United States: Minnesota

Firms

  • Fredrikson & Byron PA
  • Merchant & Gould
  • Dorsey & Whitney LLP
  • Faegre Baker Daniels LLP
  • Greenberg Traurig LLP
  • Lathrop GPM
  • Norton Rose Fulbright US LLP
  • Robins Kaplan LLP
  • Barnes & Thornburg LLP
  • Stinson LLP

Barnes & Thornburg LLP

Barnes & Thornburg’s trademark group provides all the counselling, portfolio management, policing, enforcement and litigation services that a dynamic brand could want. Its IP and brands offering is only getting more compelling, thanks to recent recruitment efforts that have brought high-calibre individuals such Patrick Gallagher on board. “Patrick gives practical guidance that you can take back to the business and easily implement. He advises creatively on prosecution and is a zealous advocate in enforcement proceedings, with a good sense of when and when not to be aggressive; his rates are also competitive.” By way of Cozen O’Connor, he joined the Minneapolis office, where the “pragmatic, trustworthy and strategic” Kenneth Suzan also resides. Suzan “has excellent gut instincts as to what to file and where – and when something is likely to be challenged. He genuinely seeks to understand your business goals and provides spot-on advice – when he is managing your portfolio, you hardly have to give it a second thought”.

Dorsey & Whitney LLP

With a complete command of social media, domain names, advertising and licensing, as well as core trademark prosecution and litigation, Dorsey & Whitney has carefully calibrated its service to satisfy the demands of household-name companies for which brands are pivotal assets.  “The team understands clients’ priorities and business, and shows determination in finding solutions that more than meet requirements. It consistently provides valuable insight and knowledge when you have tough domestic and international protection and enforcement matters to deal with.” The Minneapolis team of Jeffrey Cadwell, Elizabeth Buckingham and Jamie Nafziger drives and supports some of the wider group’s key relationships. Cadwell, who heads the local line-up, has the service aspect of his role on lock: “He never makes you wait for a response and follows through on everything he says he will do.” “Right on top of his game, he provides crystal-clear guidance and action plans.” Operating at a similarly high level, Buckingham “creatively and cost-effectively manages portfolios and enforcement in the United States and internationally”, bringing “deep strategic, legal and practical expertise in complex cases”. Nafziger has a penchant for technology issues and is at the forefront of Dorsey’s internet-related trademark work; for 2021, she has been included in the WTR 1000’s ranking of the top US domain name lawyers.

Faegre Baker Daniels LLP

The union of Faegre Baker Daniels and Drinker Biddle & Reath has created a 200-strong IP division with the versatility and range to address any brand-related brief domestically or internationally. Among the department’s leading lights is Minneapolis-based James Steffen, who serves as a trusted adviser to several locally based but nationally famous brands in the food and retail sectors. Steffen is cited by peers as a masterful global brand protector, enforcement ace and litigator.

Fredrikson & Byron PA

As testament to the quality of Fredrikson & Byron’s cohesive trademark group, all of its key shareholders attract vociferous praise from the market. IP division chair Lora Friedemann “achieves great results as a tenacious advocate with superb written and oral communication skills” and a “wealth of trademark and copyright law, precedent, procedural and strategic knowledge”. “Exceptional trademark lawyers” John Pickerill and Cynthia Moyer are “extremely responsive, pragmatic in their approach, quick to adapt and thoughtful. They both have a positive outlook and upbeat personality, too, which makes them simply delightful to work with”. “John is an expert in marketing and advertising law and is hugely knowledgeable about social media and online matters.” “Cynthia has a background in litigation and is an excellent written and oral advocate who knows US trademark law in all its intricacy.” Ann Dunn Wessberg “leverages an efficient and effective team of attorneys and paralegals, and manages complex global portfolios in a tactical, pragmatic, client-focused way”. Within the review period for the WTR 1000 2021, they have all added impressive work examples to their résumés. Friedemann secured a $7 million judgment and permanent injunction against a bootleg record company on behalf of the estate of Prince Rogers Nelson. Pickerill has been tending to the portfolios and various other needs of Curio Brands, Regis Corporation and ICP Corporation. Representing Medtronic in TTAB proceedings has been a highlight of Moyer’s diverse and busy practice. On behalf of Target Brands, Wessberg has been advising on clearance and risk associated with the use and registration of many proposed names for several new brands. Working with Wessberg on this is senior associate Courtney Thompson, who deserves a shout-out as a “timely, proactive lawyer and strategic thinker around issues involving third parties”.

Greenberg Traurig LLP

Greenberg Traurig has been going gangbusters in Minneapolis since it planted its flag in the city in early 2019. Stephen Baird and Tiffany Blofield, who came on board at that time, have found an extremely collaborative and well-resourced platform that has allowed them to take their practices to new heights. When he joined, Baird was already a card-carrying member of the trademark elite, with a reputation for thought leadership, ultra-efficiency and complete dedication. His prestigious clients include the Regents of the University of Minnesota, for which he handles clearance, prosecution and strategic brand management assignments. He frequently links up with Blofield, who makes her first appearance in the guide this year as a talented and fiercely competitive litigator with a high EQ.

Lathrop GPM

Endorsed by top in-house counsel as “thorough, client centred and results focused”, Lathrop GPM is a repository of trust when it comes to trademark prosecution, global brand management, licensing and litigation. The result of a merger between historic Minneapolis outfit Gray Plant Mooty and Kansas City-based Lathrop Gage, the firm has 14 offices nationwide, with 18 dedicated trademark attorneys who deploy rapidly wherever needed and whatever for. Forming the backbone of the practice are Minnesotans Jennifer Debrow, Ashley Bennett Ewald, Dean Eyler and Lori Wiese-Parks, who link up in various configurations to provide a fulsome service to well-known names such as International Dairy Queen and MoneyGram International. Each also brings something special to the table: “Jennifer sees things from the same perspective as an in-house practitioner and has broad horizons that serve her well. She understands real-world risk and gives search results that can easily be translated for businesspeople.” “Ashley is deeply practical and, unlike many other lawyers, is never an alarmist. She resolves difficult disputes and gives excellent advice on strategy.” “Dean is a gifted litigator and writer, with a mastery of trademark law and intellectual property more generally.” Wiese-Parks has a fine-tuned commercial sense and is very creative in her approach to negotiating licensing deals and settlement agreements.

Merchant & Gould

Merchant & Gould has 100-plus IP attorneys on deck with vast collective experience encompassing all facets of patent and trademark protection, commercialisation and enforcement. Deep specialisation is one of the illustrious boutique’s chief selling points, alongside its quality yet reasonably costed counsel. Making the firm a first choice for many brand owners is gold-ranked Andrew Ehard: “Easy to reach and available at all hours, Andrew provides a platinum-level service. His detailed communication, organisation, intelligence and trustworthiness set him apart; utterly dependable, he makes sure nothing falls through the cracks.” Also recommended, Christopher Schulte “loves to get into the detail of his matters and is extremely interested in and knowledgeable about substantive trademark law”; he “genuinely cares about his clients”, too. Others making the WTR 1000 grade are Scott Johnston and Brent Routman, both of whom have stellar enforcement and litigation credentials.

Norton Rose Fulbright US LLP

Norton Rose Fulbright is ideally placed to handle a substantial volume of US trademark searches, filings, oppositions and litigations, with experienced lawyers in Texas, Minnesota and New York who roll up their sleeves and get difficult jobs done. It is also in pole position for international assignments, to which colleagues in Canada and Asia often make essential contributions. Recent personnel changes and promotions have helped to sustain the practice at a high level, including the recruitment of Felicia Boyd in late 2019 and the elevation of Timothy Kenny to the position of global head of intellectual property. Boyd is an excellent team player who really hit the ground running on arrival for the benefit of her loyal coterie of clients, which appreciate her litigation and dispute resolution proficiency. Kenny is one of the most well-rounded trademark lawyers not just in the state of Minnesota, but anywhere – something that companies such as cutting-edge data analytics player Fair Isaac Corporation take full advantage of. He is also a natural leader who gets lawyers in different offices and time zones pulling in the same direction.

Robins Kaplan LLP

When complex IP and other issues intersect, Robins Kaplan is a discerning choice of external counsel; its sophisticated skill set and percipient take on business-critical matters inspire confidence. Looking further into the practice, the firm showcases virtually unrivalled expertise in litigating infringement disputes through trial, together with a deft touch on IP management and transactional matters. Christopher Larus, Will Manske and California-based David Martinez form a constellation of stars on the brands side. Chair of the national IP and technology litigation group Larus doesn’t blink in high-exposure cases and is a seasoned litigator who is also trusted with managing prosecution and strategy for valuable brands such as VELUX for skylights manufacturer VKR Holding. Making his debut in the listings this year, Manske is active on both the contentious and non-contentious fronts, with a special faculty for multi-layered litigation.

Stinson LLP

Stinson has 500 lawyers in 13 offices nationwide, giving it a solid platform from which to dispatch all manner of IP instructions. Its dedicated IP and technology team counsels in forward-thinking, commercially attuned ways to keep rights holders out of trouble and laser focused on business. This is the modus operandi of Joel Leviton, a lawyer with a “practical, even-keeled demeanour” who “tells clients what they need to know, not what they want to know”. Ruth Rivard similarly “cuts to the chase and gives straightforward advice”. Both are versatile brand protectors and enforcers who partner closely with in-house counsel.

Other recommended experts

Taft Stettinius & Hollister’s Kristine Boylan understands how to preserve the value of a brand throughout its lifecycle and is a fluent communicator who delivers plain-spoken, sensible, solutions-focused advice. Calling for her inclusion in the WTR 1000, sources describe her as a “bright light of Minnesota’s trademark scene”. Molly Eichten leverages a keen appreciation of technology in her trademark practice in the course of advising on domain names, social media use and e-commerce. The Larkin Hoffman Daly & Lindgren shareholder is a portfolio manager and deal negotiator par excellence. “Barbara Grahn is a superb attorney with significant experience and a detail-oriented, pragmatic approach to prosecution and transactional matters.” She serves as co-chair of Fox Rothschild’s trademark group.

Individuals: enforcement and litigation

  • Ashley Bennett Ewald - Lathrop GPM
  • Dean Eyler - Lathrop GPM
  • Lora Friedemann - Fredrikson & Byron PA
  • Scott W Johnston - Merchant & Gould
  • Timothy M Kenny - Norton Rose Fulbright US LLP
  • Christopher K Larus - Robins Kaplan LLP
  • James R Steffen - Faegre Baker Daniels LLP
  • Stephen R Baird - Greenberg Traurig LLP
  • Tiffany Blofield - Greenberg Traurig LLP
  • Felicia J Boyd - Norton Rose Fulbright US LLP
  • Elizabeth C Buckingham - Dorsey & Whitney LLP
  • William E. Manske - Robins Kaplan LLP
  • Cynthia A Moyer - Fredrikson & Byron PA
  • Ruth Rivard - Stinson LLP
  • Brent Routman - Merchant & Gould
  • Ann Dunn Wessberg - Fredrikson & Byron PA

Individuals: prosecution and strategy

  • Stephen R Baird - Greenberg Traurig LLP
  • Elizabeth C Buckingham - Dorsey & Whitney LLP
  • Jeffrey Cadwell - Dorsey & Whitney LLP
  • Jennifer C Debrow - Lathrop GPM
  • Andrew S Ehard - Merchant & Gould
  • Timothy M Kenny - Norton Rose Fulbright US LLP
  • Christopher J Schulte - Merchant & Gould
  • James R Steffen - Faegre Baker Daniels LLP
  • Ann Dunn Wessberg - Fredrikson & Byron PA
  • Felicia J Boyd - Norton Rose Fulbright US LLP
  • Molly T Eichten - Larkin Hoffman Daly & Lindgren Ltd
  • Ashley Bennett Ewald - Lathrop GPM
  • Patrick J Gallagher - Barnes & Thornburg LLP
  • Barbara Grahn - Fox Rothschild LLP
  • Scott W Johnston - Merchant & Gould
  • Joel D Leviton - Stinson LLP
  • Cynthia A Moyer - Fredrikson & Byron PA
  • Jamie Nafziger - Dorsey & Whitney LLP
  • John Pickerill - Fredrikson & Byron PA
  • Kenneth D Suzan - Barnes & Thornburg LLP
  • Lori L Wiese-Parks - Lathrop GPM
  • Kristine M. Boylan - Taft Stettinius & Hollister