Originally from Milan, Italy, and fluent in French, Italian, and Spanish, Davide Schiavetti specializes in counseling clients from European countries on navigating the legal trademark and copyright aspects of their entry into the North American market.
Although his clientele spans the European continent, thanks to his Italian heritage, he is particularly active in representing companies from Italy. These operate in various industries, but mostly in food, wine, fashion, and automotive. Brands he counsels in trademark law include some of Italy’s most well-known global names, such as Valentino, Ferrero, Lavazza, Soremartec, Barilla, and Fiat, among others.
Davide counsels them in trademark prosecution in the U.S. Patent and Trademark Office (USPTO) as well as litigation in both federal District Courts and the Trademark Trial and Appeal Board (TTAB). In general, European countries operate in a civil law system, whereas the United States operates in a common-law system. This major initial difference can be even more pronounced, and significant, in the areas of trademark law and litigation. The USPTO has very specific and different rules compared to the European Intellectual Property Office, as does litigation in the TTAB or District Courts, where the difference are even more significant. David bridges this gap.
In this role, Davide leverages his cultural background, education, and language skills to assist and support his clients in a myriad of ways. First, and perhaps most importantly, he understands his foreign client’s way of thinking and their culture. This allows him to anticipate their needs and questions, and provide a customized, effective response. This is of significant assistance in building a long-lasting relationship, and in helping these clients decipher the day-to-day operation of a legal system drastically different from their own.
The simple fact that Davide literally speaks his client’s language obviates the need for translation, which makes working with him exceptionally efficient. He augments this with a focused effort on being highly responsive as both a trademark, copyright, and design strategist, and a courtroom advocate. As the former, he strategizes with European businesses on how to best protect their IP rights in the U.S. Typically, it may not be possible to simply mirror a European strategy here. For example, for trademarks, this entails availability searches and a tailored prosecution and enforcement strategy.
As an advocate, he represents clients in all stages of TTAB litigation (both opposition and cancellation proceedings), as well as in regular district court litigation. This includes drafting pleadings, assistance with discovery, and providing counsel through every phase of trial. In an increasingly global economy, Davide ensures that his clients’ legal strategy and representation is global as well.
Honors & Recognitions
Managing IP (MIP) Rising Star (2021)
- Accolades & Honors,
- Rothwell Figg’s Davide Schiavetti Recognized Among the 2021 Best Up-and-Coming IP Practitioners in Private Practice by Managing IPAccolades & Honors,
- Firm News,
- Accolades & Honors,
- Speaking Engagement,
Co-Author, "Get Real: Protecting Fictional Brands," World Trademark Review issue 77, January 2, 2019
Author, "Translating USPTO Case Law On Foreign-Language TMs," IP Law360, February 9, 2018
Co-Author, "Litigating at the ITC: Caught in a Grey Zone," World Trademark Review issue 71, January 2, 2018
Author, "Color Marks: How to Prove Acquired Distinctiveness?" www.rfem.com, November 27, 2017
Author, "Some Clarity on Surname Trademarks From USPTO," IP Law360, September 14, 2017
Author, "Trademarks Stuck in Limbo: The Genericness Trap," www.rfem.com, September 7, 2017
Author, "Political Correctness: A 21st Century Stronghold Now Under Siege by Trademarks," www.rfem.com, July 28, 2017
Community & Professional
Vice-chair of the Trademark Transactions Committee of the American Bar Association Section of Intellectual Property Law (ABA-IPL) (2018-2019 membership year)
Chair of the Committee on Fashion Law of the ABA-IPL (2018-current)
- Advertising and Marketing
- Alternative Dispute Resolution
- Anti-Counterfeiting Litigation
- Brand Protection
- Copyright Litigation
- Copyright Prosecution
- Customs Trademark and Copyright Recordations and Enforcement
- Design and Trade Dress Counseling
- Domain Names and Website Content
- Due Diligence
- Emerging Companies
- False Advertising and Unfair Competition Litigation
- Industrial Designs, Patents, and Trade Dress Infringement
- International Filings
- Licensing and Transactions
- Portfolio Management
- Trade Secret Litigation
- Trademark Litigation
- Trademark Oppositions and Cancellations
- Trademark Prosecution
- Trademark Searching and Watching
LL.M., University of Miami School of Law
B.S. and M.S. in Law (J.D. equivalent), Università Commerciale Luigi Bocconi, Milan
Bar & Court Admissions
- New York
- U.S. Court of Appeals for the Federal Circuit