Donna is currently Partner at Royer Cooper Cohen Braunfeld in New York City, USA.
She describes her main area of expertise as being trade mark and copyright litigation and prosecution.
She began her career as an IP attorney almost accidentally. She explains:
“In law school I read about the development of Graphical User Interfaces by Apple, and the ensuing disputes with Microsoft. I became fascinated with the development of computer applications and how different laws applied.”
At the time, Donna was one of just two members of her law school’s Computer Law Society.
She remembers:
“The rest of our classmates had no interest in computer law and no idea what it was! When we approached the Dean, they essentially laughed at our idea to launch a Computer Law Journal.”
Donna adds:
“Not surprisingly, the only offers I received when I graduated were from IP firms. Thank goodness! I have loved every minute of being an IP lawyer.”
Adding value to clients
Revealing how Royer Cooper Cohen Braunfeld adds value to clients, Donna explains:
“We think like business people and are skilled attorneys with vast experience in our fields. Almost all of us have practiced in much larger firms and have specifically chosen to be at a smaller, collegial firm which is often more economical for our clients.”
“One of my favourite aspects of being an IP lawyer is working with many different clients of all sizes across a wide variety of industries – all with different challenges.”
For example, a recent case of particular interest for Donna involved assisting a global company based in India to resolve a drawn out trade mark dispute against a Japanese company. This affected related entities on both sides in many other countries, including the US. Donna notes:
“I had to adapt my approach, recommendations and communication style to the different cultures of my own client, my adversaries, and the other parties involved. We able to finally resolve the matter after several years, and my client’s goals were met.”
Best practice to share with FICPI members
A best practice at her firm that Donna chooses to share with fellow IP attorneys in the FICPI global community focuses on creativity and initiative. Donna highlights:
“We are a firm full of lawyers who have worked in companies or started their own companies.
“At Royer Cooper Cohen Braunfeld, we take pride in the entrepreneurial spirit and culture that defines us and helps us relate to and serve the needs of any size of business.”
The future for independent IP attorneys
Donna sees Artificial Intelligence (AI) as bringing benefits to IP practices whilst she believes that personal characteristics will continue to define what makes a standout IP attorney. She observes:
“Of course AI is the next new thing, and it will certainly make tasks easier and the practice of an independent IP attorney more efficient. However, this may affect the way that younger IP attorneys are trained. AI tools can perform at least some of the tasks that junior IP attorneys were historically given to learn, and we will have to be aware of and compensate for that in other ways.
“In my view, the core aspects of being an independent IP attorney, including curiosity, fascination with technology and a desire to further our clients’ interests in an ever-changing world won’t change.”
Donna ensures her own expertise evolves to keep pace with emerging technologies and has grown to include AI as well as developments in areas such as Cannabis.
Value of FICPI membership
This month Donna celebrates a decade since she joined FICPI, in October 2016. She is particularly active in the Study & Work Group which focuses on trade marks, known as CET 1, where she is reporter. The Reporter in a CET group assists the Chair in running the group – Donna provides a key presence for FICPI's trade mark group in the USA, keeping the group (and the CET as a whole) up to date with developments in this important jurisdiction.
Donna regularly attends FICPI events, mingling with members and other interested IP professionals from around the world. She reveals:
“What I value most about FICPI membership is the opportunities it creates to meet people from all over the globe who come from different cultures and backgrounds. As IP lawyers, we all share a large part of our lives in common – and understand and support each other on a special level.”
Final word – outside of work
Outside of work, Donna’s interests combine the creative and cerebral.
She is Editor of a Thomson Reuters publication ‘Trademarks Throughout the World’ which requires connecting with a network of IP lawyers throughout the world (like FICPI!).
On the creative side, she loves cooking and gardening -- and riding her Vespa (carefully) around the streets of New York City, her city of origin!
Education & training
1985: JD Boston University
1982: B.S. Cornell University
Professional background
August 2019 – date: Royer Cooper Cohen Braunfeld
June 2016 – August 2019: Frankfurt Kurnit Klein & Selz
May 2007 – June 2016: Baker Hostetler
May 2005 – May 2007: Donna Tobin P.C.
August 1985 – May 2005: Cooper & Dunham LLP
