United States: California

Firms: enforcement and litigation

  • Cooley LLP
  • Fenwick & West LLP
  • Kilpatrick Townsend & Stockton LLP
  • Knobbe Martens
  • Irell & Manella LLP
  • Latham & Watkins LLP
  • O’Melveny & Myers LLP
  • Orrick, Herrington & Sutcliffe LLP
  • Pillsbury Winthrop Shaw Pittman LLP
  • Sheppard Mullin Richter & Hampton LLP
  • Sideman & Bancroft LLP 
  • Wilson Sonsini Goodrich & Rosati
  • Acuminis LLP
  • Crowell & Moring LLP
  • Donahue Fitzgerald LLP
  • Fish & Richardson
  • Greenberg Traurig LLP
  • Hanson Bridgett LLP
  • Haynes and Boone, LLP
  • Loeb & Loeb LLP
  • Morgan Lewis & Bockius LLP
  • Reed Smith LLP
  • Seyfarth Shaw LLP 
  • Tucker Ellis LLP 
  • Winston & Strawn LLP 

Firms: prosecution and strategy

  • Fenwick & West LLP
  • Kilpatrick Townsend & Stockton LLP
  • Knobbe Martens
  • Cooley LLP
  • Greenberg Traurig LLP
  • Orrick, Herrington & Sutcliffe LLP
  • Pillsbury Winthrop Shaw Pittman LLP
  • Seyfarth Shaw LLP 
  • Wilson Sonsini Goodrich & Rosati
  • Donahue Fitzgerald LLP
  • Fish & Richardson
  • Hanson Bridgett LLP
  • Haynes and Boone, LLP
  • IPLA
  • Loeb & Loeb LLP
  • McDermott Will & Emery
  • Morgan Lewis & Bockius LLP
  • O’Melveny & Myers LLP
  • Pranger Law PC
  • Reed Smith LLP
  • Sheppard Mullin Richter & Hampton LLP
  • Sideman & Bancroft LLP 
  • Winston & Strawn LLP 

Acuminis LLP

Nimble outfit Acuminis backs itself in trademark litigation – a core specialty – by representing rights holders on fixed, flat and contingency fee arrangements; its flexibility in this regard makes it incredibly results oriented and sets it apart from the competition. An ability to think outside the box also distinguishes the firm; aggressive litigator Christian Liedtke and his team do not follow the standard playbook but push at boundaries with confidence and poise. Liedtke is a master storyteller whose powers of persuasion are attested to by an exemplary track record including a win rate of over 83% at the TTAB. Recently, he has added astutely to the group, on-boarded some major new clients and overseen a significant expansion on the prosecution side working with marquee German companies. Crowning this run of achievements, his exciting boutique makes its debut in the WTR 1000 this year.

Cooley LLP

“Cooley is ideally situated to work with global companies on global trademark matters. Its people have a deep understanding of international trademark law and an exceptional network. They also have a fine appreciation for the economics of trademark protection.” Anne Peck and John Crittenden are engines of this “cutting-edge practice” and “exceptional branding attorneys”. Peck is a confidante to many top technology companies that look to her to develop brand strategy and build and develop ironclad trademark portfolios that set them apart in their markets. Seasoned litigator Crittenden is a “skilled and tough attorney who can be aggressive, but he’s a fair advocate who is never overbearing”. In a similar mould, fellow gold-tier Bobby Ghajar is an “appropriately tenacious lawyer and a strong fighter who knows trademark law cold”. Ghajar is especially brilliant at shifting momentum in a case and creating leverage, which is why he is often hired to take over from other firms when things are going south. Contributing vitally to both the litigation and prosecution practices, John Paul Oleksiuk continues to elevate his profile. One source comments: “Through constant communication, he has turned me into somewhat of an expert on the nuanced subject of trademark law. He has a deep understanding of the issues and can explain them patiently and delicately. The recommendations that he gives are backed up by extremely thorough research.”

Crowell & Moring LLP

Newly featured in the California rankings this year, Crowell & Moring maintains a dynamic and now solidified litigation practice on the West Coast that should not go unnoticed. Kent Goss and Valerie Goo form a tailor-made strike force for companies such as Textron, which they are representing in a nuanced case regarding the trademarking of product model numbers in the aviation industry. The two experienced trial lawyers combine intellectual and street smarts and are good writers, oral advocates and strategists that you can trust to go the distance and win in the courtroom. Service minded, too, they are responsive and keep clients informed as cases progress.

Donahue Fitzgerald LLP

Popular among foreign companies registering marks in the United States and with US companies filing worldwide, Donahue Fitzgerald has cracked the code of global trademark prosecution. Anne Hiaring Hocking brings coherence to large international portfolios and overlays her knowledge of international trademark law with a strategic approach. She makes it her mission to learn about her clients’ businesses and the industry landscape facing them and is especially knowledgeable about the alcoholic beverage (particularly wine) and apparel (particularly skateboarding and streetwear) sectors. The firm also litigates with dexterity; Hocking is excellent at the TTAB, as is Andrew MacKay, who has abundant experience in federal court and UDRP proceedings to boot. MacKay is effective at starting dialogues that lead to fruitful resolutions without anything having to be filed, standing out as a business-minded and cost-conscious litigator. Daniel Schacht anchors the top entertainment practice. A musician himself, he has a special affinity with musical groups and artists, Santana being one example – he oversees worldwide trademark prosecution and enforcement for all Santana trademarks.

Fenwick & West LLP

For fast-moving technology and life sciences companies, Fenwick & West is a match made in heaven; at a granular level, it understands the markets in which its clients operate and therefore dispenses precisely tailored advice every time. One of the most striking things about the firm is its propensity to innovate and reshape the practice of trademark law; its custom trademark extranet – just one of several self-developed tools enhancing efficiency and transparency – enables patrons to seamlessly manage and police their brands and to see the progress of their files and matters in real time. Credit must go to process innovation guru Karen Webb for giving the practice such strong technical underpinnings. Webb partners closely with brand owners – they feel like she is sitting in the cubicle next to them so they can pop over and benefit from her excellent strategic read on a matter instantaneously. Testament to the level of trust placed in her, and to the value of her counsel, she is fielding an ever-increasing volume of non-trademark-related questions. Other stars in the Fenwick & West constellation include Sally Abel and Connie Ellerbach. Abel, who founded the trademark group, is celebrated as “a leading intellectual in the field”. “There’s nothing she hasn’t seen or done in the practice – she’s a total rock star.” Abel “comes up with creative ideas to resolve difficult disputes”, which is also a strength of Connie Ellerbach, whose litigation background and understanding of human nature gives her an edge in complex prosecution and as a counsellor. Anchoring a sterling litigation practice, meanwhile, are Jedediah Wakefield, Eric Ball and Andrew Bridges. Wakefield is comfortable taking cases through jury trial and carries before him a reputation that creates opportunities to resolve cases out of court; opposing counsel know his depth of experience and ability to read juries. Ball handles a huge volume of cases but never gets bogged down. He is superb at giving robust, practical advice that nips problems in the bud. Bridges is a discerning choice for technology-intensive disputes and is a tactical fighter with a fine-tuned understanding of new branding models – and the risks associated therewith – prompted by technology developments.

Fish & Richardson

Hailed as one of the top patent and trademark firms in the United States – and a celebrated name internationally – Fish & Richardson draws on 140 years of experience to provide a top-notch service and percipient counsel to rights holders. Anchoring the brands practice on the West Coast is Silicon Valley-based Lisa Greenwald-Swire, who shines with equal brightness as protector, counsellor, deal maker and enforcer. She partners dynamically with fast-growing businesses such as Impossible Foods, on behalf of which she and her well-coordinated team of attorneys and paralegals have filed nearly 200 trademarks worldwide and resolved a slew of enforcement matters. “It is clear that Lisa knows trademark law extremely well. She is a strong advocate for her clients but also interested in getting to resolutions that will cost-effectively put any disputes to bed.”

Greenberg Traurig LLP

The trademark practice at Greenberg Traurig is one of the largest in the United States and very highly rated. Specialised in all aspects of brand protection, enforcement and monetisation, it is well integrated into the GT matrix, too. This is advantageous to those operating in a more complex world in which, for example, there is increasing overlap between brand protection and data privacy and cybersecurity – both areas in which the firm has considerable strength. GT’s Orange County, Los Angeles and Silicon Valley offices are home to some of the group’s biggest hitters. Huge respect is commanded by Susan Heller, who provides strong leadership as chair of the global trademark and brand management group. “Susan is an excellent professional and mentor who runs an extremely able team that has managed to get mass representation of very large brands with substantial trademark portfolios.” Recently, Heller has been involved in high-end real estate branding projects; she also continues to be a rock for Western Digital whose key brands she has brilliantly protected, optimised and commercialised. Ian Ballon serves as co-chair of the global IP and technology practice. His expertise revolves around the Internet, social media and mobile phones and he is at the cutting edge of developments in these areas; he is also a sophisticated innovator who is highly adept at using Big Data to develop litigation strategies. Jeff Joyner fills the outside general counsel role perfectly because he can do everything at a high level, from trademark clearance and registration to complex litigation and deal work. Another prototypical all-rounder is Candice Kim, a creative problem solver and strategist who, unlike many lawyers, does not let an ultimate need to win get in the way of doing what is best for her clients’ business.

Hanson Bridgett LLP

Bay Area stalwart Hanson Bridgett can support brand owners in many meaningful ways thanks to a well-cultivated and well-rounded trademarks service. The past 12 months have  been a busy and successful period for the team, with Susan O’Neill entering her 34th year of practice and continuing to flourish working alongside Garner Weng; Raffi Zerounian acquitting himself with distinction; and Noel Cook joining as a partner in January. O’Neill focuses on clearance, prosecution and early enforcement. With Weng, she does a tremendous job protecting iconic clients the Golden Gate Bridge Highway & Transportation District and Blue Cross Blue Shield Association – she excels at running projects leanly and efficiently and working within a budget. Co-chair of the IP practice Weng is creative, practical and resourceful and a discerning choice if an office action is an uphill climb or a dispute particularly nuanced. Zerounian is “both an excellent prosecution lawyer and litigator”. He recognises that in-house counsel are busier than ever and under increasing pressure, so he distils his advice down to simple and practical steps that advance business objectives. Similarly, Cook is a “pragmatic guy who demonstrates good common sense”. The former Owen, Wickersham & Erickson lawyer has hit the ground running here and is a team player who fits well within the Hanson Bridgett culture. He draws on a deep well of experience in all areas of trademark practice.

Haynes and Boone, LLP

A rare full-service firm with a broad and deep specialisation in trademarks – as well as adjacent areas such as advertising and marketing – Haynes and Boone enjoys a reputation for excellence among brand owners worldwide. A powerhouse in the Southwest, it also has prominent trademark lawyers stationed on the West and East Coasts, giving it a robust national platform. An excellent hybrid lawyer, Palo Alto-based Jennifer Lantz delivers crisp results whether securing trademark protections, enforcing rights or negotiating deals; she is someone to whom you can take a shoebox full of stuff and ask her to build something. In the past year her transactional practice has taken off as Haynes and Boone has expanded its corporate capabilities in California with new partner hires. Busy in litigation, too, she has been handling a multi-district case for Table de France against DBC Corporation. Taking the lead on this is Kenneth Parker, a full-time litigator with a knack for zeroing in on the matters that are important to or sensitive for clients thanks to his in-house background. His litigation tactics can be unconventional, but they are always effective.

IPLA

A new entrant in the WTR 1000 for 2020, IPLA is a “focused team of exceptional trademark experts who deliver fantastic results at extraordinary value”. The ensemble does a lot for emerging technology companies and is hugely savvy about protecting things that, when launched, can be instantly downloaded in 100 countries. Start-ups cannot afford the old-school ‘file it everywhere’ approach so John Kim and his cohort take a practical approach to deliver wide coverage on a shoestring. Managing partner Kim “delivers superior client service and outcomes” and “provides the strategic and tactical excellence of a BigLaw partner with the attentiveness and laser-focused specialisation of a lawyer at a top boutique”. “John is up at all hours delivering the insight and guidance needed for companies at all stages of growth to build out a robust trademark portfolio that operates as a real corporate asset. He understands budgeting, prioritisation and the proper sequencing of initiatives to provide context to company leaders outside of legal and articulate why investments are required in certain areas but less so in others.” What is more, he has “amassed an amazing network of foreign associates who provide quick and cost-efficient advice across multiple jurisdictions”. His clients include Zynga, to which he renders global prosecution assistance, and Snap Inc, whose various app, product and service brands he enforces.

Irell & Manella LLP

A “first-rate IP litigation firm” is the verdict on Irell & Manella. Although best known for its patent litigation practice, it lights up the trademark sphere, too, with “rock star” Jane Shay Wald leading the way. The trademark group chair is “just so creative” and a thought leader on all aspects of brand protection, maintenance and infringement.

Kilpatrick Townsend & Stockton LLP

The pace of the business world is quickening while the scope of companies’ products and services is broadening, making the task of navigating it all a daunting one; Kilpatrick Townsend & Stockton thrives in this complex environment and is a go-to not just for litigation but for risk analysis associated with new brand launches. “One of the very best attorneys” in this regard is complex litigation and strategic counselling ace Dennis Wilson: “His advice is spot-on when it comes to the letter and spirit of trademark law, but more importantly it is tailored to his clients’ business needs. His knowledge, judgement and timely counsel allow in-house lawyers to effectively advise business units as to opportunity and risk.” One source comments: “I simply couldn’t succeed in my job without Dennis and his team behind me.” Another heavy hitter and engine of the West Coast litigation practice is Larry McFarland, a “deeply strategic thinker who is excellent at client service” – and who is “doing much to promote diversity in his firm and the wider legal profession”. Kilpatrick’s California litigation bench is stacked with talent; Gregory Gilchrist and Ryan Bricker also make the WTR 1000 grade. San Francisco managing partner Gilchrist has ample trial and appellate experience encompassing multi-layered trademark and unfair competition disputes; his touch on global enforcement campaigns is especially deft. He and Bricker have honed their advocacy skills to a sharp point as a result of the range of IP and non-IP cases that they have tackled and won. The prosecution and transactional practice is also maintained by an all-star cast headlined by Anthony Malutta, Jennifer Arkowitz and Gwen Peterson. Setting brand strategy is the metier of Malutta, with online protection being a particular area of expertise. He co-leads the trademark and copyright team. Arkowitz is “absolutely stellar and can’t be recommended enough”. “Her ability to guide you through challenging, ground-breaking new issues is truly impressive, as is her global trademark IQ and business-mindedness.” She frequently links up with Wilson in the service of household-name companies. Peterson is the person to call for transactional work; she has seen and negotiated just about every IP-driven deal type that you can think of. In 2019, she won a Client Choice award for excellence in trademark practice in California.

Knobbe Martens

Rapidly overcoming any obstacles to deliver broad and consistent protection internationally, Knobbe Martens is an essential guide for successful trademark prosecution. The team has been hammering it this past year, handling a significantly increased clearance and filing workload while maintaining its customary top standards in terms of quality and efficiency. For example, instructions have been coming thick and fast from start-ups keen to optimise their intellectual property to attract investors and from key players in the emerging cannabis area. Forming an exceptionally strong core of prosecutors and strategists are Jonathan Hyman, Susan Natland, Jeffrey Van Hoosear, Diane Reed, Catherine Holland and Stacey Halpern. Hyman is masterful at giving clear and concise counsel that informs business decision making – one reason he is so popular among fast-growing companies such as beverage entity BAI brands, the worldwide protection and enforcement strategy for which he has been the architect. He is also a go-to for well-established brands such as Jelly Belly Candy Company. Energetic, personable and a phenomenal communicator, Natland keeps a lot of busy clients happy. She adds tremendous value for brand owners with her blend of trademark, advertising, unfair competition and data privacy expertise. Van Hoosear chairs the group and is an international trademark maven with his finger on the pulse of several industries – most notably, fashion and food and beverages. A go-to for Monster Energy and many other marquee brands, Reed is the set’s standout transactional lawyer as well as an experienced portfolio manager. Nothing is off limits in trademark practice for Holland. She has a strong following in cosmetics and nutraceuticals, with representative clients including Nutrishop and Face Haus whose rights she protects to the hilt in the United States and internationally. “Catherine is a very capable and persistent lawyer, and an excellent writer who is able to synthesise complex information well.” Halpern excels not only in worldwide portfolio managment but as a counsellor who can address all manner of enforcement concerns. Knobbe Martens boasts impressive depth in litigation, too, and fields experienced and specialised trademark trial lawyers, not general practitioners who happen to have handled one or two trademark-related cases. For a “sophisticated and thoughtful professional who understands how to get things done”, look to Michael Friedland, who has been on the cutting edge of enforcement for three decades. He and WTR 1000 newcomer Ali Razai recently acted for Delicato Vineyards against Treasury Wine Estates in a Northern District of California trademark infringement, false designation of origin and unfair competition suit; their aggressive approach to the matter laid the groundwork for a successful early settlement. Razai gets an excellent write up from clients: “Ali understands what the company objectives are and focuses his litigation strategies on attaining them. He is proactive in getting to know your business well before the first case arises, so there’s no need to educate him. He knows his way around the courtroom and understands the personalities of the neutrals well – his projections about how they will react to certain events and situations always prove to be correct.” Identifying clear paths forward early in a case and accurately assessing chances of success is something that Lynda Zadra-Symes also has the talent and experience for. What is more, she deserves great credit for her case and team management skills; she trains associates thoroughly and gives them responsibility while leveraging the firm’s paralegal corps and other support staff well. “All the Knobbe lawyers are incredibly intelligent and bring to the table innovative thoughts and ideas that help you move your business forward.”

Latham & Watkins LLP

Latham & Watkins is handling some of the largest and most important trademark litigations in the world, representing well-known brands on an integrated global basis. The team is trial-ready thanks to thorough training, deep courtroom experience and the exceptional leadership provided by star litigator and trial-best-practice guru Perry Viscounty. Examples of his high-end recent work include representing Tesla against Nikola Corporation, which is seeking $2 billion in damages in a trade dress and patent infringement suit, and handling no fewer than 11 trademark infringement cases and 20-plus oppositions for Entrepreneur Media. Also worth noting is how generously he gives his time and expertise in the form of pro bono work. Viscounty oversees prosecution and global portfolio management for high-profile clients including Craigslist. Jennifer Barry is the other person to keep on the radar; she is unbelievably hard-working, responsive and talented and is both reasonable and intensely competitive in disputes.

Loeb & Loeb LLP

As a result of extensive connectivity between its trademarks, advertising, marketing and data privacy practices, Loeb & Loeb is perfectly poised to give full-scope advice and holistic solutions for brand – not just trademark – protection. Many of the ensemble’s patrons, particularly in the media and entertainment space, are pushing at boundaries in terms of branding activity, but lawyers such as Melanie Howard – who chairs the IP protection group – have no problem keeping up. Howard is a leading expert on trademark matters as they overlap with technology issues. Business-minded and in-sync with clients in terms of their risk tolerance, she works toward ‘yes’ solutions very effectively. She debuts in the WTR 1000 this year in recognition of her excellent performance for the likes of Toyota, which she represents in connection with a wide array of branding, licensing and marketing matters. Continuing his reign in the gold tier, meanwhile, is David Grace, who acts for a colourful catalogue of clients including Arnold Schwarzenegger, Ruthless Records and, switching gears, financial institutions such as City National Bank. A “top lawyer who understands how trademarks work and how brands thrive globally”, Grace has a huge international following.

McDermott Will & Emery

McDermott Will & Emery has perfected the art of effective cross-office collaboration and puts together nimble teams well suited to any brand-related task. Zooming in on the Orange County and Los Angeles offices brings the vital contributions of Sarah Bro and Jorge Arciniega into focus. Bro debuts in the rankings this year as a result of the expertise that she has built up on prosecution and enforcement strategy in the financial technology and blockchain space; around her has coalesced an impressive cross-disciplinary focus group, including patent, privacy and other lawyers – she has also been gaining traction in the cannabis area. Arciniega shines on brand protection, global enforcement and IP commercialisation and stands out as an excellent all-rounder with a huge international following.

Morgan Lewis & Bockius LLP

Attuned to emerging industry trends – and ready with solutions – Morgan Lewis & Bockius is forward thinking about trademarks; by way of example, the set has been extremely  proactive in advising companies regarding government-imposed brand restrictions. Other manifestations of future mindedness include the technical sophistication of the practice (everything is carried out electronically and cross-office staffing is seamless so that the practice’s requirements are not replicated in every office) and group’s gender and other diversity. On all fronts – prosecution, counselling, licensing and litigation – the firm has been humming along nicely. Protecting brands for cutting-edge technology companies has been a theme of Carla Oakley’s recent practice. “Carla is a pragmatic and thoughtful guide on all matters from prosecution through to enforcement. Her team is cost-effective and maintains a top-notch network of contacts throughout the world.” Strategic advisory work and litigation has been a focus for Sharon Smith and Rochelle Alpert. Alongside Oakley, the trio are creative lawyers who think outside the box in terms of evidence that can be used to develop a case or a technical solution that can lead to a yes, rather than a no answer for clients.

O’Melveny & Myers LLP

An elite litigation firm, O’Melveny has been fighting the corner of prestigious brand owners in cutting-edge trademark cases for decades. The lawyers here – David Eberhart being the perfect example – have tried a lot of cases and know what it takes to win in court, but understand that litigating does not always achieve a client’s goals. Technology companies love to work with Eberhart because “he gets excellent results in large and complex trademark and copyright disputes”. An increasing emphasis on prosecution and counselling is an important thread in the side’s recent narrative. Scott Pink joined by way of DLA Piper just over a year ago and has taken on the mantle of leadership from Mark Miller on the non-contentious side. Capitalising on his general counsel experience, Pink dispenses practical and cost-effective advice directed towards the creation of IP value; those he represents know where they stand with regard to the law, but more importantly what to do to obtain their commercial goals. Miller continues to serve as a vital strategic guide and litigator for an army of clients. “Mark is a trusted adviser with deep legal and business knowledge. He helps you navigate choppy waters effectively and is brilliant at identifying and mitigating risks you might not even be thinking about.”

Orrick, Herrington & Sutcliffe LLP

A destination trademark practice, Orrick safeguards famous brands with strategic guile and global dexterity. A lawyer who “demonstrates excellent judgement” in this regard is Beth Goldman, an international portfolio management star with an A-list client following that includes Vera Wang Group, Salesforce.com and many more. She demonstrates “excellent, wholesome judgement” and has a gift for aligning her legal advice and action plans with companies’ business objectives. Deserving of a shout out is Goldman’s terrific senior associate Betsy Lee, one of the market’s brightest rising stars. When it comes to significant trademark litigation, Orrick is “fully prepared for everything at all times”. The lawyers at Orrick are “superb writers with outstanding oral advocacy skills” who “see nuances that others would miss”. Annette Hurst is “a titan in her field – a formidable litigator with one of the sharpest strategic minds you’ll ever encounter”. “She is an intelligent and fierce advocate for her clients.” Straddling the contentious/non-contentious divide, Diana Rutowski is highly versatile. As a lead litigator, she is known to be extremely creative in the plays she draws up, while as a rights manager, “she provides sage counsel that enables you to get on with your business while avoiding inefficient legal spend. Her insights regarding how and where to pursue certain matters is critically important from a cost and commercial perspective.”

Pillsbury Winthrop Shaw Pittman LLP

Pillsbury Winthrop Shaw Pittman receives enhanced coverage in the WTR 1000 California section for 2020 with promotions on the prosecution and strategy and litigation and enforcement tables and several lawyers debuting in the rankings. In the words of one company: “The Pillsbury team is clearly a world-class IP group with extensive experience in complex IP litigation and strategic counselling.” The new inclusions are Carolyn Toto, Patricia Cotton and Kenneth Keller, all of whom garner glowing notices from the market. Los Angeles partner and internet and social media team co-head Toto acts for technology leaders in all IP areas and across the contentious/non-contentious divide. In litigation, a significant focus for her, she “affords the highest level of representation and provides key insights on strategy”. “Carolyn is detail oriented and maintains a mastery of all aspects of her cases.” Cotton – a special counsel in the Silicon Valley office with an emphasis on prosecution and enforcement and a deft touch on oppositions, cancellations and domain name disputes – “does an excellent job coordinating protection efforts internationally. Her advice is practical and business-oriented and advances the appropriate scope and extent of protection cost-effectively.” Keller is a senior litigator in the group who often links up with Vijay Toke to land a strong one-two punch. “Ken and Vijay are among the most proficient and professional lawyers anywhere. They bring to all complex cases a rare combination of extensive experience, technical excellence, creativity and organisational structure. Any client would be lucky to have them on their legal team.” An invaluable resource for everyone in the group and someone who is great to bounce obscure and nuanced trademark issues off is Richard Kirkpatrick. He brings strong leadership to the group and is in charge of the San Francisco IP section. He’s a go-to for a number of illustrious brands looking to tap a wise strategic mind.

Pranger Law PC

Debuting in the WTR 1000 firm rankings this year, Pranger Law stands out as a female-founded and led boutique, with a vibrant and highly specialised trademark and copyright practice that clients do not just instruct but from which they take inspiration. This year was an exciting one for the outfit; it celebrated its 15th anniversary in style with a big party at INTA and grew its litigation practice significantly with new hire Scott Lonardo joining the fold. Former Orrick man Lonardo is an experienced litigator with an easy-going demeanour; do not be fooled, though – he has impeccable writing skills and gets to the point succinctly and elegantly in his oral advocacy, which makes him a worthy adversary for anyone. Meanwhile, the prosecution and counselling practice continues to hum under the direction of Holly Pranger, who is “the perfect partner for start-ups and smaller enterprises”; many of these have reached extremely high valuations as a result of her counsel, becoming prime targets for investors. She is 18 years into her law career but her rates are more like those of a third-year associate at a big firm; bringing her on board is a no-brainer for those with a desire for quality and value. With the group for five years, Gail Abbas has proved to be immensely valuable as a deep domain subject matter expert when it comes to global prosecution and a thorough and complete lawyer and relationship person.

Reed Smith LLP

Reed Smith’s trademark lawyers are “thoughtful problem solvers” with well-rounded brands practices and an innovative streak when it comes to process and workflow streamlining and enhancement. Notable names on the West Coast include Katherine Basile, Jason Garcia and Robert Phillips. Basile’s in-house experience has instilled in her a practical approach to brand protection. She thinks globally as she navigates her clients into strong competitive positions in their markets. Garcia has valuable experience outside private practice and was an examiner at the USPTO; he understands what works and what does not at the office and is a reliable prosecution guide for Fortune 500s. Litigation is the metier of Phillips, who has abundant experience in patent, trademark, trade dress, copyright and unfair competition cases.

Seyfarth Shaw LLP 

In terms of attracting interesting and complex trademark work, Seyfarth’s Los Angeles lawyers Joan Kupersmith Larkin and Kenneth L Wilton have been drinking from a firehose recently. They benefit from the assistance of dedicated project managers who focus on onboarding new clients efficiently, enabling them to get straight down to business doing what they do best – setting brand strategy and, in Larkin’s case, managing prosecution and in Wilton’s, litigating challenging disputes. Larkin has lived and breathed trademarks her entire career and is Seyfarth’s most senior subject-matter expert. Her international knowledge is second to none. Wilton appreciates the business value of trademark assets keenly and has a knack for reaching commercially satisfying resolutions in the quickest and most efficient way possible. Alongside Jay Myers in Atlanta, he advises Red Bull on enforcement matters including numerous oppositions. “Joan and Ken stand out as being true advocates for their clients. They are aggressive and draw on a great depth of trademark and IP knowledge.”

Sheppard Mullin Richter & Hampton LLP

Sheppard Mullin offers a comprehensive suite of trademark services but is best known as a force to be reckoned with in litigation. The top trial lawyers here are not fazed by anything – whether it is a gold-ranked opponent or a complex fact pattern, they have gone the distance and won many times. Judged by other leading lawyers to be an “awesome litigator”, Carlo Van den Bosch is “extremely steady and even-keeled” and “a class act who practises with great integrity”. Similarly, the fabulous Jill Pietrini is an “extremely tenacious lawyer who is not afraid to take a case to trial”. “She’s a zealous advocate for her clients, but very fair, transparent and reasonable, too.” Upholding equally high standards on the prosecution side is Lisa Martens, an insightful global brand strategist with deep sector knowledge in food and beverages, healthcare and life sciences, technology and apparel.

Sideman & Bancroft LLP 

When it comes to the criminal enforcement of trademark rights, Sideman & Bancroft is in a league of its own. The team, which includes former federal prosecutors, has a unique level of insight into the criminal justice system and a superb track record successfully prosecuting counterfeiters. Star of the show is Jeffrey Hallam, a lawyer with “exceptional attention to detail, a good business sense and an excellent law enforcement network”. Industry leaders for which he fights the corner include Samsung, on whose behalf he supports US Customs and Border Protection with respect to counterfeit seizures and for which he oversees online enforcement campaigns. No one-trick pony, Sideman & Bancroft also thrives in more traditional trademark litigation, which is Ian Boyd’s domain, and in brand protection and portfolio management, which is the preserve of Kelly McCarthy and Béatrice Martinet. Boyd has a thriving TTAB practice and comes up trumps there for prestigious companies such as Intel. McCarthy, who co-leads the practice with Hallam, is adept at safeguarding consumer-facing brands especially in the personal care and beauty sector; Kat Von D Beauty is one of her global portfolio clients. “Kelly understands business and brand strategy and provides cost-effective and valuable counsel across the board, from search report analysis to monitoring and dispute resolution.” Some of the best feedback is reserved for Martinet, an “efficient, client-focused professional who gives dependable legal guidance alongside practical business advice”. “Béatrice has exceptional interpersonal skills and grace and delivers a top-quality work product even when required to handle a high volume of instructions necessitating a double-quick turnaround time.”

Tucker Ellis LLP 

Newly minted in the WTR 1000 for 2020, Tucker Ellis is a growing force in the brands area. Where trademark and internet law intersect is a sweet spot for the ensemble and star turn David Steele, an online enforcement mastermind in hot demand among household-name companies including Facebook, Instagram and 7-Eleven. Knowing that what worked last year to find the bad guys will not work this year, former computer engineer Steele keeps the firm on the cutting edge of development in terms of technical brand enforcement tools. He and veteran litigator Howard Kroll regularly link up. Tucker Ellis has made a focused effort to grow its prosecution practice recently and met with success; it has built out an excellent docketing system and is handling an increasing volume of files smoothly and efficiently.

Wilson Sonsini Goodrich & Rosati

Synonymous with excellence in the technology sector, Wilson Sonsini is extremely well connected with innovators around the world, affording its trademark lawyers the opportunity to work with some of the most dynamic brands out there. Thriving in this environment for over two decades is forward-thinking lawyer John Slafsky, who is the complete package as a strategist, problem solver and litigator. “John focuses on handling his cases efficiently and practically. His advice is very savvy – for example, his predictions about outcomes in TTAB proceedings and court cases are incredibly accurate.”

Winston & Strawn LLP 

Winston & Strawn manages the US and international trademark portfolios of dozens of companies and does so efficiently, flexibly and cost sensitively; as a value add, the team provides high-level, creative and nuanced counsel on global brand strategy. Taking the lead on the non-contentious and transactional front is San Francisco and Silicon Valley-based Laura Franco. “Laura is a trusted adviser whose analyses are thorough and practical. She is extremely responsive and client oriented, and very focused on the return on investments of trademark applications.” Winston is, however, best known as a feared litigation outfit – a reputation, in the trademark world, that has a lot to do with the work of Jennifer Golvineaux. “Jennifer digs into her cases and develops detailed knowledge of them before crystallising their essence so as to teach a jury exactly what they need to know.” She engenders unshakeable trust by “looking out for her clients’ interests and being unafraid to speak to truth to power and say what is necessary to say but not always easy to hear”.

Other recommended experts

Tsan Abrahamson demonstrates thought leadership in the areas of advertising, marketing, promotions and social media. The Cobalt attorney also has rich prosecution experience. “Britt Anderson gives business-friendly and practical advice across the trademark lifecycle. He is always available and can pick up important projects with very tight deadlines and deliver results. He is very proactive, too, and is great at sending along information and notifications that are interesting and important.” He can be found at Perkins Coie’s Palo Alto office. Running her own boutique, Barrett IP Law, Carole Barrett is a trademark celebrity who stands out for her “high-level global portfolio management expertise”; she offers exceptional value for money. Commended as a “supremely effective and practical litigator”, Marcy Bergman flies the flag for Bryan Cave Leighton Paisner in San Francisco and brings impeccable retail sector knowledge to the practice. Brilliant at counselling clients with limited resources on how to get the most bang for their buck when it comes to trademark protection, Lisa Caldwell is hands-on with her matters and cases; her rates are significantly lower than a lot of California-based lawyers because she practices at an Oregon-based firm, Klarquist Sparkman. Michelle Cooke has worked hard and succeeded in expanding the trademark practice at Manatt Phelps & Phillips, gaining momentum as a result of her willingness to talk lucidly with clients on a commercial level, as well as her excellence at risk management and at identifying brand expansion opportunities. In short order, Daniel DeCarlo figures out what clients are looking to accomplish and then sets to task, whether it is getting them out of a lawsuit as quickly as possible or digging in and drawing lines in the sand. The experienced advocate fits in well at muscular litigation shop Lewis Brisbois Bisgaard & Smith. “Stellar litigator Andrew Deutsch speaks calmly, directly and succinctly and is at his best when engaging with the most sophisticated judges. His appellate advocacy is superb, too.” He is a member of the DLA Piper trademark, copyright and media group run by Gina Durham, who is also highly rated. “Gina pierces through complex issues and explains them clearly” and is adept at both litigation and brand protection. Scott Gerien of Dickenson Peatman & Fogarty is “second to none in terms of wine law expertise”. “He resolves matters with a practical business head on his shoulders.” The founding partner of San Francisco firm Harvey & Company, Peter Harvey is a trademark, trade dress, trade secret and copyright law guru whose name is known to all. As a litigator, he has won many significant cases laying down paths and setting standards for others to follow. Venable’s Susan Hollander understands the ingredients that go into making a strong brand – and she knows what tools to use and levers pull to maintain strong and distinct identities for her clients. She manages portfolios deftly and litigates with poise. Anthony Keats is a guiding light for those in the consumer products, luxury goods and apparel and entertainment spheres; he has lived and breathed trademarks in these areas for decades. The KeatsGatien lawyer is equally adept in counselling and litigation modes. Former USPTO examiner Lori Kozak is “steeped in prosecution practice and knows it cold”. She co-chairs the trademark group at Fox Rothschild. “Irene Lee is well rounded and one of the rare practitioners who is truly good at both trademark prosecution and litigation.” She is a key contact at Russ August & Kabat in Los Angeles. Individuals he has represented cannot say enough good things about David Martinez over at Robins Kaplan: “He is an outstanding attorney and genuine person who is a true pleasure to work with. If you want someone to go on the offensive against a competitor with an aggressive campaign, he’s a great choice; his approach is deeply strategic and he is an outstanding negotiator who demonstrates great creativity in navigating complex challenges.” “Robins Kaplan as a firm is fantastic – it is a tightly run ship with first-class talent up and down.” Anne Naffziger is the West Coast standard bearer for Chicago boutique Leydig, Voit & Mayer. “She’s a thought leader on emerging issues in intellectual property and very active in academic spaces and professional organisations.” Her practice encompasses all aspects of trademark protection and enforcement. Nobody knows trademark law as well as Morrison & Foerster of counsel Thomas McCarthy, the author of McCarthy on Trademarks and Unfair Competition, a famous treatise cited in thousands of judicial opinions. He is also a senior law professor at the University of San Francisco. Lewis Roca Rothgerber Christie’s Gary Nelson has a talent for seamlessly managing large international portfolios and getting the best out of his far-reaching network of foreign associates. Other strings to his bow include expertise in domain name dispute resolution and extensive enforcement experience. His colleague Michael McCue is similarly versatile: he serves as IP counsel to publicly traded company Restoration Hardware, whose trademark portfolio he has tripled, and has litigated cases in the triple digits. Companies in the video games sector make a beeline to Karin Pagnanelli when representation is required in complex trademark and copyright suits; she knows the industry and is a highly experienced litigator who has pushed the law on many occasions to pull out impressive wins that alter not just the videogame but the entertainment landscape. She operates out of Mitchell Silberberg & Knupp. “Staci Jennifer Riordan’s ability as an attorney and as a business thinker makes her extraordinarily versatile. Absolutely tireless, she devotes time and energy making the right things happen for her clients.” The Nixon Peabody global enforcement and takedown maestro neatly adapts her approach depending on the target and makes effective use of all available tools. Robert Weikert is another senior litigation and disputes figure at Nixon Peabody. He does not stick to the standard litigation playbook but aligns strategies carefully with business ends in mind. His prophylactic advice adds a lot of value, helping clients stay well out of trouble. Rodenbaugh Law’s Mike Rodenbaugh is a top domain names specialist but flexes broad expertise on all aspects of trademark and copyright law. Lawrence Siskind of Coblentz Patch Duffy & Bass wins plaudits as a trademark luminary and has been one of San Francisco’s top lawyers for decades. As a litigator he has set many benchmarks; as a counsellor he has devised many innovative protection schemes. Duane Morris’s Mark Steiner is a rangy trademark professional who is comfortable in trial, counselling, procurement and transactional settings. He recently represented PodShare, a unique membership-based co-living business against BD Hotels, the owner of POD HOTELS, which sought to prevent his client using any derivative of POD in its business. He secured a dismissal with prejudice of all asserted claims and had one of BD’s formative marks withdrawn from publication. “Diana Torres instinctively recognises weaknesses in a case. Without over-lawyering things, she gets the best results for her clients. When you work with or against her, you can instantly see the quality.” She bases herself in Kirkland & Ellis’s Los Angeles office. Arnold & Porter’s Rhonda Trotter “knows trademark law like the back of her hand and is an eminently capable trial lawyer who knows her way around the courtroom”. “She is organised and highly effective as a cross-examiner – and there is always a point to her advocacy.” Steven Marc Weinberg runs a diverse and interesting trademark practice at Holmes Weinberg. He first chairs litigations, represents celebrities in branding deals, advises on social media matters and guides clients on brand strategy and more besides. Alonzo Wickers is a go-to for entertainment, media and technology clients. The Davis Wright Tremaine LA-based partner has added to his excellent litigation track record recently with successes for Have Glove Productions against The Sporting Times regarding claims of unlawful trademark use in a biopic about baseball star Bill Spaceman Lee and for Pilgrim Media Group and A+E Television in a trademark and copyright infringement suit against Reflex Media. Philip Zender captains the US trademark practice at Squire Patton Boggs. He links well with colleagues in the United Kingdom and China for key international names such as footwear brand Clarks, whose patent and trademark portfolio the firm handles.

Individuals: enforcement and litigation

  • Andrew P Bridges - Fenwick & West LLP
  • John W Crittenden - Cooley LLP
  • Bobby Ghajar - Cooley LLP
  • Peter Harvey - Harvey & Company
  • Robert N Phillips - Reed Smith LLP
  • Jill M Pietrini - Sheppard Mullin Richter & Hampton LLP
  • Perry J Viscounty - Latham & Watkins LLP
  • Jedediah Wakefield - Fenwick & West LLP
  • Jane Shay Wald - Irell & Manella LLP
  • Karen Webb - Fenwick & West LLP
  • Eric Ball - Fenwick & West LLP
  • Ian K Boyd - Sideman & Bancroft LLP
  • Andrew L Deutsch - DLA Piper
  • Gina L Durham - DLA Piper
  • Michael Friedland - Knobbe Martens
  • Gregory S Gilchrist - Kilpatrick Townsend & Stockton LLP
  • Jennifer A Golinveaux - Winston & Strawn LLP
  • Valerie M Goo - Crowell & Moring LLP
  • Kent B Goss - Crowell & Moring LLP
  • Jeffrey Hallam - Sideman & Bancroft LLP
  • Anthony M Keats - KeatsGatien LLP
  • Christian W Liedtke - Acuminis LLP
  • David Martinez - Robins Kaplan LLP
  • Michael J McCue - Lewis Roca Rothgerber Christie LLP
  • Larry W McFarland - Kilpatrick Townsend & Stockton LLP
  • Mark Miller - O’Melveny & Myers LLP
  • Susan M Natland - Knobbe Martens
  • Anne H Peck - Cooley LLP
  • John L Slafsky - Wilson Sonsini Goodrich & Rosati
  • David Steele - Tucker Ellis LLP
  • Vijay K Toke - Pillsbury Winthrop Shaw Pittman LLP
  • Diana Torres - Kirkland & Ellis LLP
  • Rhonda R Trotter - Arnold & Porter
  • Carlo F Van den Bosch - Sheppard Mullin Richter & Hampton LLP
  • Steven Marc Weinberg - Holmes Weinberg PC
  • Dennis L Wilson - Kilpatrick Townsend & Stockton LLP
  • Lynda J Zadra-Symes - Knobbe Martens
  • Raffi V Zerounian - Hanson Bridgett LLP
  • Rochelle D Alpert - Morgan Lewis & Bockius LLP
  • Britt Anderson - Perkins Coie LLP
  • Ian C Ballon - Greenberg Traurig LLP
  • Jennifer Barry - Latham & Watkins LLP
  • Marcy J Bergman - Bryan Cave Leighton Paisner LLP
  • Ryan Bricker - Kilpatrick Townsend & Stockton LLP
  • Noel M Cook - Hanson Bridgett LLP
  • Michelle A Cooke - Manatt Phelps & Phillips LLP
  • Daniel C DeCarlo - Lewis Brisbois Bisgaard & Smith LLP
  • David R Eberhart - O’Melveny & Myers LLP
  • Laura Franco - Winston & Strawn LLP
  • David W Grace - Loeb & Loeb LLP
  • Lisa Greenwald-Swire - Fish & Richardson
  • Susan E Hollander - Venable LLP
  • Annette L Hurst - Orrick, Herrington & Sutcliffe LLP
  • Jeff K Joyner - Greenberg Traurig LLP
  • Kenneth Keller - Pillsbury Winthrop Shaw Pittman LLP
  • Howard Kroll - Tucker Ellis LLP
  • Joan Kupersmith Larkin - Seyfarth Shaw LLP 
  • Scott Lonardo - Pranger Law PC
  • Andrew MacKay - Donahue Fitzgerald LLP
  • Lisa M Martens - Sheppard Mullin Richter & Hampton LLP
  • Carla B Oakley - Morgan Lewis & Bockius LLP
  • John Paul Oleksiuk - Cooley LLP
  • Karin Pagnanelli - Mitchell Silberberg & Knupp LLP
  • Kenneth G Parker - Haynes and Boone, LLP
  • Ali Razai - Knobbe Martens
  • Staci Jennifer Riordan - Nixon Peabody LLP
  • Mike Rodenbaugh - Rodenbaugh Law
  • Diana Rutowski - Orrick, Herrington & Sutcliffe LLP
  • Daniel Schacht - Donahue Fitzgerald LLP
  • Sharon Smith - Morgan Lewis & Bockius LLP
  • Mark A Steiner - Duane Morris LLP
  • Carolyn S Toto - Pillsbury Winthrop Shaw Pittman LLP
  • Robert A Weikert - Nixon Peabody LLP
  • Alonzo Wickers - Davis Wright Tremaine LLP
  • Kenneth L Wilton - Seyfarth Shaw LLP 

Individuals: prosecution and strategy

  • Sally M Abel - Fenwick & West LLP
  • Jorge Arciniega - McDermott Will & Emery
  • Katherine M Basile - Reed Smith LLP
  • Connie L Ellerbach - Fenwick & West LLP
  • Beth M Goldman - Orrick, Herrington & Sutcliffe LLP
  • David W Grace - Loeb & Loeb LLP
  • Susan L Heller - Greenberg Traurig LLP
  • John L Slafsky - Wilson Sonsini Goodrich & Rosati
  • Jane Shay Wald - Irell & Manella LLP
  • Karen Webb - Fenwick & West LLP
  • Jennifer D Arkowitz - Kilpatrick Townsend & Stockton LLP
  • Carole F Barrett - Barrett IP Law
  • Ian K Boyd - Sideman & Bancroft LLP
  • Michelle A Cooke - Manatt Phelps & Phillips LLP
  • John W Crittenden - Cooley LLP
  • Jason E Garcia - Reed Smith LLP
  • J Scott Gerien - Dickenson Peatman & Fogarty
  • Bobby Ghajar - Cooley LLP
  • Jennifer A Golinveaux - Winston & Strawn LLP
  • Lisa Greenwald-Swire - Fish & Richardson
  • Anne Hiaring Hocking - Donahue Fitzgerald LLP
  • Jonathan A Hyman - Knobbe Martens
  • Richard L Kirkpatrick - Pillsbury Winthrop Shaw Pittman LLP
  • Joan Kupersmith Larkin - Seyfarth Shaw LLP 
  • Anthony J Malutta - Kilpatrick Townsend & Stockton LLP
  • Susan M Natland - Knobbe Martens
  • Anne H Peck - Cooley LLP
  • Scott Pink - O’Melveny & Myers LLP
  • Holly Pranger - Pranger Law PC
  • Diane Reed - Knobbe Martens
  • Jeffrey Van Hoosear - Knobbe Martens
  • Steven Marc Weinberg - Holmes Weinberg PC
  • Gail Abbas - Pranger Law PC
  • Tsan Abrahamson - Cobalt LLP
  • Rochelle D Alpert - Morgan Lewis & Bockius LLP
  • Sarah Bro - McDermott Will & Emery
  • Lisa Caldwell - Klarquist Sparkman LLP
  • Noel M Cook - Hanson Bridgett LLP
  • Patricia Cotton - Pillsbury Winthrop Shaw Pittman LLP
  • Laura Franco - Winston & Strawn LLP
  • Stacey R Halpern - Knobbe Martens
  • Catherine J Holland - Knobbe Martens
  • Melanie J Howard - Loeb & Loeb LLP
  • Anthony M Keats - KeatsGatien LLP
  • Candice E Kim - Greenberg Traurig LLP
  • John Kim - IPLA
  • Lori S Kozak - Fox Rothschild LLP
  • Jennifer Lantz - Haynes and Boone, LLP
  • Irene Y Lee - Russ August & Kabat
  • Béatrice Martinet - Sideman & Bancroft LLP
  • David Martinez - Robins Kaplan LLP
  • Kelly P McCarthy - Sideman & Bancroft LLP
  • Anne Naffziger - Leydig, Voit & Mayer, Ltd
  • Gary Nelson - Lewis Roca Rothgerber Christie LLP
  • Susan G O'Neill - Hanson Bridgett LLP
  • Carla B Oakley - Morgan Lewis & Bockius LLP
  • John Paul Oleksiuk - Cooley LLP
  • R Gwen Peterson - Kilpatrick Townsend & Stockton LLP
  • Staci Jennifer Riordan - Nixon Peabody LLP
  • Daniel Schacht - Donahue Fitzgerald LLP
  • Mark A Steiner - Duane Morris LLP
  • Carlo F Van den Bosch - Sheppard Mullin Richter & Hampton LLP
  • Garner K Weng - Hanson Bridgett LLP
  • Philip R Zender - Squire Patton Boggs
  • Raffi V Zerounian - Hanson Bridgett LLP

Luminaries

  • J Thomas McCarthy - Morrison & Foerster LLP
  • Lawrence J Siskind - Coblentz Patch Duffy & Bass LLP