Experience

Outside IP Counsel, Trademark Prosecution for Global Consumer Products Company

Served as outside intellectual property counsel to a global consumer products company, advising on the clearance of proposed trademarks, prosecuting a high volume of applications across a wide range of consumer products, and managing the client’s portfolios worldwide.

Summary Judgment for Health Care Client in Federal Trademark Infringement Suit

Secured summary judgment on behalf of the defendant, one of the largest non-profit hospital systems in the country, in a trademark infringement suit in federal court.  The successful defense ensured the continued use of a naming convention impacting more than 25 health care delivery locations across the Midwest.

Successful Outcomes for Hotel and Real Estate Franchisors in Trademark Infringement Matters

Successfully pursued trademark infringement actions on behalf of international hotel and real estate franchisors.

Successfully Opposed Competitor’s Trademarks

Successfully petitioned the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office on behalf of a client to cancel a competitor's trademark and sustained its opposition to three other trademark filings filed by the same competitor. Our client alleged that the competitor’s four marks related to feminine hygiene products were merely descriptive, lacked acquired distinctiveness and were generic.

Trademark Dispute for Health Care Client over Domain Name

Resolved a dispute for a health care client involving website domain names that were infringing the client’s trademarks through successful Uniform Domain Name Dispute Resolution Policy (UDRP) complaints established by the Internet Corporation for Assigned Names and Numbers (ICANN) with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. The panel appointed by WIPO ordered that the infringing domain name be transferred to the client.

Summary Judgment in Trademark Dispute Affirmed on Appeal

Successfully defended a manufacturer of pet supplies in a lawsuit in which a competitor alleged trademark infringement. The decision by the U.S. District Court for the Eastern District of Missouri was affirmed on appeal to the Eighth Circuit. In addition, the circuit court reversed and remanded the lower court’s finding of validity regarding the competitor’s trademark, which the client had challenged.

Trademark Enforcement for Multinational Consumer Products Company

Successfully opposed a trademark application for a Fortune 500 multinational consumer products company involving a competitor’s mark used to market toilet paper, which bore confusing similarities to the client’s mark. The Trademark Trial and Appeal Board found that the identical nature of the goods in question and the similarities between the two marks would likely result in confusion, and refused the competitor’s application.

IP Due Diligence in Business Acquisitions

Led the IP due diligence team in the successful acquisition of at least six animal care products businesses, resulting in the addition of hundreds of trademarks, patents, copyrights and domain names to the client's IP portfolio.

Outside General Counsel for Regional Food Delivery Service, Restaurant

Served as outside general counsel to a regional food delivery service, handling matters from the company’s inception on an ongoing basis, including start-up growth, funding, trademark and marketing needs.

Outside General Counsel for Regional Food Delivery Service, Restaurant

Served as outside general counsel to a regional food delivery service, handling matters from the company’s inception on an ongoing basis, including trademark and marketing needs. Provided counsel regarding the establishment of a brick-and-mortar restaurant location.

Trademark Counsel for Microbrewery

Assisted a regional microbrewery client with trademark, marketing and regulatory issues.

Resolution of Trademark Case for Health Care Client

Successfully resolved trademark lawsuit in favor of large health care conglomerate.