Sergei Orel is a principal attorney practicing in the technology/intellectual property law group. Sergei’s practice focuses on domestic and international trademark litigation, prosecution, maintenance, and enforcement. He advises companies in all matters concerning trademarks, copyrights, and other soft IP, as well as counsels clients regarding the protection and enhancement of all aspects of their trademark and copyright portfolios. Sergei provides comprehensive trademark portfolio management – including litigation in U.S. federal courts as well as in Europe and Asia. Additionally, he works to protect clients’ intellectual property online and in trade.
Sergei’s expansive background is well in line with MWM’s established trademark, copyright, and soft IP practice as it continues to handle thousands of trademark applications and registrations worldwide for clients across several industries, including technology, gaming, pharmaceutical, fashion, food and beverage, luxury goods, and healthcare. Prior to joining MWM, Sergei worked at his own boutique law firm, the Law Office of Sergei Orel, LLC, in Fort Lee, New Jersey. He partnered with numerous IP firms in the New York metro region as a trademark litigation counsel. He is fluent in English, French, Russian and Ukrainian, with working knowledge of Spanish and Polish and beginner’s level German and Arabic.
- Represented global clients in prosecution, maintenance, and enforcement of over 600 active trademark applications and registrations worldwide;
- Prepare licensing agreements, non-disclosure agreements, consent agreements, concurrent use agreements, cease and desist letters, work for hire copyright agreements and prepare takedown notices to Internet copyright infringers;
- Represented clients in all aspects of trademark and copyright litigation in U.S. federal courts while assisting local counsel in foreign jurisdictions regarding matters with appeals in international courts;
- Prepare design applications for filings with USPTO, EUIPO, WIPO, in China, Hong Kong, and Russia;
- Handled over 1200 active applications and registrations worldwide for clients across several industries including technology, gaming, pharmaceutical, fashion, food and beverage, luxury goods, and healthcare;
- Advises clients and counsels brand and licensing teams at client corporation in protecting clients’ brands, advising on availability of proposed brands, strategies for securing worldwide trademark protection and coordinating and implementing worldwide enforcement of clients’ rights against third parties;
- Maintained and enforced clients’ trademark rights by policing trademark use and applications/registrations by third parties; preparing and sending cease and desist letters to infringers; preparing and sending use and registration agreement request letters to owners of similar trademarks; negotiating U.S. and worldwide co-existence and consent to register agreements.