Zachary B. Fields
Zach manages U.S. and international trademark portfolios for clients across diverse sectors and markets including fast-moving consumer goods, retail, hospitality, fashion, food and beverage, fintech, health care, medical device and nonprofit organizations. Clients rely on him as a go-to resource for complex US and cross-border trademark, brand protection and intellectual property licensing matters. Colleagues often bring him in to triage IP-related due diligence and other potential challenges in corporate and financing transactions.
Zach brings a rare in-house perspective to his work, having previously served as general counsel for a high-growth retail brand. His ability to distill legal nuances into commercially sound, risk-balanced guidance resonates with cross-functional teams. He prioritizes real-time, transparent communication, ensuring go-to-market product development, marketing and sales timelines stay on track.
Zach provides end-to-end trademark and IP counsel, including:
- Advising on trademark clearance, prosecution, enforcement and portfolio strategy
- Overcoming US Patent and Trademark Office (USPTO) actions involving likelihood of confusion and descriptiveness
- Coordinating with foreign counsel on cross-border brand protection programs
- Managing US Trademark Trial and Appeal Board (TTAB) oppositions and cancellations
- Handling Uniform Domain-Name Dispute-Resolution Policy (UDRP) domain name disputes and online brand enforcement
- Drafting and negotiating worldwide trademark licenses, consents and coexistence agreements
- Conducting trademark and IP due diligence and supporting corporate transactions
- Providing brand-risk and naming guidance for product launches and rebrands
- Delivering trademark and branding training to in-house legal and marketing teams
A member of the firm’s Pro Bono Committee, he regularly represents small businesses, creators and low-income entrepreneurs in trademark and copyright matters, including through Volunteer Lawyers for the Arts and similar programs.
Zach has authored client alerts and articles on trademark and copyright issues and contributes to firm and client-facing thought leadership on brand protection and enforcement.
Experience & capabilities
Selected matters
Apparel and consumer products companies in addressing trademark squatting and bad-faith filings in China, including opposition and cancellation strategy and coordination with local counsel
A major precious metals and e-commerce platform in building and managing an expanding U.S. trademark portfolio across core brands and digital properties, including enforcement strategy and successful UDRP actions removing cybersquatting domain registrations
A domain-based brand in securing trademark registration by overcoming a USPTO descriptiveness refusal and demonstrating that a generic term combined with a top-level domain was distinctive and registrable
A global hospitality group in negotiating a complex trademark license agreement in connection with a corporate spin-out transaction
Background
Education
- J.D., magna cum laude, Albany Law School, 2010
- Member, Albany Law Review
- Honors Civil Procedure Teaching Fellowship
- B.A., Environmental Policy, minor in History, Union College, 2007
Bar Admissions
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