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James L. Bikoff
Partner / Washington, D.C.James L. Bikoff is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.
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Full Bio
James L. Bikoff’s practice focuses on formulating and implementing worldwide trademark and copyright protection and enforcement programs for clients in the consumer and industrial product sectors, as well as non-profits, and service providers such as banks and insurance companies. He also engages in Internet and domain name counseling and enforcement actions.
Mr. Bikoff has been active for over 40 years directing worldwide trademark and copyright protection, litigation and anti-counterfeiting enforcement. More recently, Mr. Bikoff has been active in Internet and domain name litigation. His clients have included the International Olympic Committee, the United States Olympic Committee, Major League Soccer, the Federation Internationale de Football Association, the American Red Cross, the National Grange and Tristar Insurance. He was in charge of enforcement for the 1994 World Cup Games, the 1996 Olympic Games in Atlanta, Georgia, and the 1999 and 2003 Women’s World Cup Games. Mr. Bikoff also counsels a growing number of wineries and restaurants on trademark and copyright issues.
Mr. Bikoff is chair of the Trademark and Unfair Competition Division of the Intellectual Property Section of the American Bar Association and a member of the European Community Trademark Association (Anticounterfeiting Committee), the International Trademark Association (Data Protection Committee Subcommittee on Legislation), the New York Intellectual Property Law Association (Trademark and Internet Committees), and the Intellectual Property Constituency of ICANN. He has served as co-chair of the Intellectual Property Committee of the D.C. Bar Association. He is also a frequent contributor to several publications, including IP Litigator, International Quarterly, and World Trademark Review.
Mr. Bikoff was lead counsel in a landmark anti-cybersquatting action for the NCAA involving the first freeze of assets against an offshore Internet gambling website, and was lead counsel in a case involving the largest number of domain names ever joined as defendants: International Olympic Committee, United States Olympic Committee and Salt Lake Organizing Committee for the Olympic Winter Games of 2002 v. 2000 Olympic.com, et al., Civ. No. 00-1018-A (E.D.Va. 2000). Mr. Bikoff has also achieved a string of victories in UDRP proceedings on behalf of the American Red Cross, the International Olympic Committee and other clients.
Mr. Bikoff has written and spoken frequently on intellectual property protection and enforcement in the United States and abroad, and has testified before Congress in support of intellectual property legislation. He was actively involved in the enactment of the Trademark Counterfeiting Act of 1984 and the Anti-cybersquatting Consumer Protection Act (“ACPA”). He is the author and co-author of numerous articles on trademark, copyright and domain name issues including “What’s The Next Play for the Redskins? What Blackhorse Really Means For the Football Team” World Trademark Review Daily (June 25, 2014); “Cancellation Action Based On Misrepresentation of Source Does Not Require Use of Mark In U.S. Commerce” World Trademark Review Daily (May 1, 2014)(Bayer FLANAX Case); “The Uniform Rapid Suspension System–A New Weapon in the War Against Cybersquatters” LANDSLIDE (January/February 2014); “TTAB Cancels Mark For Being Highly Descriptive” World Trademark Review Daily (July 30, 2013)(Annapolis Tours Case); “Federal Circuit Provides Trademark Owners Tool To Prevent Repeated Attacks” World Trademark Review Daily (Jan. 28, 2013)(Disney Winnie the Pooh Case); “Legislation Targets Theft of US Property by Rogue Websites” World Trademark Review (Feb/March 2012); “Hauling In the Middleman: Contributory Trademark Infringement in North America” Oxford University Press, Journal of Intellectual Property Law & Practice (February 2010); “The UDRP Turns Ten” World Trademark Review (Aug/Sept. 2009); “Louis Vuitton Holds ISP Accountable for Combined $ 21.6 Million” Oxford University Press, Journal of Intellectual Property Law & Practice (July 2010); “Costco v. Omega: The Foreign First-Sale Doctrine” Westlaw Journal, Intellectual Property (Jan. 12, 2011).
Mr. Bikoff graduated, cum laude, from the University of Cincinnati in 1962. He received his LL.B. from Columbia University School of Law in 1965 and obtained an LL.M. in trade regulation from the New York University School of Law in 1966.
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Bar Admissions
District of Columbia
District of Columbia Federal and State Courts
Trademark Trial and Appeal Board
Pro Hac to various Federal District and appellate courts throughout the U.S. -
Education
Undergraduate- University of Cincinnati
Law School- Columbia University
LL.M. in Trade Regulation- New York University
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Memberships
• Member, Council of the American Bar Association Section of Intellectual Property Law (2020-2024)
• Member, American Bar Association Section of Intellectual Property Law Membership Board
• Co-chair of New Member Recruitment/Engagement, American Bar Association Section of Intellectual Property Law.
• Chair, Trademarks & Unfair Competition Division Committee of the American Bar Association Section of Intellectual Property Law (2019-2020)
• Member, Data Protection Committee Subcommittee on Legislation (2019-2021)
• Liaison to the ICANN- Intellectual Property Constituency of the American Bar Association Section of Intellectual Property Law
• Council Liaison to American Bar Association IPL Section Trademarks & Unfair Competition Division
• Liaison to Intellectual Property Associations on Trademark issues
• Member, American Bar Association IPL Section Trademark Modernization Act Task Force
• Chair, Trademark Legislation Committee, Intellectual Property Section of the American Bar Association (2017)
• Chair, Trademark Litigation Committee, Intellectual Property Section of the American Bar Association (2018)
• Member, European Community Trademark Association (Anticounterfeiting Committee) (Since 1990)
• Chair, Internet Committee Subcommittee on Whois and Privacy Issues of the International Trademark Association (2017-2018)
• Member, Trademark and Internet Committees, New York Intellectual Property Law Association
• Member, Fellows of the American Bar Foundation
• Former Co-Chair, Intellectual Property Committee, DC Bar Association
• Member, Advisory Board, IP Litigator
• Member, Advisory Board, International Quarterly
• Member, Advisory Board, The University of Baltimore Intellectual Property Law Journal
• Member, Advisory Board, World eBusiness Law Report
• Member, Internet Committee, International Trademark Association (INTA) (2022-2023) -
Recognitions
The Best Lawyers in America®, Copyright Law (2025-2026)
Chambers USA, Intellectual Property: Trademark, Copyright & Trade Secrets, District of Columbia (2020-2025)
World Trademark Review 1000 (WTR 1000) - List of World's Leading Trademark Professionals (District of Columbia) -
Publications and Speaking Engagements
Cellular South Denied Preliminary Injunction Against Spire, World Trademark Review, October 23, 2017.
Bikoff, J.L. (2017) Fake it ’til we make it: regulating dangerous counterfeit goods. European Communities Trade Mark Association Bulletin, October 2017.
Contributor, “United States.” Brand Protection Online: A Practical Guide to Protection from Online Infringement. Jeremy Blum. Globe Law And Business, 2017. 307-322. Print.
Internet Expansion: How This Affects Your Company – May 22, 2015.
Author, “Summary of Pending Legislation Affecting Trademarks” New York Patent Law Association, April/May, 2015.
Bikoff, J.L. & Heasley, D.K. & Sherman, V & Stripeland, J. (2015) Fake it ’til we make it: regulating dangerous counterfeit goods. Oxford Journals, 10(4), 246-254.
Hail to the Redskins – For Now? Debating the Future of the NFL Team’s Brand, World Trademark Review, April 9, 2015.
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SGR Publications
- Supporting Liability for Online Marketplaces that Allow Third-Party Sellers to Offer Defective and or Counterfeit Products
- Shop Safe Act: A Bill to Hold E-Commerce Sites Liable for Counterfeit Goods Sold Online
- Update on USPTO and U.S. Copyright Office Extensions and Adjustments
- No Place To Hide – The Effect of a Data Breach on Brand Value
- New Requirements: Foreign Trademark Applicants and Registrants Must Use U.S. Licensed Attorneys
- Update: Scandalous Marks at the PTO
- Supreme Court Rules that Bankruptcy Does Not Revoke a Trademark License
- ICANN Updates: Access to Domain Name Registrant Data Post-Blackout
- Trademark Enforcement Hampered by Disappearance of WHOIS Data
- Reduction of Data Breach Costs
- Nonprofit Practice
- National Grange Again Victorious in the Eastern District of California
- New Developments: Disappearing Data: WHOIS Blackout
- Disappearing Data: WHOIS Blackout Will Likely Start May 25, 2018
- National Grange Victorious in Vacating Satisfaction of Judgment
- U.S. District Court Orders USPTO to Register BOOKING.COM as a Protected Trademark
- Finding of Likelihood of Confusion Despite Consent Agreement
- TTAB Decision is Found to Have Preclusive Effect in the Southern District of New York
- Vulgar is Vogue: Federal Circuit Finds Lanham Act § 2(a)’s “Immoral or Scandalous” Provision Unconstitutional
- Another UDRP Success for Jim Bikoff, Holly Lance and Darlene Tzou
- Increasing Trademark Scams Discussed at USPTO Forum
- USPTO Issues New Guidance to Examiners in Light of Tam Ruling
- THE SLANTS Mark Registrable as Prohibition of “Derogatory” Marks Held Unconstitutional By the Supreme Court
- Fourth Circuit Holds that Policy Requiring Payment of USPTO Attorneys’ Fees Stands
- New Health Care Top Level Domain Available
- Order Granting Motion for Assignment Order for National Grange
- National Grange Succeeds in Opposing NEWGRANGE PRESS Application Based on Prior Trademark Rights
- U.S. Patent and Trademark (PTO) Office Rules and Regulations Change
- Attorney Fees Awards in Lanham Act Cases
- U.S. Patent and Trademark Office Proposes Changes to the Trademark Trial & Appeal Board Rules of Practice
- Hauling in the Middleman
- Infringers Ignore Permanent Injunction Orders at Their Peril
- CBP: Final Rule Regarding Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border
- America’s Oldest Farming Association Separates Wheat From Chaff, Preventing Seceding Chapter From Using Its Name
- DOT Insurance — The New Internet Place for the Global Insurance Community
- Report on Recent Developments in Internet Domain Name Policy
- DOT Bank — The New Internet Place for the Global Banking Community
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Press
- James Bikoff, Bruce McDonald and Scott Woldow Recognized on “WTR 1000” List of World’s Leading Trademark Professionals of 2026; SGR Receives Firm Recognition in Washington, D.C. Metro
- 42 Smith Gambrell Attorneys and 20 Practice Areas Recognized by Chambers USA 2025
- James Bikoff, Jason Blair, Bruce McDonald and Scott Woldow Recognized on “WTR 1000” List of World’s Leading Trademark Professionals of 2025; Smith Gambrell Recognized as a Firm in Washington, D.C. Metro
- 42 SGR Attorneys and 19 SGR Practice Areas Recognized by Chambers USA 2024
- SGR’s Jim Bikoff, Bruce McDonald and Scott Woldow Recognized on “WTR 1000” List of World’s Leading Trademark Professionals of 2024; SGR Recognized as a Firm in Washington, D.C. Metro
- 8 Smith Gambrell Russell Attorneys Appointed to INTA Committees for 2024-2025
- SGR Client The National Grange of the Order of Patrons of Husbandry Receives Favorable Decision from U.S. Patent and Trademark Office, Trademark Trial and Appeal Board
- Chambers USA Guide 2023 Recognizes 44 SGR Attorneys and 18 SGR Practice Areas Among the Best in the Country
- SGR’s Jim Bikoff, Bruce McDonald, Ed Pennington, and Scott Woldow Recognized on “WTR 1000” List of World’s Leading Trademark Professionals of 2023; SGR Recognized as a Firm in Washington, D.C. Metro
- Chambers USA Guide 2022 Recognizes 32 SGR Attorneys and 11 SGR Practice Areas Among the Best in the Country
- SGR’s Jim Bikoff, Bruce McDonald and Scott Woldow Recognized on “WTR 1000” List of World’s Leading Trademark Professionals of 2022; SGR Recognized as a Firm in Washington, D.C. Metro
- Chambers USA Guide 2021 Recognizes SGR Attorneys and Practice Areas Among the Best
- SGR’s Jim Bikoff and Bruce McDonald Recognized on World Trademark Review’s “WTR 1000” List of World’s Leading Trademark Professionals of 2021; SGR Recognized as a Firm in Washington, D.C. Metro
- Chambers USA Guide 2020 Recognizes 14 SGR Attorneys and 8 SGR Practice Areas Among the Best in the Country
- SGR’s Jim Bikoff and Bruce McDonald Recognized on World Trademark Review’s “WTR 1000” List of World’s Leading Trademark Professionals of 2020; SGR Recognized as a Firm in Washington, D.C. Metro
- Six SGR Attorneys Appointed to INTA Committees for 2020-2021 Term
- Smith, Gambrell & Russell Client National Grange Claims Another Victory in the Eastern District of California
- SGR Partner Jim Bikoff Appointed as Advisor to the Trademarks & Unfair Competition Division of the ABA Section of IP Law
- Smith, Gambrell & Russell Secures Another Victory for Client, the National Grange
- SGR’s James Bikoff Selected to Serve on Law360’s 2017 Intellectual Property Editorial Advisory Board
- SGR’s James Bikoff, Rodgers Lunsford, and Bruce McDonald Recognized on World Trademark Review’s “WTR 1000” List of the World’s Leading Trademark Professionals of 2017
- Five Members of SGR’s IP Practice Chosen to Serve on Committees for the International Trademark Association