Practice Areas:
Trademarks
Copyrights
Domain Names and Social Media
Intellectual Property Licensing
Bar Admissions:
New York
Illinois
Education:
Fordham University School of Law; J.D., 1993
University of Georgia; A.B., 1990, Magna Cum Laude, Phi Beta Kappa
Large Law Firm Experience:
Clifford Chance LLP (member of AmLaw 100)
McDermott Will & Emery (member of AmLaw 100)
Cozen O’Connor (member of AmLaw 100)
Steven T. Shelton has practiced intellectual property law since 1993, following his passion developed in law school. Of those 31 years of legal practice, 25 of those years were spent at large international and national law firms. Steve has represented public and private companies, from Fortune 100 members to small startups. He has represented and continues to represent a variety of large and small companies, individuals, and non-profits in connection with every aspect of non-patent intellectual property law. His client base has comprised large financial services companies, energy companies, apparel manufacturers, internet companies, software developers, consumer goods manufacturers, media outlets, electronics manufacturers, food and beverage companies, farms, publishers, restaurants, medical-related companies, and museums.
Steve routinely counsels clients on all aspects of domestic and international trademark and copyright matters. Steve assists clients with federal and international trademark selection, clearance, registration, maintenance, and enforcement. He also assists clients with domestic and international trademark portfolio management, including overseeing application filings, prosecution, and maintenance, as well as inter partes and ex parte proceedings before the U.S. Trademark Trial and Appeal Board.
Steve manages international IP counsel, including coordinating the filing of multiple trademark applications in trademark offices around the world, and he routinely conducts or manages domestic and international investigations concerning unauthorized third-party trademark use. Steve also has substantial experience assisting clients with copyright-related matters, including federal copyright registration and enforcement.
Steve also has substantial internet and social media-related trademark and copyright experience, including takedown of infringing websites and takedown or recovery of infringing social media account names. Steve also has substantial domain name dispute resolution experience. He has represented clients in connection with cybersquatting claims and domain name dispute resolution and obtained the transfer of domestic and international domain name registrations.
Steve served as trademark counsel for one of the world’s largest financial services companies, in which capacity he routinely worked with domestic and international counsel to manage the company’s entire worldwide trademark portfolio. He also reviews advertisements and other publications to determine intellectual property compliance and the risk of challenge from competitors.
Steve also assists clients with IP-related documents and agreements, including drafting and negotiating licenses, assignments, and other ownership-related documents and agreements. He has extensive experience negotiating and drafting licensing and assignment agreements, non-disclosure and confidentiality agreements, and settlement and co-existence agreements in disputes regarding trademark, copyright, website content and domain name infringements. In addition, Steve consults on rights of privacy and rights of publicity issues and drafts photo/media releases. Steve also routinely assists clients with business transactions involving intellectual property, including conducting due diligence to confirm the accuracy of claimed intellectual property asset ownership and validity.
In addition, Steve understands and appreciates the obstacles frequently encountered by a company’s legal team working with business teams. Steve has assisted clients with creating and implementing solutions and procedures to increase proactive communication between legal and business teams in connection with launching new products, services, slogans, and promotions.
Before attending college, Steve spent 4 years as an infantry soldier in the U.S. Army. Most of that period of time was spent in Alaska. His military training includes Airborne School, Air Assault School, Sniper School, the Non-Commissioned Officer’s Academy, and Arctic Survival School.
Publications:
Shelton, The Cancellation of the Washington Redskins Trademarks, The Legal Intelligencer
Shelton, Defamation In Online and Social Media Communications, Westlaw Journal Computer & Internet, Volume 31, Issue 20
Shelton, Threats to Brands From Social Media, New York Law Journal
Shelton, New Facts in Megaupload Case May Complicate Prosecution, Westlaw Journal Computer & Internet, Volume 29, Issue 19
Shelton, Second Circuit Narrows Scope of Trade Dress Protection, IP Worldwide
Press Quotes:
Courtney Love Beats Lawyer's Appeal in 'Twibel' Case, Westlaw Journal Computer & Internet, Volume 33, Issue 18, Melissa Sachs
Washington State Weighs In On Anonymous Web Reviews, Westlaw Journal Computer & Internet, Volume 33, Issue 4, Melissa Sachs
Law Firm Defeats Law School's Appeal in $17M Defamation Case, Westlaw Journal Computer & Internet, Volume 32, Issue 5
Popular File-sharing Website Megaupload Shut Down, Associated Press, Matthew Barakat