United States: Michigan
Managing global trademark portfolios on behalf of Fortune 500s is a sweet spot for Brooks Kushman: “The team has developed incredible international expertise and can identify and frame issues arising in foreign jurisdictions and provide valuable advice. This significantly enhances the services received through the exceptional and cost-effective foreign counsel that the firm has hand selected and developed relationships with.” Brooks Kushman also demonstrates great proficiency on the enforcement side of the practice and is ideally positioned as a one-stop shop for brands. Across the board, it gives “clear, accurate and actionable advice and sets the bar high in terms of quality and efficiency”. A deep bench is a key selling point and one reflected in the WTR 1000 rankings for 2021, which include seven of its top names with 150-plus years of professional trademark experience between them. More than 55 of those were chalked up by Robyn Lederman and Elizabeth Janda, two of three co-chairs of this rich and colourful practice. Best described as a global strategist – and an extremely well-connected one – Lederman thinks things through from a business perspective and is practical, fast and responsive. Another staunch international rights protector, Janda is “technically adept in all facets of trademark law and completely dedicated to providing superb customer service and cultivating positive relations with clients, colleagues and foreign counsel”. Recently becoming the third co-chair, Molly Crandall has a similar gift for prosecution and strategic counselling, as well as leadership, and is an authority on trademark licensing and transactional matters. Like Crandall, Chanille Carswell has also recently ascended to a leadership position and now serves as co-chair of the litigation and oppositions and cancellations practices. She is appreciated for her “smart tactics and well-developed commercial sense”. Several others have been critical to the practice’s growth in recent years – not least Hope Shovein, who has a talent for swiftly putting a hard stop on unauthorised trademark use online. She is a superb team player and safeguards and manages the rights of several famous alongside the likes of Lederman and Janda. The digital domain is also a happy hunting ground for Erica D Klein, whose insightful counsel on social media, privacy and other matters adds immense value to her wider brand development advice. Overseeing the life sciences group, meanwhile, Rebecca Cantor maintains vibrant patent and trademark practices and is the perfect fit for pharmaceutical companies.
When companies enlist Dickinson Wright for trademarks, they get the direct attention of the firm’s best IP minds; work isn’t pushed down automatically, but is done by hands-on senior attorneys who leverage their experience to maximise efficiency. The team delivers on its promise of a stellar service and maintains confidence by delivering results on time and on budget – and there are no surprises along the way either. Helping to maintain these high standards is trademark and copyright practice co-chair John C Nishi, based in Ann Arbor. Brilliant at risk management, he approaches assessments in a practical and realistic manner, and weighs the pros and cons of strategic decisions carefully. The firm has similarly talented professionals in multiple other offices, including in Austin, DC, Fort Lauderdale, Las Vegas and Phoenix, offering a strong national platform to rights holders.
Harness, Dickey & Pierce, PLC
Harness Dickey acts for a litany of household-name brands as part of a practice that cuts across all major industries and all aspects of trademark protection, enforcement and monetisation. Complex problem solving is the group’s metier, which has much to do with the leadership provided by Lisabeth Coakley, a seasoned professional whose storied career of almost 40 years has encompassed high-level roles both in-house and in private practice. She has a flair for enforcing difficult and oft-copied marks at a global level. Around her are many capable experts, including former USPTO trademark examiners, specialists in online brand protection and tenacious litigators. The majority are based in Michigan, though the firm also has a strong presence in Missouri.
“Honigman knows its clients’ portfolios and businesses inside out, doing away with the need for extensive briefings when you send instructions, so that no time is wasted. The team is highly efficient – it has an excellent docketing and billing department – and consistently delivers what you need on a quick turnaround.” The group is in its element handling large US and international portfolios and designing and executing brand development and commercialisation strategies that enable rights holders to get the best return on their IP investment. With skilled litigators and enforcers on deck, too, it can navigate all contentious matters with an unerring compass. Taking the reins of the trademark and copyright group, Julie Kretzschmer Reitz is a repository of trust for patrons, which are quick to send their recommendations: “Julie handles searches, filings, office actions and renewals in a way that makes the process of protecting trademarks seamless. She keeps you informed along the way so that you understand all your options and is quick to notify of any potential infringements. Overall, she does a fantastic job.” Board of directors member Anessa Owen Kramer likewise comes in for high praise: “Nobody is as quick, practical, smart or proactive as Anessa, whose advice can be relied on 100%.” Another versatile star of the practice is Angela Sujek, a “pragmatic and conscientious counsellor who knows exactly what to focus on and solves, rather than just identifies, problems. An excellent communicator, she works effectively with company people from entry level to the C-suite, and is a business partner who plays a huge part in her clients’ success.” Anchoring the litigation practice, meanwhile, is Leigh Taggart, a polished advocate who has proven his mettle in a wide array of IP disputes, not just those centred on trademarks. He is currently handling significant litigation on behalf of Mahindra & Mahindra against Fiat Chrysler involving the assertion of registered trademarks and unregistered trade dress with ITC and Eastern District of Michigan components, providing that while Honigman may be best known for its prosecution and associated work, it is more than capable of taking on the weightiest cases.
Other recommended expertsSpeak to Staci DeRegnaucourt’s clients and you’re guaranteed to hear good things: “Staci is always on top of matters and provides a flawless service. She gets difficult applications through the trademark office, delivering well-reasoned and persuasive arguments that really push things along. She is also transparent when it comes to costs and offers exceptional value.” She runs the show at agile firm Quinn IP Law. Michael Fishman manages large trademark portfolios with a deft touch, enhanced by his insights on litigation and licensing. The Fishman Stewart founding member works globally through an extended network of well-reputed foreign contacts. The respect enjoyed by Bodman’s IP group chair Susan Kornfield sees her frequently picked for expert witness, mediation and arbitration roles. For a most attentive service that won’t break the bank, Bridge Intellectual Property’s Michael Lisi is a discerning choice. He relieves clients of their burdens in a highly conscientious way and turns around all types of assignments – from clearance and prosecution to enforcement and licensing – with minimum fuss. Blue Filament is an enterprising woman-owned firm which dispenses personalised brand advice driven by business considerations. It was established by Mary Margaret O’Donnell, a diligent and passionate protector who takes on clients’ challenges as if they were her own. International sources cite James Scott as a “meticulous and highly specialised attorney with vast IP knowledge”. He has integrated cleverly designed – and self-designed – automation systems into the Warner Norcross + Judd practice which enable him to focus on what he does best: directing strategy. Flying the flag for Jones Day in Detroit, Emily Tait keeps a cool head when there is much at stake in IP litigation and transactional contexts. She keeps pace with fast-developing technology fields such as artificial intelligence, on which she is considered something of an authority.
- Lisabeth H Coakley - Harness, Dickey & Pierce, PLC
- Staci R DeRegnaucourt - Quinn IP Law
- Anessa Owen Kramer - Honigman
- Robyn Lederman - Brooks Kushman PC
- John C Nishi - Dickinson Wright
- Rebecca Cantor - Brooks Kushman PC
- Chanille Carswell - Brooks Kushman PC
- Molly Crandall - Brooks Kushman PC
- Michael D Fishman - Fishman Stewart PLLC
- Elizabeth Janda - Brooks Kushman PC
- Erica D Klein - Brooks Kushman PC
- Susan Kornfield - Bodman
- Julie Kretzschmer Reitz - Honigman
- Michael A Lisi - Bridge Intellectual Property Services PLLC
- Mary Margaret O’Donnell - Blue Filament Law PLLC
- James Scott - Warner Norcross + Judd LLP
- Hope Shovein - Brooks Kushman PC
- Angela Sujek - Honigman
- Leigh Taggart - Honigman
- Emily J Tait - Jones Day