Steven A. Abreu

Steven A. Abreu

Partner, Trademark Chair

t:
617-443-9292, ext 309
f:
617-443-0004
e:
sabreu@sunsteinlaw.com
Moritz College of Law, The Ohio State University
J.D., Order of the Coif
University of Illinois
B.A.

Communicating with Sunstein LLP through the website does not create an attorney-client relationship with the firm or any of our attorneys. Our decision as to whether we agree to represent a client involves consideration of a variety of factors, discussion with a prospective client, and, where appropriate, a written agreement.

Awards

  • Steve Abreu WTR 1000
  • Steve Abreu Lawyer of the Year
  • Best Law Firms 2023
  • Sunstein Best Lawyers 2024
  • Steve Abrau SL Badge

Education

  • Moritz College of Law, The Ohio State University J.D., Order of the Coif
  • University of Illinois B.A.

Profile

Steve Abreu takes a pragmatic approach to trademark clearance, registration and enforcement to help a wide range of enterprises meet their intellectual property protection and business goals. Steve’s clients are varied and include renowned institutions of higher learning, consumer and medical product companies, and specialty magazines. He also represents well-known manufacturers of pharmaceuticals and biotechnology products.

Steve’s strategic outlook on trademark and copyright protection has assisted both large clients and small businesses in the United States and abroad. He also counsels foreign trademark applicants to successful registration of their Madrid-based U.S. trademark applications. Steve is Chair of the Trademark and Copyright Practice.

Experience

  • Steve has filed and prosecuted hundreds of trademark applications with the U.S. Patent and Trademark Office, and assisted clients with their international trademark protection strategies.
  • Steve has successfully represented many clients before the Trademark Trial and Appeal Board and federal courts
  • Steve advises clients engaged in international trademark oppositions before various administrative bodies in Europe, Australia and Asia.
  • Steve works with many small businesses and start-ups to determine how to best protect intellectual property and the beginning of a business venture.
  • Steve also specializes in trademark and copyright licensing, and has experience licensing world famous consumer brands for cross-market promotional purposes.

Professional and Community Involvement

  • Member of the Boston Patent Law Association's Foreign Practices Committee
  • Member of the International Trademark Association
  • Member of the Boston Bar Association
  • President of the United States Tchoukball Association, governing body for tchoukball in the United States and dedicated to growing interest in the sport of tchoukball among amateur athletes in the United States.
  • Participates in mentoring activities with the Citizen Schools 8th Grade Academy program.

Bar and Court Admissions

  • Commonwealth of Massachusetts
  • State of Ohio
  • U.S. District Court for the Southern District of Ohio

Honors

  • Selected by World Trademark Review to the WTR 1000 Silver list for Individuals: Enforcement and Litigation, and Individuals: Prosecution and Strategy (2014-2023). The WTR 1000 is the only definitive guide dedicated to identifying the world’s leading trademark legal services providers. An extensive research process conducted by a team of highly qualified, full-time analysts, the publication identifies the leading trademark law firms and individuals in over 80 global jurisdictions.
  • Selected to The Best Lawyers in America® in the area of Trademark Law, 2019–2024.
    • Recognized as the 2023 Best Lawyers® Trademark Law "Lawyer of the Year" in Boston
  • Recognized in Massachusetts Super Lawyers®, part of Thompson Reuters, 2020–2023.
    • Recognized in Massachusetts Rising Stars from 2010–2019

Recent Publications/Presentations

Big Changes to Canada’s Trademark Laws—January 15, 2019

Study Demonstrates Positive Economic Impact of Trademark Filing—July 17, 2018

A Joke So Funny Louis Vuitton Forgot to Laugh – The Danger of Suing Over a Parody—February 14, 2017

Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe—April 15, 2016

Issues Resolved in an Administrative Trademark Proceeding May Bind Federal Courts in Subsequent Infringement Actions—July 21, 2015

Briefings from the Trademark Universe—February 26, 2015

Testimonial

“I have worked with Steve for nearly a decade. I have found him during that time to be an excellent and very knowledgeable trademark attorney. He is insightful and cares a lot for his clients, and I would highly recommend him to anyone who asked me. I have also worked with others at the Sunstein law firm and find the firm to be excellent overall.”

Results

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

#

$16 million judgment

FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc.

We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.

Publications

The “Luxury” of Trademark Protection Crosses an Unknown Frontier

The “Luxury” of Trademark Protection Crosses an Unknown Frontier

Brexit Trademark Update

Brexit Trademark Update

Trademark Lesson Ripped from the Headlines: Trump Team Books the Wrong Four Seasons

Trademark Lesson Ripped from the Headlines: Trump Team Books the Wrong Four Seasons

Virus-Related Legislation Extends Patent and Trademark Deadlines

Virus-Related Legislation Extends Patent and Trademark Deadlines

Big Changes to Canada’s Trademark Laws

Big Changes to Canada’s Trademark Laws

Study Demonstrates Positive Economic Impact of Trademark Filing

Study Demonstrates Positive Economic Impact of Trademark Filing

A Joke So Funny Louis Vuitton Forgot to Laugh – The Danger of Suing Over a Parody

A Joke So Funny Louis Vuitton Forgot to Laugh – The Danger of Suing Over a Parody

Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe

Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe

Issues Resolved in an Administrative Trademark Proceeding May Bind Federal Courts in Subsequent Infringement Actions

Issues Resolved in an Administrative Trademark Proceeding May Bind Federal Courts in Subsequent Infringement Actions

Briefings from the Trademark Universe

Briefings from the Trademark Universe

Trademark Falsely Suggesting Connection to a Native American People is Denied Registration

Trademark Falsely Suggesting Connection to a Native American People is Denied Registration

Don’t Do It Unless You Mean It — Voluntary Surrender of a Trademark Registration is Irreversible

Don’t Do It Unless You Mean It — Voluntary Surrender of a Trademark Registration is Irreversible

A Covenant Not to Sue Can Disable a Competitor’s Trademark Cancellation Action–But at What Cost?

A Covenant Not to Sue Can Disable a Competitor’s Trademark Cancellation Action–But at What Cost?

Crazy In Love With Trademarks: What Can Jay-Z and Beyoncé Teach Us About Trademark Filing?

Crazy In Love With Trademarks: What Can Jay-Z and Beyoncé Teach Us About Trademark Filing?

New Copyright Law Touches on Publication and Recordkeeping Issues

New Copyright Law Touches on Publication and Recordkeeping Issues

Generic.com: Should “Generic” Domain Names Be Registerable as Trademarks?

Generic.com: Should “Generic” Domain Names Be Registerable as Trademarks?

The UPC Code: A New Frontier for Trademark Infringement?

The UPC Code: A New Frontier for Trademark Infringement?

Don’t Just Give it Away: Unless a Product is Sold, European Law Recognizes No Genuine Trademark Use

Don’t Just Give it Away: Unless a Product is Sold, European Law Recognizes No Genuine Trademark Use

Has STARBUCKS Been Diluted? The Ongoing Effort to Protect Famous Marks

Has STARBUCKS Been Diluted? The Ongoing Effort to Protect Famous Marks

Join Our Team

Sunstein seeks talented candidates interested in joining our dynamic, motivated, and talented professional team.

We use cookies to improve your site experience, distinguish you from other users and support the marketing of our services. These cookies may store your personal information. By continuing to use our website, you agree to the storing of cookies on your device. For more information, please visit our Privacy Notice.

Subscribe to our Newsletters

Subscribe to: