Mark J. Masterson
Mark is a licensed patent attorney in the firm’s Intellectual Property Department. The Department counsels market-leading companies on pioneering IP issues domestically and internationally. Mark leads a diverse practice that focuses on the following key areas:
Strategic Solutions: Innovative companies and individuals have worked with Mark to develop and execute an IP strategy that aligns with desired market outcomes. Mark works closely with clients to identify IP related goals and has a successful track record of achieving those goals. Clients have benefited from working with Mark in many ways, including:
- Procuring valuable IP assets domestically and internationally.
- Analyzing annual budgets to reduce IP related costs.
- Evaluating competitive markets and associated IP risks.
- Stopping competitors from infringing activities.
- Generating and negotiating various agreements to monetize IP rights.
- Developed internal procedures and forms for clients to effectively capture inventions while reducing administrative time and money.
- Conducted client-specific training for key personnel on important IP issues.
- Worked with clients on evaluating, drafting, and negotiating various agreements related to IP.
- Created alternative fee arrangements with clients to maximize value and minimize cost.
- Conducted IP due diligence related to various transactions including capital raises as well as mergers and acquisitions.
- Counseled clients on effective branding strategies.
Enforcement Strategies: Mark has partnered with clients that are market leaders in the automotive, medical device, and consumer product spaces that have been wronged by competitors. Mark is experienced with working with these clients to identify practical legal strategies to resolve IP related disputes in a cost-effective manner that delivers results.
- Part of trial teams that have obtained successful outcomes for clients regarding patents, trademarks, trade secrets, and advertising related claims.
- Successfully arbitrated various IP matters before the American Arbitration Association.
- Represented URL owners in Uniform Domain Name Dispute Resolution Policy (UDRP) actions.
- Experience with litigating USPTO trademark oppositions and cancellations.
Prior to joining McDonald Hopkins, Mark spent nearly four years at a Cleveland-based intellectual property firm where he handled all aspects of patent and trademark preparation and prosecution for clients.
Mark earned a J.D., cum laude, from Cleveland-Marshall College of Law in 2010. He received a B.S. in mechanical engineering from the University of Cincinnati in 2003.
Admissions - Court
- U.S. District Court for the Northern District of Ohio
Admissions - State
- Cleveland-Marshall College of Law
- University of Cincinnati
- Registered to practice before the U.S. Patent and Trademark Office
- Innovation strategies in the medical device industry recap
- 10 questions to consider before entering into a joint development agreement
- Top 5 things to know about design patents
- Evaluating Patent Value
- When you cross the "Blurred Lines" of copyrights, you've Got to Give it Up
- New USPTO website on the way
- IP Innovation Webinar Series, Session 4 | Thursday, April 22, 2021
- IP Innovation Webinar Series, Session 3 | Thursday, March 25, 2021
- Presenter, "Intellectual Property Issues in an Estate Plan," Cleveland Metropolitan Bar Association's 45th Annual Estate Planning Institute, October 2018