Mark J. Diliberti is an intellectual property attorney counseling clients on trademarks, copyrights, licensing, enforcement, litigation, and advertising. He is a partner and co-chair of the firm’s Trademark, Copyright & Advertising Counseling Practice which has been recognized as a national Tier 1 practice by U.S. News – Best Lawyers “Best Law Firms” (2013 – 2017), Chambers USA (2013 – 2014), and by The Legal 500 (2015 – 2017).
The firm’s Trademark, Copyright & Advertising Counseling Practice was also ranked by Managing Intellectual Property Magazine in the areas of contentious practice and prosecution (2015) and by the World Trademark Review “WTR 1000” directory for its trademark enforcement and litigation capabilities (2014 – 2015). Mark has also been listed individually in World Trademark Review’s “WTR 1000 – The World’s Leading Trademark Professionals” since 2021.
Mark’s practice encompasses strategic brand development, clearance, and risk assessment; global portfolio management, enforcement, and defense; trademark licensing and related agreements (sponsorship deals, performance contracts, rights agreements); and intellectual property aspects of business transactions such as mergers and acquisitions, financing, and joint ventures. He also has substantial experience with protecting unique and distinctive features of products (such as color and shape) as trade dress and copyrights.
Awards and Recognition
- The Best Lawyers in America® – Litigation – Intellectual Property; Trademark Law (2024)
- World Trademark Review, “WTR 1000 – The World’s Leading Trademark Professionals” directory (2021-present)
- The Legal 500:
- Trademarks, non-contentious (2012 – 2014, 2016 – 2017)
- Marketing and advertising (2016 – 2017)
- M: Milwaukee’s Lifestyle Magazine, Leading Lawyer in IP” (2013 – 2014)
- Wisconsin Super Lawyers – Rising Stars®(2006 – 2007)
- Foley’s Intellectual Property Department Founder’s Award, which recognized his service to clients, his colleagues and firm (2006)
- Served on the firm’s national recruiting committee, leading intellectual property recruiting efforts for the Milwaukee office (2002 – 2004)
- Served on the firm’s national associate’s committee for several years
- Member, International Trademark Association
- Member, Milwaukee Bar Association
- Board member, Milwaukee Repertory Theater (2012 – 2015)
- Member, Milwaukee’s East Town Association/Music
Mark is also a musician, active in the Milwaukee music community and band member in Floor Model, The Riverwest Aces and Bright Lights, Big City
Presentations and Publications
Mark has been a contributing author for the World Copyright Report and has been published in the ABA IPL Newsletter and others including:
- Author, “High Ratio of U.S. Trademark Registrations to Assets Increases Annual Value,” IPWatchdog (May 2023).
- Moderator, “Evolving Faces of Digital Media and Elusive Legal Solutions,” Foley’s 12th Annual IP Conference (September 2016).
- Forum co-chair, “Digital Media – The Challenges of Managing Multi-Platform Legal Issues” (June 2014).
- Contributing author, “Due Diligence for Intellectual Property: Valuing Assets in a Transaction,” Law Journal Press (2014).
- Host and moderator, “Anti-Counterfeiting,” International Trademark Association Roundtable (September 2010).
- Panelist, “Fireside Chat,” panel presentation at “Winning a Game of Inches: Gaining Momentum Through IP,” Foley’s Annual IP Conference, New York, NY (October 2010).
- Presenter, “BOSE: A Wave of Relief for Trademark Practitioners?,” IP Section of the Milwaukee Bar Association (October 2009).
- Author, “Which Type of IP Protection Is Right for Your Medical Device?,” MX Magazine (April 2009).
- Author, “Colorful Rights: Trademark Protection for Color Schemes,” Legal News Alerts: Sports (December 2008).
- Author, “IP Protection Menu for Medical Devices,” Legal News: Medical Devices (November 2008).
- Author, “First Sale Doctrine Protects Sale of ‘Promotional Use Only’ CDs,” World Media Law Report (September 2008).
- Author, “Copyright Protection Denied to Digital Models Created for Ad Campaign,” World Media Law Report (July 2008).
- “Court Rejects RIAA’s Popular ‘Making Available’ Argument,” World Media Law Report (July 2008).
- “StreamCast Ordered to Filter P2P Software But Escapes Being Shut Down,” World Copyright Law Report (November 2007).
- “Circuits Finally Agree on Scanned Pages of National Geographic CD – ROM,” World Copyright Law Report (July 2007).
- “Ninth Circuit Rejects Challenge to Copyright Protection for Orphan Works,” World Copyright Law Report (March 2007).
- “Flea Market’s Theory of Secondary Liability Doesn’t Fit, So Court Doesn’t Buy,” World Copyright Law Report (May 2006).
- “Supreme Court Leaves Circuits Divided Over National Geographic CD-Rom,” World Copyright Law Report (February 2006).
- “Safe Harbour Provides a Generous Haven for Software Copied for Maintenance,” World Copyright Law Report (October 2005).
- Presenter, “Metro-Goldwyn-Meyer Studios v. Grokster Ltd.: The Balance Between Copyright and Innovation” (July 2005).
- “Appeals Court Asks if FCC Broadcast Flag has ‘Crossed the Line’,” World Copyright Law Report (April 2005).
- “Clash of Industry Giants in Use of Music Games,” World Copyright Law Report (July 2004).
- “Belated Christmas Present for Fox in Copyright Case,” World Copyright Law Report (May 2004).
- “Country Singer Gets the Blues Over Allegedly Infringing Photo,” World Copyright Law Report (April 2004).
- Presenter, “Developing & Defending Color Marks” (June 2003).
- Presenter, “Copyright Law and Misappropriation Doctrine,” State Bar of Wisconsin (March and June 2001).
- Napster case summary, IPL Newsletter (Spring 2001).