Karen Artz Ash

Qualifications and Career Profile

Karen Artz Ash, National Co-Chair of the Intellectual Property Practice at Katten Muchin Rosenman LLP, focuses her practice on all aspects of intellectual property law with a concentration in all facets of trademark and copyright law. Ms. Ash is a member of the firm’s Board of Directors, Executive Committee and serves as Chair of the New York Pro Bono Committee.

Ms. Ash handles the structuring of intellectual property, including holding companies and trusts, as well as the creation, development, implementation and administration of licensing, servicing, manufacturing and other commercial agreements for companies worldwide. She handles IP diligence and corporate transactions worldwide, and is skilled in bankruptcy assessments and financings that are dependent on intellectual property assets. Ms. Ash has acted as Special Intellectual Property Counsel, appointed by the Bankruptcy Court in the Southern District of New York, in a high profile bankruptcy proceeding. She also has extensive experience in tax proceedings involving intellectual property holding entities.

Ms. Ash administers relationships in complex IP trust arrangements and develops and administers the worldwide licensing, exploitation, searching, clearance, registration and enforcement of trademarks, logos and domain names. Ms. Ash successfully represented a major apparel manufacturer and retailer in a high profile matter involving licensing arrangements with a designer label; represented apparel clients in the acquisition and disposition of major designer properties and businesses; represented clients in a broad range of businesses in acquisitions, securitizations, financings, divestitures, and joint ventures worldwide; represented clients in developing, building and administering, manufacturing, licensing and sourcing programs throughout the world; and works with all clients to develop strategies to protect their intellectual property assets worldwide.

Ms. Ash’s practice represents clients in the fashion and apparel, publishing, banking, financial services, and consumer electronics industries.

Associations and Committees

Ms. Ash is admitted to practice before the U.S. Patent and Trademark Office. She is a member of the New York State Bar Association’s sections on Trial Law, Intellectual Property and Alternative Dispute Resolutions, and a member of the American Bar Association’s sections on Patent, Trademark and Copyright Law and Trial Law. She is also a member of the United States International Trademark Association, the National Association of Mediators, the New York County Lawyers’ Association and the New York Women’s Bar. Ms. Ash is a member of the Anti-Defamation League, where she is on the Executive Committees of New York Regional Board and the Lawyers’ Committee. Ms. Ash has been involved in Federal mediation as a member of the Southern District of New York Mediation panel since 1993, and she has also conducted private mediations. She is also a member of the Mediation/ADR Sub-Committee of the International Trademark Association (INTA). She is a member of the Board of Directors of SYL, Inc., an intellectual property holding company for Syms Corp. She performs pro bono work for the Central Park Conservancy, ADL, Sanctuary for Families and other New York charitable institutions, and is a member of the Board of Directors, Executive Committee and Planning Committee of Volunteers of Legal Service (VOLS). She is also a regular sponsor and participant in the Women’s Wear Daily (WWD) CEO and Branding Summits. She was selected and listed on Forbes.com as a “Best Lawyer in America” (IP) (2005), and was named a "Recommended Lawyer" in the 2010/11 edition of Practical Law Company's Cross-Border IP in Business Transactions Handbook.

Lectures and Articles

Ms. Ash is the co-author of “Mediation of Trademark Disputes Has Advantages” with Partner Floyd Mandell, which was published in the April 23, 2007, edition of the National Law Journal.

Ms. Ash is the author of the following:

• “Common Law Rights Can Outlast Registration,” which appeared in the July/August 2010 edition of Managing Intellectual Property.
• “Changes in Declaratory Judgment Standards,” which appeared in the June 2010 edition of Managing Intellectual Property.
• “Licence Agreements in Cross-Border Bankruptcies,” which appeared in the May 2010 edition of Managing Intellectual Property.
• “Cautions on Consent to Registration Agreements,” which appeared in the April 2010 edition of Managing Intellectual Property.
• “Likelihood of Confusion for Alcoholic Beverage Marks,” which appeared in the March 2010 edition of Managing Intellectual Property.
• “Obtaining Registrations for Personal Names,” which appeared in the February 2010 edition of Managing Intellectual Property.
• “Co-Existence Agreements,” which appeared in the December 2009/January 2010 edition of Managing Intellectual Property.
• “Effect of Corporate Name Registrations,” which appeared in the November 2009 edition of Managing Intellectual Property.
• “Changes to Fraud Analysis,” which appeared in the October 2009 edition of Managing Intellectual Property.
• “Registration on the Supplemental Register,” which appeared in the September 2009 edition of Managing Intellectual Property.
• “Settlement of Opposition Proceedings,” which appeared in the July/August issue of Managing Intellectual Property.
• “Intent-to-Use Requirements,” which appeared in the June 2009 edition of Managing Intellectual Property.
• “Licensing in the Credit Crunch,” which appeared in the May 2009 edition of Managing Intellectual Property.
• “Trade Mark Disclaimers,” which appeared in the April 2009 edition of Managing Intellectual Property.
• “Trade Mark Monitoring,” which appeared in the March 2009 edition of Managing Intellectual Property.
• “Excusable Neglect,” which appeared in the February 2009 edition of Managing Intellectual Property.
• “Deceptively Misdescriptive Geographic Marks,” which appeared in the December 2008/January 2009 edition of Managing Intellectual Property.
• “Avoid Domain Name Scams,” which appeared in the November 2008 edition of Managing Intellectual Property.
• “License Agreement Representations,” which appeared in the October 2008 edition of Managing Intellectual Property.
• “Protecting Certification Marks,” which appeared in the September 2008 edition of Managing Intellectual Property.
• “Avoiding Willful Infringement,” which appeared in the July 2008 edition of Managing Intellectual Property.
• “Using a Third Party’s Trade Mark,” which appeared in the June 2008 edition of Managing Intellectual Property.
• “Claiming Trade Mark Rights in Particular Colors,” which appeared in the May 2008 edition of Managing Intellectual Property.
• “Environmentally Friendly Marketing Claims,” which appeared in the April 2008 edition of Managing Intellectual Property.
• “Enforcement Options for Foreign Marks,” which appeared in the March 2008 edition of Managing Intellectual Property.
• “Alternatives to Federal TM Filings,” which appeared in the February 2008 edition of Managing Intellectual Property.
• “Limitations on Governing Law Provisions,” which appeared in the December 2007/January 2008 edition of Managing Intellectual Property.
• “Excusable Non-Use of a Trade Mark,” which appeared in the November 2007 edition of Managing Intellectual Property.
• “Use of Personal Names,” which appeared in the October 2007 edition of Managing Intellectual Property.
• “Infringement Risks and Related Goods,” which appeared in the September 2007 edition of Managing Intellectual Property.
• “Fraud Warnings,” which appeared in the July 2007 edition of Managing Intellectual Property.
• “Risks Arising from Phonetic Similarity,” which appeared in the May 2007 edition of Managing Intellectual Property.
• “The Importance of Trade Mark Clearance,” which appeared in the April 2007 edition of Managing Intellectual Property.
• “Cautions About Foreign Word Marks,” which appeared in the March 2007 edition of Managing Intellectual Property.
• “Keyword Advertising and Trade Mark Infringement,” which appeared in the February 2007 edition of Managing Intellectual Property.
• “What to Know About Geographic References,” which appeared in the December 2006/January 2007 edition of Managing Intellectual Property.
• “Addressing Grey Market Sales into the US,” which appeared in the November 2006 edition of Managing Intellectual Property.
• “Gripe Sites and Fair Use,” which appeared in the October 2006 edition of Managing Intellectual Property.
• “Tips on Using Priority Foreign Filings,” which appeared in the September 2006 edition of Managing Intellectual Property.
• “Disputes in the Financial Service Industry,” which appeared in the July 2006 edition of Managing Intellectual Property.
• “Trade Mark Enforcement for Domain Names,” which appeared in the June 2006 edition of Managing Intellectual Property.
• “Expanding Well-Known Brands to the US,” which appeared in the May 2006 edition of Managing Intellectual Property.
• “Domain Name Issues in License Agreements,” which appeared in the April 2006 edition of Managing Intellectual Property.
• “New Developments Concerning Trade Mark Licenses in Bankruptcy,” which appeared in the March 2006 edition of Managing Intellectual Property.
• “Defensive Ownership of Domain Names,” which appeared in the February 2006 edition of Managing Intellectual Property.
• “The Effect of New Uses on Copyright License Agreements,” which appeared in the October 4, 2004, edition of the New York Law Journal.
• “Anticipate New Technologies When Drafting Copyright Licenses,” which appeared in Entertainment Law Weekly on August 3, 2004.
• “Reducing the Effects of Licensing Bankruptcy,” which appeared in the August 2004 edition of Managing Intellectual Property.
• “Madrid Protocol’s Effect on Trademark Search Strategies,” which appeared in the Patent Trademark and Copyright Journal (BNA) in March 2004.
• “Analysis and Perspective: Just Another Option - Foreign Trademark Protection Following U.S. Membership in the Madrid Protocol,” which appeared in the Patent Trademark and Copyright Journal (BNA) in November 2003.
• “Trademark License Agreement Lessons,” which appeared in the July 9, 2001, issue of the New York Law Journal.
• “Pitfalls of Software Use,” which appeared in Bottom Line Business in March-April 2001.
• “Beware! Tricky Penalties for Illegal Software Copying,” which appeared in Bottom Line Business in August 2001.
• “The Commercial Valuation of Trademarks,” which appeared in the New York Law Journal in March 1995.

Ms. Ash publishes on a recurring basis in the Boardroom Reports and Bottom Line, and is the Intellectual Property Law Advisor to Bottom Line/Personal and Bottom Line/Business publications.

Education

Ms. Ash received her undergraduate degree in economics with honors (A.B., 1976) from Georgetown University and her law degree magna cum laude (J.D., 1980) from New York Law School, where she was Editor of the Law Review. She is admitted to practice in New York.