

Steve has 35 years of experience representing a broad base of clients in intellectual property litigation, prosecution, and counseling. He practices in a range of IP related areas, with an emphasis on trademark, trade dress, copyright, domain name, and technology litigation and dispute resolution. He is also knowledgeable about IP audits and policies; clearance, registration, and management of IP assets; intellectual property and technology licenses, transfers, and agreements; and counseling on advertising and promotions, including consumer sweepstakes. Numerous ranking and other publications, including Chambers, Legal 500, and Best Lawyers, recognize him as an industry leader. World Trademark Review 1000 has remarked that he “never falters under pressure” (2024) and, while “noted for his prosecution prowess and ability to secure [] value for brands’ IP assets,” is “equally skilled in trademark litigation” (2023).

• Represents plaintiffs and defendants in litigation, alternative dispute resolution, opposition proceedings, cancellation proceedings, and other administrative proceedings relating to trademarks, trade dress, copyrights, and technology licenses and agreements.
• Conducts intellectual property and website audits and develops intellectual property policies.
• Assists in the clearance, registration, and maintenance of trademarks in the US and worldwide.
• Develops and negotiates IP and technology licenses and agreements for numerous owners and users of intellectual property and technology, including software licenses, outsourcing agreements, employee and independent contractor agreements, e-commerce agreements, Web site development and linking agreements, and other Internet agreements.
• Reviews proposed advertising, promotional, and sweepstakes materials for consumer products companies, Internet companies, advertising agencies, and professional sports leagues.
• Represented national land development, real estate, and engineering firm in federal trademark and contract cases against real estate developer, obtaining settlement in initial case and permanent injunction and large damages and fee awards in follow-on case, as well as affirmance on liability, damages, and fees on appeal. Dewberry Engineers Inc. v. Dewberry Group, Inc., 2021 WL 5217016 (E.D. Va. Aug. 11, 2021), 2022 WL 1439826 (E.D. Va. Mar. 2, 2022), aff’d, 77 F.4th 265 (4th Cir. 2023).
• Defended homebuilder in federal case asserting claims that included copyright and trademark infringement, obtaining summary judgment on copyright claims and judgment as a matter of law on trademark claims.
• Represented global insurer (trademark owner) in Uniform Domain Name Dispute Resolution Policy (UDRP) arbitration proceeding, obtaining transfer of disputed domain name.
• Defended seller of military-grade backpacks and travel bags in competitor’s Trademark Trial and Appeal Board (TTAB) cancellation proceeding seeking to cancel seller’s registered trademarks. Convinced court to deny competitor’s motion for summary judgment on the issue of genericness and obtained stay of cancellation proceeding in light of related federal court proceedings.
• Represented leading global supplier of heat transfer, separation, and fluid handling products in federal trademark infringement and false advertising case against competitor, defeating dispositive motions and obtaining favorable settlement.
• Represented national manufacturer of mounting systems, protective cases, and decking solutions for mobile devices against trademark, competition, and contract claims, obtaining removal to federal court and assisting with settlement.
• Represented Fortune 100 company in federal lawsuits to enforce its trademark, trade dress, copyright, and design patent rights, obtaining preliminary injunctions and favorable settlements.
• Defended Fortune 100 consumer products company against federal and state trademark infringement and dilution claims asserted by national competitor, obtaining summary judgment on all claims and affirmance on appeal.
• Represented national lawn care products company in federal lawsuits in various jurisdictions to protect its trademark, trade dress, and copyright rights, and to protect against deceptive competitor advertising, obtaining preliminary injunctions and favorable settlements.
• Represented award-winning restaurateur in litigation to enforce trademark and domain name rights.
• Represented software developers, consumer products retailers, and other companies in intellectual property, domain name, and advertising disputes in federal courts, state courts, alternative dispute resolution, mediation, and ICANN proceedings.
• Assisted Fortune 250 financial services company in clearing and registering new corporate name and service mark in the US and worldwide.
• Assisted large energy company in trademark maintenance, disputes, and name change.
• Assisted international charity in global name change, including worldwide clearance, registration, and licensing.
• Georgia-Pacific Consumer Products LP v. von Drehle Corp., 618 F.3d 441 (4th Cir. 2010), 710 F.3d 527 (4th Cir. 2013). In enMotion® dispenser stuffing case, obtained reversal of summary judgment for von Drehle on Georgia-Pacific's contributory trademark infringement and tortious interference claims and affirmance of summary judgment for Georgia-Pacific on von Drehle's deceptive trade practices counterclaim. Later obtained reversal of trial court’s judgment for von Drehle and reinstatement of jury verdict for Georgia-Pacific on its trademark and tortious interference claims.
• Playtex Products, Inc. v. Georgia-Pacific Corp., 67 U.S.P.Q.2d 1923 (S.D.N.Y. 2003), aff'd, 390 F.3d 158 (2d Cir. 2004). Obtained summary judgment for Georgia-Pacific on all of Playtex's federal and state claims (court found that Georgia-Pacific’s QUILTED NORTHERN MOIST-ONES mark did not infringe or dilute Playtex’s WET ONES mark). Obtained affirmance from Second Circuit.
• Takeall v. Pepsico, Inc., 809 F. Supp. 19 (D. Md. 1992), aff'd, 14 F.3d 596 (4th Cir. 1993), cert. denied, 512 U.S. 1236 (1994). Obtained summary judgment for Pepsico on plaintiff's copyright claims related to Diet Pepsi commercials featuring Ray Charles and "You got the right one, Baby, uh-huh!" slogan.

• Recognized as a Trademark Star in the IP STARS Handbook (2023-2024), Managing Intellectual Property
• Recommended for Trademarks: Non-Contentious (2020-2024), Trademarks: Litigation (2020, 2024), and Copyright (2011), Legal 500 United States
• Recognized as a Leader in Intellectual Property in Southern Virginia (2008-2024), Chambers USA
• Recognized as a Leading Trademark Professional in Enforcement & Litigation in Washington, DC (2022-2024), World Trademark Review 1000
• Recognized as a Commission Pro Bono Service Honor Roll Member (2024), Virginia Access to Justice Commission, published in Virginia Lawyer magazine
• Recognized as a Runner Up for Litigator of the Week (April 2022), American Lawyer’s Litigation Daily
• Recognized as a Best Lawyer for Copyright Law, Intellectual Property Litigation, Trademark Law, and Intellectual Property Law (2007-2020, 2023-2024), Richmond Copyright Lawyer of the Year (2012, 2021-2022, 2024), and Lawyer of the Year for Copyright Law in Virginia (2019), The Best Lawyers in America
• Recognized as a Super Lawyer for Intellectual Property (2011-2024), Virginia Super Lawyers
• Named among the Legal Elite for Intellectual Property Law (2004, 2006, 2010-2011, 2013-2014), Virginia Business

• Member, International Trademark Association and International Trademark Association Features Subcommittee
• Member, American Bar Association, Intellectual Property Law Section
• Member, American Intellectual Property Law Association
• Council Member, Virginia Bar Association, Intellectual Property and Information Technology Law Section
• Past Member, Board of Directors, Virginia State Bar, Intellectual Property Law Section
• Permanent Member, Fourth Circuit Judicial Conference
• Member, The Historical Society of the United States District Court for the Eastern District of Virginia
• Past Member, Merit Selection Panel, US District Court, Eastern District of Virginia (2011)
• Past President, Harvard Law School Association of Virginia