ANNE M. STERBA
Member

Ms. Sterba's practice focuses on advising clients on a wide-variety of domestic and international intellectual property matters, including trademark, unfair competition, copyright, false advertising, licensing, litigation and counseling. She has experience in all aspects of federal district court litigation of intellectual property matters and in opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. She has further experience in Internet and related trademark and copyright issues, including, domain name protection, metatags and keywords. She represents a variety of clients ranging from start-up businesses to large multi-national corporations in the area of Internet/e-commerce, clothing, financial products/services, health care, computer technology and services, biotechnology, and the food and beverage industry.

Born in Pittsburgh, Pennsylvania, Ms. Sterba graduated from Westminster College in New Wilmington, Pennsylvania in 1995 where she received a B.A. with Honors in Political Science and a minor in Speech. She received her Juris Doctor degree in 1998 from George Mason University School of Law, where she was named Best Oral Advocate in the First Year Moot Court Competition. Ms. Sterba was admitted to the Virginia State Bar in 1998 and the District of Columbia Bar in 1999.

Ms. Sterba is a member of the Virginia Bar Association; the District of Columbia Bar Association; the Virginia Women Attorneys Association; the American Bar Association; the American Intellectual Property Association; and the International Trademark Association.

Areas of Concentration:

• Copyright
• Counseling
• Licensing and Transactions
• Litigation
• Federal District Court
• Trade Dress
• Trademarks, Collective Marks, and Service Marks
• Trademark Trial and Appeal Board
• Unfair Competition

Education:

• B.A. Political Science from Westminister College - 1995 (with honors)
• J.D. from George Mason University School of Law - 1998

Bar Admissions:

• District of Columbia Bar
• Virginia State Bar

Authored Publications & Press Interviews:

• “Firm Profile: USA – DC – Rothwell, Figg, Ernst & Manbeck, P.C.,” INTA 2010 Member Supplement, Corporate INTL Magazine, December 2010.
• Sterba, A. and Rothwell, G.F., “Navigating the Trademark Trial and Appeal Board,” including two inset boxes, “TTAB: A Lesson in Procedure” and “Practical Tips for TTAB Success,” World Trademark Review (October/November 2010).
• “One Step Closer (But Not There Yet): Design Protection Bill Passes Senate Judiciary Committee,”Fashionista.com, (American University IP Brief), December 2010.
• Sterba, A. “Permanent Injunctions”, chap. 5 of “Trademark Infringement Remedies,” The ABA Section of Intellectual Property Law, 2008, 2009, and 2010.
• “Chanel Could Sue You For Using The Word 'Chanel' As An Adjective To Describe Someone Else's Designs,” Fashionista.com, (AboveThe Law.com, The Huffington Post & Nu.NL.com), September 2010.
• “Why L.A. Triumph Can Sue Madonna Over 'Material Girl' Line and Win,”Fashionista.com, August 2010.
• “New Bill Could Protect Designers From Being Knocked Off, 'Great first step for designers,' says Leading Intellectual Property Lawyer,” Fashionista.com, (Rough Roses blog), August 2010.
• “Valentino Wins 16-Year Trademark Case; Valentino’s Lawyer Explains the Ruling,” including a Q&A with Anne Sterba, Fashionista.com, (AboveThe Law.com), July 2010.

Lectures and Presentations

• BlockbETA Marketing, Guest Co-Lecturer, “Risks & Rewards of Social Media,” Seattle, WA, March 2010.
• Association of Patent Law Firms, Webinar Presentation, “Protecting a Brand in Tough Economic Times,” April 2011.

Representative Litigation Matters

• Atlantic Contracting & Specialties LLC v. Atlantic Insulation Corporation of New England (DC RI 2010) -- Obtained a consent judgment for RFEM client, preventing Atlantic Insulation Corporation of New England’s continued use of ATLANTIC INSULATION.
• Valentino U.S.A., Inc. v. Florence Fashions (Jersey) Limited (TTAB 2010) – After extensive discovery, testimony periods, briefing and an oral argument, the TTAB held that RFEM client Valentino established priority of use and that a likelihood of confusion existed between the Valentino marks and Florence Fashions’ GIOVANNI VALENTINO and GIANNI VALENTINO marks. Therefore, the TTAB sustained the oppositions and granted the petitions to cancel. This was one of the TTAB’s longest-pending (16 years) cases when brought to resolution.
• ITG Software Solutions, Inc. v. Meng Fanning (Nat’l Arbitration Forum, 2010) – Represented ITG Software Solutions, Inc. (Complainant in Domain Name Dispute). The Panel determined that (1) Respondent’s “itgfx.com” domain name is confusingly similar to Complainant’s ITG mark; (2) Respondent does not have any rights or legitimate interests in the “itgfx.com” domain name; and (3) Respondent registered and used the “itgfx.com” domain name in bad faith. Therefore, the Panel granted the relief sought by ITG and ordered that the “itgfx.com” domain name be transferred to ITG Software Solutions, Inc.
• In re MC MC S.r.l. (TTAB 2008) – MC MC, an Italian jewelry creator appealed the decision of a trademark examining attorney rejecting the mark MARIA CALLAS for registration. RFEM appealed the decision to the TTAB and obtained a reversal of the examining attorney’s decision. The trademark application was published for opposition.
• Webloyalty.com, Inc. v. Consumer Innovations, LLC. (D. Del. 2005) – Represented Webloyalty, plaintiff in a copyright action alleging copying of online advertisement. After a bench trial, the Court held that defendant had engaged in actual copying of Webloyalty’s advertisements, found “willful” copyright infringement, awarded enhanced statutory damages and ordered defendant to pay Webloyalty more than $250,000 in legal fees and costs.

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