Dana S. Gross works on all facets of international trademark portfolio management, including clearance, prosecution, protection, and enforcement. He also assists clients with issues pertaining to domain name portfolio management and online enforcement, filing and defending claims brought under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP), and the takedown procedures of the Digital Millennium Copyright Act (DMCA). Dana also advises clients on the intricacies of ICANN’s new generic top-level domain (gTLD) program. Dana advises clients on copyright, advertising, franchise, consumer protection, and privacy law issues, and assists with intellectual property aspects of corporate transactions, drafting and negotiating complex agreements and license arrangements on behalf of clients in a wide variety of industries.
In his international trademark portfolio management work, Dana assists clients across industries, including the retail, banking, insurance, consulting, chemical, energy, pharmaceutical, biotechnology, travel and leisure, logistics, food and beverage, and nonprofit sectors, to clear, register, and protect trademarks on a worldwide basis. Dana also advises clients in connection with trademark enforcement and invalidity actions in the United States and internationally, and assists clients in defending any such actions brought by third parties.
Dana monitors policy developments at ICANN, including the new gTLD program, which was the topic of a roundtable he hosted for the International Trademark Association (INTA). Dana advised clients on several applications for .BRAND extensions, including extensions that were filed on a community basis and extensions that were likely to be contested, and assisted clients in a number of industriesto develop and implement domain name registration and enforcement strategies to both protect and exploit their brands.
Dana files UDRP complaints and takes other remedial actions on behalf of clients who have been victimized by cybersquatters and other online fraudsters. He evaluates and implements strategies for dealing with such online infringements, and is familiar with the tools available to brand owners to protect their trademark rights. Dana also has experience defending UDRP complaints brought by competitors, and has successfully defended several such actions, either by negotiated settlement or via the decision of a UDRP panelist.
Dana also assists clients with the IP aspects of corporate transactions, drafting and negotiating sales agreements, license agreements, security agreements, and other related documents. In this capacity, Dana advises clients on IP ownership and data privacy issues, and counsels clients on the risks and liabilities related to proceeding with the proposed transaction, as well as the remedial steps that may be taken to mitigate the same.
Prior to law school, Dana worked for US Senator Robert C. Byrd of West Virginia in various capacities. He joined Morgan Lewis after working at another international law firm, where he practiced in both the corporate finance and intellectual property practice groups.
Brandeis University, 1998, B.A., Magna Cum Laude
Duke University School of Law, 2004, J.D.
District of Columbia
U.S. District Courts for the Southern and Eastern Districts of New York