Michael Rafter

Kilpatrick Townsend & Stockton LLP 

$ $$$

6th Avenue 1114
New York 10110 NY US

Michael W. Rafter focuses his practice in the areas of trademark and advertising law. He serves as principal trademark counsel for a number of companies with well-known brands and large brand portfolios and manages their trademark portfolios and disputes throughout the world.

Mr. Rafter helps clients implement cost-effective strategies to protect their existing trademarks and, when necessary, to enforce their rights in those marks. He provides straightforward, practical advice when they are considering new marks, helping them understand and evaluate, for example, whether the new mark will be difficult or expensive to protect, or whether someone is likely to sue them for infringement. Mr. Rafter has particular experience with the protection of: non-traditional marks (e.g., color); trade dress (e.g., product configuration or packaging); and marks at risk of losing distinctiveness (i.e., marks that an infringer might allege have become “generic” and therefore cannot be protected).

Mr. Rafter regularly coordinates and manages trademark litigation, opposition and cancellation proceedings in Europe, Asia and South America and has represented many companies in trademark and false advertising litigation in the United States, both in federal court and in proceedings before the United States Trademark Trial and Appeal Board. He has recommended and successfully resolved trademark disputes through mediation and has resolved false advertising disputes through binding arbitration as well as proceedings before the National Advertising Division (“NAD”) of the Council for Better Business Bureaus.

While Mr. Rafter’s clients are not limited to particular industries, he does have particular experience representing owners of well-known brands for batteries, beer, building materials, carpet, cleaning chemicals, doughnuts, flashlights, franchised hotel, electrical and plumbing services, fertilizers, frozen sandwiches, hair dryers and clippers, hardware products, insect repellents and insecticides, lawn and garden chemicals, lighting fixtures and controls, non-governmental humanitarian organizations, paper towels, pet products, restaurant services, shavers, synthetic turf, and wood preservative chemicals.

Mr. Rafter’s legal career was enhanced by his early role as a Judge Advocate in the United States Army where he spent his first several years of practice essentially serving as in-house counsel for several military organizations. A few years after joining the firm, he was seconded to an important client of the firm to serve temporarily as one of its in-house trademark counsel. Both experiences gave Mr. Rafter first-hand knowledge of the demands facing in-house counsel.

Mr. Rafter is rated AV Preeminent® by Martindale-Hubbell*, and is recognized in The Best Lawyers of America in the field of Trademark Law.

*AV®, BV®, AV Preeminent® and BV Distinguished® are registered certification marks of Reed Elsevier Properties Inc., used under in accordance with the Martindale-Hubbell certification procedures, standards and policies.

Experience:

  • Manages all aspects of the extensive trademark portfolio of Acuity Brands Inc., one of the world’s leading providers of lighting fixtures and related products and services. We have provided strategic counseling in connection with clearing new marks as well as in protecting the company’s rights in hundreds of different marks. Since we began representing the company, we have managed more than 2,000 registrations and applications in more than 90 countries throughout the world. When the company was spun off from its parent, our attorneys were heavily involved in the clearance of the company’s new name.
  • Successfully represented Georgia-Pacific in the expedited arbitration of a case involving false advertising claims in its competitor’s nationwide television, radio, and print campaign for paper towels. Obtained injunction and award of attorneys’ fees. Georgia-Pacific Corp. v. The Procter & Gamble Co., No. 03-2957 (N.D. Ga. filed Aug. 30, 2003).
  • Defended DuPont and obtained favorable settlement of false advertising litigation pertaining to flammability characteristics of surgical fabrics. Kimberly-Clark Corp. v. E.I. DuPont de Nemours Co., No. 06-1503 (N.D. Ga. filed June 23, 2006).
  • Successfully settled copyright litigation involving architectural works on behalf of David Weekley Homes. Frank Betz Assocs., Inc. v. Weekley Homes, L.P. d/b/a David Weekley Homes, No. 05-1563 (N.D. Ga. filed June 14, 2005).
  • Represented a Fortune 500 brewery to secure a judgment as a matter of law that there was a likelihood of confusion between our client’s mark and the defendant’s mark. We prevailed on summary judgment on their unfair competition counterclaims and then successfully defended against an appeal and a petition for certiorari.
  • Represented a leading manufacturer of erosion control products in proceedings before the National Advertising Division (NAD) of the Council for Better Business Bureaus in which a competitor alleged that certain of the manufacturers advertisements were false or misleading.
  • Manage the extensive trademark portfolio of Spectrum Brands, a global manufacturer of batteries, shavers, hair dryers and other personal care appliances, pet products, insect repellants and lawn and garden products. Since we began representing the company, we have helped the company “rationalize” its trademark portfolio and strategy, which has resulted in significant savings for the company. Currently, we manage more than 1,500 active registrations and applications for more than 450 marks in more than 125 countries throughout the world. We provide strategic counseling about the selection and clearance of new marks, and manage contentious trademark-related proceedings for the company throughout the world.
  • Manages all aspects of the global trademark portfolio for Krispy Kreme Doughnuts. We assisted the company in expanding its operations into dozens of new countries in Europe, Asia and the Middle East, which involved (among other issues) securing registrations for and protecting translations and transliterations of the company’s primary marks. In addition to clearing and registering new marks and maintaining existing registrations, we have assisted the company with licensing its marks and have managed trademark-related disputes for the company in numerous countries throughout the world.
  • Represented a leading Fortune 500 brewery and obtained injunctive and other relief against fifteen companies and individuals in trademark and copyright infringement litigation involving infringing decals, drug paraphernalia, apparel and other products.
  • Manages the global patent and trademark portfolios for Textile Management Associates Inc., a company in the synthetic turf industry, which owns one of the most iconic brands in the industry. We provide strategic counseling about the protection of that brand, manage trademark-related disputes in multiple countries, and assist in clearing and securing registrations of new marks.
  • Represented United Pet Group, Inc., a leading global manufacturer of pet products, in trade dress litigation against a competitor. Case settled favorably after we filed for preliminary injunction. United Pet Group, Inc. v. Salix Corp. et al., No. 09-03323 (E.D.N.Y. filed July 31, 2009).
  • We provide extensive trademark counseling to a large non-profit humanitarian organization. We also manage the organization’s domestic and international trademark portfolio, and represent the organization in domestic oppositions at the Trademark Trial and Appeal Board, as well as in international oppositions and enforcement matters in numerous countries.

Education:

  • Mercer University Walter F. George School of Law, J.D. cum laude
  • Mercer University, B.A. summa cum laude

Admissions:

  • Georgia
  • New York

Court Admissions:

  • U.S. Supreme Court
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Eleventh Circuit
  • U.S. Court of Appeals for the Armed Forces
  • U.S. District Court for the Northern District of Georgia
  • U.S. District Court for the Central District of California

Cost

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6th Avenue 1114
New York 10110 NY US
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Broadway 42
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