Thomas V. Smurzynski

Thomas V. Smurzynski

Senior Counsel

Tel. 617.994.0749
Fax 617.742.4214
Email: tsmurzynski@lahive.com

Background

Education

  • Pratt Institute, B.S., Electrical Engineering, with honors, 1963
  • Harvard Law School, L.L.B., 1966

Bar & Court Admissions

  • Massachusetts Bar
  • U.S. District Court, District of Massachusetts
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office

Professional Involvement

  • Boston Patent Law Association
  • International Trademark Association
  • Massachusetts Bar Association

Honors & Awards

  • Massachusetts Super Lawyers® List 2005 - 2009

Practice Areas

Litigation, Trademarks & Copyrights

Industry & Technical Focus

Computers, Electronics, Consumer Products

Practice Description

Mr. Smurzynski is chair of the Trademark & Copyright practice group. He has over 40 years of experience in all phases of intellectual property, including litigation, patent prosecution, trademark registration, and copyright registration.

Notable Experience

  • Developing trademark strategies and managing U.S. and international trademark portfolios for large and small companies in a variety of industries.
  • Successfully defending a client in a design patent infringement case involving a fashion/apparel item. The jury found the patent did not infringe.
  • Handling numerous trademark inter-partes proceedings in the U.S. Patent and Trademark Office.
  • Resolving international trademark disputes with manufacturers for U.S. companies outsourcing production in foreign countries, including India and China.
  • Prosecuting U.S. trademark applications for foreign applicants based on international trademark registrations, including responding to U.S. office actions, amending goods and services to conform with U.S. law, and preparing arguments to overcome objections raised by the USPTO.
  • Managing the trademark portfolio for a large wholesale club chain for over 15 years.

 

Prior Experience

  • Serving as in-house counsel for the Polaroid Corporation and the Gillette Company.

Case studies

 
 
Our Thinking Expands Yours

The client, an international apparel maker, wanted to end a contractual relationship with a troublesome distributor that was licensed to make and sell specific product lines bearing the client’s marks. » read more

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