United States: Minnesota

Firms

1
Merchant & Gould
2
Barnes & Thornburg LLP
Dorsey & Whitney LLP
Faegre Baker Daniels
Fredrikson & Byron PA
Gray Plant Mooty
Norton Rose Fulbright US LLP
Robins Kaplan LLP
Barnes & Thornburg LLP
Barnes & Thornburg continues to make waves on the Midwest IP scene. The firm has been steadily building its trademark practice and is now a regular in some of the state’s biggest cases; it recently represented Cracker Barrel Old Country Store in an infringement, dilution and unfair competition suit against restaurant chain Jimmy’s Grille. On the non-contentious front, it has also been busy managing Wells Fargo & Company’s sprawling worldwide portfolio. Taking the lead on both matters, Felicia Boyd “is as comfortable providing general counsel with practical advice and strategies to inform their senior management as she is litigating high-stakes suits in federal court opposite very capable attorneys. Plus she is very responsive to the needs of the client, including the administrative matters of case budgeting”. “Her work is thorough, insightful, creative and, most importantly, timely.” Kenneth Suzan has been handling crucial prosecution and maintenance matters for Astral Brands. He has particular expertise in cutting-edge wearable technology and mobile applications.
Dorsey & Whitney LLP
With 18 offices strategically located from coast to coast as well as further afield in Canada, Europe and Asia complementing its Minneapolis HQ, Dorsey & Whitney is a go-to for multinationals with complex cross-border mandates. It has lately been strengthening its presence in Southeast Asia – an increasingly important region for US businesses. Operating adroitly on both sides of the contentious/non-contentious divide is Elizabeth Buckingham, a “very strong” practitioner whom clients regard “not only as outside counsel, but also as a business partner truly vested in the success of your organisation”. Prosecution ace Jeffrey Cadwell has also been turning heads: “He provides a superb service. He is customer focused and shows more attention to detail than any other attorney I know. He is happy to roll up his sleeves and really get stuck in.” “He is very responsive and always provides practical, cost-effective, well-thought-out advice. At the same time, his work is very thorough and detail oriented.” Cybersecurity, privacy and social media specialist Jamie Nafziger shines on trademark briefs involving cutting-edge online systems and apps: “She always does a fantastic job.”
Faegre Baker Daniels
Full-service heavyweight Faegre Baker Daniels has a pristine reputation in many fields, and trademarks is no exception. With professionals sited in 14 locations in the United States, the United Kingdom and China, it is a fine choice for multinationals seeking a holistic, joined-up service. “The firm has a very strong team in Minnesota and some extremely talented people. It’s a real player here.” James Steffen is perhaps the most renowned of these – “a really impressive practitioner who is always level-headed”. He has lately been representing Target, Land O’Lakes and Diversey in high-profile infringement cases.
Fredrikson & Byron PA
Recent highlights for the business-minded team at Fredrikson & Byron include assisting Buffalo Wild Wings with issues relating to clearance, management and enforcement; and acting for Arctic Cat – a North American manufacturer of snowmobiles and all-terrain vehicles – in a crucial infringement matter. Involved in the latter, Lora Friedemann is someone whom clients recommend without reservation for challenging trademark disputes: “She is very efficient and cost effective.” In a previous life, social media savant John Pickerill was an advertising executive at Carmichael Lynch Advertising; his abundant marketing insight makes him ideally placed to advise on branding issues.
Gray Plant Mooty
Celebrating its 150th anniversary in 2016, Minnesota’s oldest law firm Gray Plant Mooty now manages more than 8,200 active domestic and foreign trademark records worldwide. A full-service outfit with more than 180 attorneys on staff, it provides IP counsel that accounts for all wider legal implications. It has recently been assisting Sabertooth Motor Group in its hotly contested infringement spat with Arctic Cat. Leading on this is the redoubtable Dean Eyler, who chairs the IP litigation team. Also involved in the matter, Ashley Bennett Ewald effortlessly dispatches both contentious and non-contentious matters; she counts social media as a forte. “Fantastic attorney” Jennifer Debrow is “very responsive and seriously considers the business side of things. When clients are pushed against the wall with deadlines, she is able to help them out”. She has a nuanced grasp of the issues facing food companies, franchisors and non-governmental organisations.
Merchant & Gould
“Merchant & Gould is an excellent firm with a longstanding history in Minnesota. It has an extremely strong trademark prosecution practice – its members are among the top brand management folk in town. It is also well known for its international work.” The famed boutique has handled brand management issues for more than a century, and it shows. “Extremely practical and responsive”, Andrew Ehard comes into his own in knotty opposition and cancellation proceedings. During a previous stint at the US Patent and Trademark Office (USPTO), he processed more than 5,000 applications, giving him a sophisticated understanding of its inner workings. Teammate Brent Routman breaks into the WTR 1000 this year. A past president of the Minnesota State Bar Association, he is a “skilled negotiator and a very pleasant person to work with”. The internationally minded Christopher Schulte knows how to KO tricky clearance issues arising in connection with worldwide product roll-outs. On the enforcement side, Scott Johnston is a “fantastic litigator who fights hard but fair”. He has valuable ancillary know-how in cybersquatting, unfair competition and false advertising.
Norton Rose Fulbright US LLP
Norton Rose Fulbright boasts an “outstanding trademark and brand protection practice in Minnesota”. The Minneapolis team can also draw on support from the firm’s formidable international network where necessary, giving it the firepower to handle even the most complex of instructions from all comers in all corners of the globe. A recent highlight was its representation of Jarabes Veracruzanos – distributor of health-conscious beverage brand Delicia – in a crucial suit against a Mexican manufacturer. Having handled over 100 federal IP cases, Timothy Kenny is a “solid all-rounder. He is effective and well respected because he truly knows what he’s doing”. Prosecution whizz Patrick Gallagher comes recommended for his “cost sensitivity and excellent work. Clients feel as if they are on the same page as him. You can take his exact comments and forward them on because he writes in a completely clear way; there’s no need to remove legalese or dumb anything down”.
Robins Kaplan LLP
Businesses seeking a battle-hardened IP team that doesn’t pull its punches in the courtroom will find what they are looking for in Robins Kaplan. Established in 1938, the firm has six offices across the United States and is a key player on the Minnesota scene. It covers the full spectrum of trademark matters, with complementary expertise in antitrust and entertainment and media law an additional boon for clients. Having chalked up more than 20 years’ experience, the “extremely practical and efficient” Michael Collyard is “very capable at trying cases”. Enforcement heavyweight Christopher Larus lectures and publishes widely in the field and serves as an appointed arbitrator before the American Arbitration Association. “Winthrop & Weinstine is a local firm with a fantastic practice. It is becoming one of the leaders in the Twin cities.” Since its founding in 1979, it has capitalised on the state’s robust business environment to superb effect, continually winning new local clients and escorting them through the IP maze. Rainmaker Stephen Baird is “one of the true leaders. He takes a big-picture view and can be relied on to come up with a creative solution. You know that Stephen will deliver an expeditious and favourable outcome”. He has particular expertise in domain name issues and is a familiar face before the USPTO, where he has acted for clients including Fargo Baseball, Jazz Pharmaceuticals, Magnum Research and Varistar.

Individuals: enforcement and litigation

Stephen R Baird - Winthrop & Weinstine PA
Scott W Johnston - Merchant & Gould
Timothy M Kenny - Norton Rose Fulbright US LLP
Joel D Leviton - Stinson Leonard Street LLP
James R Steffen - Faegre Baker Daniels
Felicia J Boyd - Barnes & Thornburg LLP
Elizabeth C Buckingham - Dorsey & Whitney LLP
Michael A Collyard - Robins Kaplan LLP
Ashley Bennett Ewald - Gray Plant Mooty
Dean Eyler - Gray Plant Mooty
Lora Friedemann - Fredrikson & Byron PA
Christopher K Larus - Robins Kaplan LLP
Bruce H Little - Lindquist & Vennum LLP
Ruth Rivard - Stinson Leonard Street LLP
Brent Routman - Merchant & Gould

Individuals: prosecution and strategy

Stephen R Baird - Winthrop & Weinstine PA
Jeffrey Cadwell - Dorsey & Whitney LLP
Andrew Ehard - Merchant & Gould
Timothy M Kenny - Norton Rose Fulbright US LLP
Joel D Leviton - Stinson Leonard Street LLP
Felicia J Boyd - Barnes & Thornburg LLP
Elizabeth C Buckingham - Dorsey & Whitney LLP
Jennifer C Debrow - Gray Plant Mooty
Molly T Eichten - Larkin Hoffman
Ashley Bennett Ewald - Gray Plant Mooty
Patrick J Gallagher - Norton Rose Fulbright US LLP
Barbara Grahn - Fox Rothschild LLP
Scott W Johnston - Merchant & Gould
Jamie Nafziger - Dorsey & Whitney LLP
John Pickerill - Fredrikson & Byron PA
Brent Routman - Merchant & Gould
Sandra Epp Ryan - Hamre, Schumann, Mueller & Larson PC
Christopher J Schulte - Merchant & Gould
James R Steffen - Faegre Baker Daniels
Kenneth D Suzan - Barnes & Thornburg LLP
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Issue 68