United States: Ohio

Firms

H
Baker & Hostetler LLP
Barnes & Thornburg LLP
Calfee Halter & Griswold LLP
Dinsmore & Shohl LLP
Dreitler True LLC
Frost Brown Todd LLC
Jones Day
Thompson Hine LLP
Wood Herron & Evans LLP
Baker & Hostetler LLP

“Ohio is the hub of Baker & Hostetler’s operations, with the Cleveland bureau celebrating its 100th anniversary in 2016. Coordinating the IP, technology and media team here is Deborah Wilcox, who also leads the firm-wide trademark team.” The “incredibly well-respected” practitioner dispatches A-to-Z branding briefs with aplomb, but is especially well versed in the intricacies of online enforcement and e-commerce, assertively handling domain name disputes and taking down cybersquatters. “She has very sound business sense and is responsive to clients’ needs in a way that is both cost and opportunity effective.” John Mueller takes charge in Cincinnati; his practice runs the gamut of intellectual property, although catering to the needs of consumer goods companies is a forte.

Barnes & Thornburg LLP
Barnes & Thornburg’s extensive nationwide network is anchored firmly in the Midwest, enabling a wide breadth of IP expertise to be delivered at extremely competitive rates. The star player of its Columbus outpost is the “professional and ethical” Brian Downey, an adroit cradle-to-grave caretaker of marks. Transactional mandates, disputes, global portfolio management and online matters all fall within his purview. “Highly rated for both his skill and experience”, he is praised for his “extremely responsive and cost-effective” service. Clients also admire his sharp communication skills; he avoids legal jargon to explain multi-layered legal issues as clearly and succinctly as possible.
Calfee Halter & Griswold LLP
Calfee, Halter & Griswold runs a soup-to-nuts IP practice that makes the most of its corporate focus; cases are staffed leanly but effectively between partners and associates, and it can call in the commercial disputes group at any time to assist on thornier contentious briefs. Raymond Rundelli concentrates on soft intellectual property, while taking a holistic approach to IP-related corporate issues thanks to his background as a commercial litigator. With her robust patent and trademark practices, Georgia Yanchar offers similarly broad range; she is right at home handling non-contentious mandates, although IP litigation is her true calling: she has tried countless patent, trademark and copyright cases in numerous forums.
Dinsmore & Shohl LLP
As Cincinnati’s largest AmLaw 200 firm, Dinsmore & Shohl cuts an imposing figure on the Ohio market. Its IP department is filled with top-notch talent and, as testament to its commitment to expanding its IP capabilities, it established a separate branding and advertising practice in early 2016. The captain of this group is Karen Gaunt, who represents brand-rich powerhouse Procter & Gamble in complex trademark-related matters. Gaunt is a true one-woman band, deftly covering the trademark lifecycle from the initial inception of an idea to prosecution and enforcement. “She is an awfully strong advocate for clients, able to think issues through very thoroughly”; she is also “very skilled at handling mediations”. Lynda Roesch has chalked up three decades of prosecution experience, although her practice now focuses on contentious mandates – particularly at trial court and appellate levels – as well as oppositions and cancellations before the Trademark Trial and Appeal Board. She also advises Procter & Gamble, in addition to many other household names.
Dreitler True LLC
Dreitler True maintains a vigorous anti-counterfeiting practice that is particularly adept at taking down online infringers; it has scored numerous wins of late in an extensive anti-counterfeiting campaign for a major academic institution. The compact boutique packs a Big Law punch in the form of Jones Day alumni Joseph Dreitler and Mary True. With more than 50 years of experience between them, they are well armed to deal with virtually any trademark issue that may arise. Dreitler’s previous stints as in-house counsel for a slew of notable enterprises stand him in great stead with patrons, which appreciate his commercially focused approach. True is especially well attuned to the needs of small companies and start-ups, and knows how to keep clients out of unnecessary fights – but where necessary, she can deploy her innovative enforcement strategies to devastating effect.
Frost Brown Todd LLC
Frost Brown Todd is deeply rooted in the Buckeye State: the firm began life in Cincinnati, while its Columbus office houses a formidable trademark practice led by the “very practical and business-minded” Samantha Quimby. She has a masterful grasp of branding issues – spanning prosecution, licensing and enforcement – and boasts particular expertise in online disputes and anti-counterfeiting actions. A familiar face in the sporting world, she shrewdly advises Minor League Baseball, assisting with a variety of transactional matters and protecting its prominent Hometown Collection apparel mark. “With her striking knowledge of trademark law, she has built a very sophisticated practice at the firm.” “She runs an effective team that is both professional and timely, as she is willing to help at the drop of a hat.”
Jones Day
From its humble Cleveland origins – where it is headquartered – Jones Day has blossomed to become the largest law firm in the United States, with a vibrant trademark practice tending to the daily needs of numerous global heavyweights. Wendy’s is just one example – the outfit assumed responsibility for the fast food giant’s worldwide portfolio in 2015. Meredith Wilkes leads the charge on this brief, nimbly juggling difficult procurement and enforcement matters for its famed marks. Her practice is predominantly disputes based and she has fought valiantly in the courtroom for myriad prominent multinationals – including IBM, which she recently defended against multiple infringement claims. “She is very efficient in her work and looks for a way to resolve litigation as expeditiously as possible, without materially affecting a company’s freedom to operate.” Wilkes also serves as a policy adviser to the Internet Corporation for Assigned Names and Numbers, highlighting the versatility of her counsel. Her efforts are supported by consummate professional Timothy Fraelich, another highly adaptable practitioner who has registered, defended and enforced marquee brands across a wide range of industries, from banking and video games to consumer products and alcoholic beverages.
Thompson Hine LLP
Thompson Hine has all corners of Ohio well covered, with four offices in the state. Its broad trademark unit is feted for both its savvy procurement and muscular enforcement of brand rights. “Excellent attorney” Louis Ebling heads the team with years of experience under his belt. “He has seen every prosecution matter you can imagine” and is “particularly strong in both US and foreign trademark prosecution”. Moreover, he “understands business reality and gives real-world advice”. These skills have made him a talisman for other leading practitioners.
Wood Herron & Evans LLP
Dedicated exclusively to intellectual property for nearly 150 years, Wood Herron & Evans has accumulated unmatched insight in the field. It offers a healthy mix of patent and trademark know-how, a well-connected network of foreign counsel and competitive rates to boot. “An outstanding mentor” and “a real leader in the Midwest”, Kenneth Germaine has enjoyed a distinguished career helping brand owners to protect their crown-jewel assets. “He is very passionate about this area of the law and it’s a life calling for him. He really digs deep into the fundamentals.” Serving as an expert witness in numerous cases across the country, “he has played an active role in shaping trademark law”. Another widely acclaimed practitioner is Kathryn Smith; restaurants, franchises and aesthetics products all fall under her blanket of expertise. “Clients love her practical advice” and she is “a real pleasure to work with, whether as a partner or an opponent in adversarial matters”.

Individuals

James A Dimitrijevs - McDonald Hopkins Co LPA
Brian J Downey - Barnes & Thornburg LLP
Joseph R Dreitler - Dreitler True LLC
Kenneth B Germain - Wood Herron & Evans LLP
Samantha M Quimby - Frost Brown Todd LLC
Deborah A Wilcox - Baker & Hostetler LLP
Meredith M Wilkes - Jones Day
Louis K Ebling - Thompson Hine LLP
Timothy P Fraelich - Jones Day
Karen K Gaunt - Dinsmore & Shohl LLP
Michael Marrero - Ulmer & Berne LLP
John M Mueller - Baker & Hostetler LLP
Lynda E Roesch - Dinsmore & Shohl LLP
Raymond Rundelli - Calfee Halter & Griswold LLP
Kathryn E Smith - Wood Herron & Evans LLP
Mary R True - Dreitler True LLC
Georgia E Yanchar - Calfee Halter & Griswold LLP
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Issue 68