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
Winthrop & Weinstine PA
Barnes & Thornburg LLP
Barnes & Thornburg never fails to impress with its swift, precise and business-minded IP support. Pooling their vast collective experience, its trademark stars devise far-sighted branding strategies to weather the market’s winds. Equally at home in the courtroom, the set has a striking enforcement record. Recently it has been providing 360-degree support to Wells Fargo and went out to bat for Piper Jaffray on a complex matter before the Trademark Trial and Appeal Board (TTAB). A trusted ally of both companies, litigator Felicia Boyd co-chairs the IP practice. “She’s fabulous – practically minded, quick witted and technically very strong. She knows how to keep clients happy.” The “forward-thinking” Kenneth Suzan has a prodigious command of trademark issues arising online; registration, licensing and enforcement are all in a day’s work for him.
Dorsey & Whitney LLP
“Dorsey & Whitney is a first-rate firm, which can assist with almost anything – regular brand reports as well as filing, portfolio management and litigation are handled efficiently and cost-effectively.” Internet matters are a particular strong suit for the set; it has wrestled scores of domain names back from cybersquatters and is an active agent of the Trademark Clearinghouse, supporting brand owners with generic top-level domain expansion. The man to go to for this is Jeffrey Cadwell. “He has fantastic attention to detail and recalls past correspondence with clients accurately, allowing him to apply a robust commercial perspective to the matter at hand. There’s no doubt that he’s one of the best in the United States for trademark matters.” Chairing the practice, Elizabeth Buckingham is another lawyer known for forging intimate, long-term relationships with clients. She learns how they like to tackle infringements – with a soft or hard touch – and then proposes solutions accordingly. “She’s a thoughtful lawyer who knows her stuff and presents information with tremendous clarity.” Cadwell and Buckingham are ably supported by the “stellar” Jamie Nafziger, who has the know-how to aid rights holders whose trademarks have been infringed in unusual ways such as website scraping, phishing or SMShing.
Faegre Baker Daniels
When it comes to registering new marks, Faegre Baker Daniels is nothing short of prolific. While burning especially brightly on the non-contentious side, its offering is exhaustive; the service menu runs all the way from clearance searches to enforcement. Lately, its advocates have been busy batting before the TTAB and the World Intellectual Property Organisation’s domain name tribunal. James Steffen is a brilliant all-rounder and the first choice for many rights holders. “He’s extremely well thought of in the market and popular among clients for his efficient and effective working style.” Target, Land O’Lakes and Life Time Fitness are among his loyal fans.
Fredrikson & Byron PA
Positioning itself as the firm where law and business meet, Fredrikson & Byron prides itself on its A-to-Z trademark service. Rather than providing legal analysis in a vacuum; it familiarises itself with its clients’ long-term plans – not to mention the state of their markets – and then serves up watertight commercially minded advice. Licensing work is a particular forte. Getting signatures on the bottom line of a rights transfer is no problem for the perspicacious John Pickerill. Comfortable in the online world, he is a compelling choice for social media issues. He recently banded together with teammate Lora Friedemann to help Arctic Cat reach a favourable settlement, which enabled the company to continue using its WILDCAT trademark after a suit brought by Sabertooth Motorcycles. Friedemann has over two decades of trial experience to her name. Federal court judges are repeatedly impressed by the ease and eloquence with which she builds her arguments around complex theoretical concepts.
Gray Plant Mooty
The longest-standing law firm in Minneapolis, Gray Plant Mooty is popular among local small and medium-sized enterprises whose products are distributed globally. Praised for its reliability, accessibility and laid-back ethos; with minimal fuss, its practitioners ensure that their clients’ marks are registered in every relevant country, and swiftly and efficiently extinguish infringement flames. Captaining the ship, Jennifer Debrow is “highly respected by peers for the professional way she handles matters”. Not one to shy away from David versus Goliath confrontations, she is currently preparing HealthPartners – a non-profit regional healthcare provider – for its battle with Walmart; this concerns HealthPartners’ new logo, which Walmart claims infringes its trademark rights. Working alongside her on this are enforcement heavyweight Dean Eyler and the multi-talented Ashley Bennett Ewald. When scrutinising court materials, Eyler lets nothing – no matter how minor – escape his gimlet eye. Ewald is a creative strategist with a varied playbook; whatever the problem, contentious or non-contentious, she will find a way forward. Transactions are stewarded by the business-savvy Lori Wiese-Parks. She is a streetwise negotiator who has what it takes to broker a deal with anyone.
Merchant & Gould
Merchant & Gould needs no introduction – it is the apex predator in the North Star state, offering 24-carat counsel on both sides of the contentious/non-contentious divide. A blend of technical excellence, commercial nous and close contact with clients has made it a magnet for rights holders from far and wide, many of which make a beeline for Scott Johnston. His desire to ensure things are as simple as possible for entrepreneurs with valuable assets led him to develop Brandscape – a tool that presents trademark information visually so that laypeople can easily learn the strength of their rights, and also their potential vulnerabilities. Christopher Schulte is another practitioner whose governing principle is practicality. He identifies the most important markets for his clients and then comes up with robust strategies for global rollouts, making sure that all clearance issues have been scaled. Andrew Ehard is a portfolio manager par excellence. Like Schulte, he approaches things internationally, chewing over which regions his clients should expand into and what monetisation opportunities this might elicit. With particular experience in issues pertaining to Asia, “Brent Routman is a terrific trademark attorney whom it’s always a challenge and a pleasure to face”.
Norton Rose Fulbright US LLP
Norton Rose Fulbright plies its trade at the vanguard of intellectual property. Lately it has been turning heads with its work on non-traditional marks; a highlight being the representation of Georgia-Pacific on strategic and enforcement matters involving the company’s gold colour mark for gypsum board. Clients appreciate the candour of the Norton Rose Fulbright advisers; they will always recommend if it would be counterproductive for a brand in the long term to pursue a particular approach. With blanket coverage of the United States and Canada – plus a web of offices in key cities the world over – the firm has the resources to adopt a panoramic perspective and maintain a brand’s health worldwide. Leading the national practice, Timothy Kenny has a wealth of experience under his belt; he has handled more than 100 federal IP cases and over 130 TTAB proceedings in his time. Filing oppositions, hunting down licensing opportunities and putting in eloquent pleadings are all in a day’s work for him.
Robins Kaplan LLP
If you have Robins Kaplan as counsel, you can sleep soundly in the knowledge that someone first class is fighting your corner. Its worldly wise IP practitioners are truly trial mavens, with experience in federal courts nationwide; they have a sixth sense for what will and will not stick in a bet-the-company case. With 20 years’ experience behind each of them, Michael Collyard and Christopher Larus would make it onto any trademark team sheet. Collyard’s far-ranging legal expertise covers corporate finance and restructuring law, making him a fantastic all-rounder; he considers brand protection from all angles. Considering innovation to be the lifeblood of the economy, Larus is a double-dyed IP litigator. When he is handed a brief, he monitors developments avidly from the outset and gives it his complete attention.
Winthrop & Weinstine PA
Winthrop & Weinstine puts clients first, with business-focused, on-point support at a flexible price. Recognising the importance of client service, its “extremely knowledgeable” members are always available for face-to-face meetings and respond to emails in a flash. The suite of services on offer at the firm runs from clearance searches through licensing all the way to federal court enforcement – and star striker Stephen Baird is comfortable handling the lot. He works around the clock for entities of all stripes, conveying complex legal concepts to them in clear, concise language. The International Trademark Association, Jazz Pharmaceuticals and Cargill are three of the significant entities he has represented.

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
Elizabeth C Buckingham - Dorsey & Whitney LLP
Jeffrey Cadwell - Dorsey & Whitney LLP
Andrew S Ehard - Merchant & Gould
Timothy M Kenny - Norton Rose Fulbright US LLP
Joel D Leviton - Stinson Leonard Street LLP
Felicia J Boyd - Barnes & Thornburg LLP
Jennifer C Debrow - Gray Plant Mooty
Molly T Eichten - Larkin Hoffman Daly & Lindgren Ltd
Ashley Bennett Ewald - Gray Plant Mooty
Patrick J Gallagher - Cozen O’Connor
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
Lori L Wiese-Parks - Gray Plant Mooty
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Issue 72