United States: Minnesota

Firms

  • Merchant & Gould
  • Barnes & Thornburg LLP
  • Dorsey & Whitney LLP
  • Faegre Baker Daniels LLP
  • Fredrikson & Byron PA 
  • Gray Plant Mooty
  • Norton Rose Fulbright US LLP
  • Robins Kaplan LLP
  • Winthrop & Weinstine PA

Barnes & Thornburg LLP

With partners in Atlanta, Chicago, Columbus, Indianapolis, Minneapolis and Washington DC, Barnes & Thornburg is a major player in the Eastern United States. There is no limit to what it can do in trademark practice; above all, clients come here for business-relevant brands advice. Personifying the set’s holistic approach, Felicia Boyd does it all, from portfolio management to worldwide enforcement for a stellar roster of clients that includes Wells Fargo & Company. She thrives in the cut and thrust of litigation, but also makes judicious decisions around the use of alternative forms of dispute resolution, having stacks of arbitration experience. Of counsel Kenneth Suzan is another rangy professional. Clients give him great reviews – for just one example: “His advice is always clear and helpful, and he is mindful of costs. You know you’re in safe hands with Ken – he’s fantastic to work with.”

Dorsey & Whitney LLP

Dorsey & Whitney performs routine trademark tasks with the utmost efficiency but shines brightest when identifying and executing solutions to more complex brand conundrums. Enabling this, the set has cutting-edge expertise in areas such as social media, advertising and online enforcement. The firm also demonstrates notable thought leadership; just look at its blog (TheTMCA.com), to which members of the group continue to post insightful pieces whatever the circumstances. Providing inspiring leadership to the trademark, copyright, advertising and brand management section is Minneapolis-based Elizabeth Buckingham. She does a superb job integrating the team across state lines and getting everybody pulling in the same direction. The vastly experienced trademark talent “provides a top-drawer service across the board” and “gives such a level of training to her colleagues that they don’t make mistakes”. Jamie Nafziger anchors the cybersecurity, privacy and social media practice and is an authority on anything internet related. Jeffrey Cadwell makes essential contributions on all fronts; one client comments: “He has had great success resolving complex disputes for us, proving very adept at negotiating commercial solutions. A top-notch lawyer with superb attention to detail, he is also really personable and a pleasure to work with.”

Faegre Baker Daniels LLP

Faegre Baker Daniels files trademarks in plenitude all over the world for a colourful catalogue of clients. The set’s prosecution advice always comes overlaid with high-level strategic insights, born of deep experience handling the full range of trademark, copyright, advertising and media matters. With James Steffen leading the IP division, the firm is “recommended in a heartbeat”. “Jim is ultra-responsive to the business needs of his clients and really tailors his advice and communication style to the audience. He’s a stellar outside counsel for some major corporations.” “Incredibly smart but grounded, he has been around for ever.”

Fredrikson & Byron PA 

Taking a commercial approach to brands, Fredrikson & Byron is appreciated by in-house counsel because it gives direct, concise advice that they can take to the business. In clearance and opinions, for example, the team answers the ‘can we or can’t we’ question, rather than giving overly long and detailed responses. Instilling this practical style, trademark chair and portfolio manager par excellence Ann Dunn Wessberg has an instinctual feel for what clients want, having served as chief trademark counsel at Target. “Ann focuses on real risks in the marketplace and provides counsel in an easy-to-use format which helps you meet constant and increasing deadline pressures.” Tenacity is another trait of the firm and is demonstrated by the litigation section and its leader (and IP division chair) Lora Friedemann. She has more courtroom experience than most, but – in line with the firm’s general commitment to pragmatism – does not fight for the sake of it; she looks for business wins, which often means keeping clients out of court. Earning WTR 1000 stripes for the first time this year in recognition of her ample Trademark Trial and Appeal Board (TTAB) experience is Cynthia Moyer. “She’s an excellent communicator and expert negotiator who always recommends the best courses of action.” Alongside Wessberg, she acts for Comerica Bank as the personal representative of the Estate of Prince Rogers Nelson in administrative proceedings; Friedemann also recently won a preliminary injunction for the same against a former sound engineer for Prince who completed two unfinished music works following Prince’s death and used the Prince trademark without authorisation. John Pickerill is way ahead of the curve when it comes to social media issues, giving the firm an additional competitive edge. He has recently been advising brands on how to deal with social media influencers versus traditional spokespeople, having become a thought leader on this hot-button topic.

Gray Plant Mooty

Established in 1866, venerable Minneapolis ensemble Gray Plant Mooty is a repository of trust for companies with large IP portfolios in need of international protection. Among the prestigious brands to which it provides ongoing and global portfolio management and strategic support are Campbell’s Soup Company, International Dairy Queen and Radisson Hospitality. They come for Jennifer Debrow and Ashley Bennett Ewald, both all-rounders with excellent connections worldwide. Chair of the IP, technology and privacy group Debrow comes in for particularly extensive praise from clients: “She manages all matters efficiently and cost effectively, and whenever there’s a complex problem, she thinks creatively to solve it. She has established a powerful team to support her.” Peers admire her, too: “She’s not a slash-and-burn attorney who won’t give an inch – she’s firm, but always has business interests at the forefront of her mind. She’s a real common-sense operator.” Ewald garners wholehearted recommendations as a “responsive, enthusiastic attorney and clear thinker”. Another name for the address book is Lori Wiese-Parks, who thrives in general counsel-type roles for her clients, thanks to her commercial law background; she is great at IP transactions, as well. On the litigation front, things have been extremely busy. The group put to bed an important dispute between its client non-profit healthcare provider HealthPartners and Walmart. HealthPartners had significantly invested in a new logo design, which Walmart then alleged had infringed on the Sam’s Club logo mark; several CEOs and experts were deposed on the path to a favourable settlement. Taking point on this was Dean Eyler, an exemplary brief writer and persuasive oral advocate who leads the IP team’s litigation arm.

Merchant & Gould

“Outstanding and reliable in terms of quality, Merchant & Gould has long stood tall as a trademark and IP leader in Minnesota.” Particularly striking is the international reach of its practice, which extends into all the corners of the world. The professionals here think globally about brands and are extremely well connected with top IP outfits abroad; they send out a lot of instructions and, as testament to the group’s quality, people are only too happy to reciprocate. Trademark chair Christopher Schulte “gives excellent, commercially focused advice” and helps clients to mitigate risk wherever they are doing business. “He operates at the cutting edge of trademark prosecution.” Also highly respected far and wide is Andrew Ehard – one foreign associate even urged WTR to create a platinum tier in the 1000 just for him. “Unbelievably knowledgeable, practical and responsive, he’s phenomenal on anything complex and hands down the best trademark lawyer.” Coordinating work to and from Asia, Brent Routman has patents to his name and is a dyed-in-the-wool innovator with a passion for trademark, copyright, internet and advertising law. Merchant & Gould has “many excellent litigators” on deck, including Scott Johnston, who also brings fresh ideas to the table; he developed Brandscape, which presents trademark information in a visual form to help those with little knowledge of trademarks to protect themselves against third parties. Holding the reins of the firm-wide litigation group is Heather Kliebenstein, whose background in patents puts her in pole position to handle multifaceted IP disputes. “She’s a top trademark litigator – big brand owners think she’s fantastic.” Helping to bridge the contentious and non-contentious sides of the practice, Gregory Golla has an edge in the courtroom over other litigators, who lack his depth of prosecution expertise.

Norton Rose Fulbright US LLP

Norton Rose Fulbright’s global IP team is stacked – the firm sent over 30 people to the 2018 International Trademark Association’s annual meeting in Seattle. It is well integrated too, making it a discerning choice when you want consistent advice across borders. The mastermind of an A-to-Z trademark, advertising, copyright and trade secrets practice is Minneapolis-based Timothy Kenny. Kenny is vastly experienced as a federal court litigator and representative at the TTAB and has a gift for managing litigation, oppositions and cancellations in multiple countries. Well organised and efficient, he coordinates large projects with aplomb. Recently, he handled a major rebrand for Fair Isaac Corporation, now doing business as FICO; he put in place a global strategy for the change, enforced the FICO mark (used by the company on an extended range of products) via multiple channels and prosecuted many trademark applications.

Robins Kaplan LLP

A powerhouse patent and technology setup, Robins Kaplan also despatches trademark briefs with an assured hand. An excellent track record makes it a go-to for litigation with a lot on the line; when there are lucrative deals to be done, again the firm finds itself in high demand. Chair of the national practice Christopher Larus keeps a cool head in hotly contested IP litigations – of which he has handled a great many. He also knows how to make every dollar a client invests in its brand and IP protection count, showing a fine-grained understanding of monetisation strategies. Michael Collyard also flexes cultivated advocacy skills and is an experienced first chair in IP, antitrust and commercial contentions. Focused on a good business outcome from the moment a case is filed, he gets to the heart of each matter expediently.

Winthrop & Weinstine PA

This full-service outfit tailors its advice in all legal areas to the business needs of its clients – while this is something a lot of good firms do, few bring the sort of wider industry knowledge to the table that Winthrop & Weinstine does. It maintains a dedicated brands management practice and is there for its clients – not just at the filing stage, but from the moment new ideas are born; it understands every aspect of branding, from start to finish. Stephen Baird’s obvious zeal for trademarks resonates with companies for whom branding is everything. He is a time-honoured strategist with creative flair and a practical mindset, unafraid to put a hand to the tiller, as opposed to just reciting the law or giving options.

Other recommended experts

Molly Eichten is a great choice if you want value for money without compromising on expertise.” The Larkin Hoffman Daly & Lindgren professional practises trademark and IT law and is an ace on intellectual property in the digital realm. Cozen O’Connor’s Patrick Gallagher has experience encompassing every stage of the brand lifecycle. “He’s extremely bright and really up on everything happening in trademark law, which makes him great to use as a sounding board.” Barbara Grahn of Fox Rothschild is an all-rounder when it comes to brand protection and enforcement. She is an ace in international trademark registration and handles sweeping clearance projects with a deft hand. Joel Leviton applies a rigorously commercial mindset in his broad-church trademark practice. The Stinson Leonard Street attorney serves as counsellor, protector and enforcer for several Fortune 500 companies. His partner Ruth Rivard does the same, but is best known for her proficiency in litigation and alternative dispute resolution. Kyle Peterson of Patterson Thuente IP is accustomed to protecting trademarks in emerging markets. He knows the lay of the trademark land in many places, but is especially familiar with the Latin American market thanks to his work for a world leader in crop nutrition. “Kyle understands his clients’ businesses intimately, tackles infringements thoughtfully and is fiscally minded. He has fine attention to detail and provides practical education and guidance on trademarks.”

Individuals: enforcement and litigation

  • Stephen R Baird - Winthrop & Weinstine PA
  • Scott W Johnston - Merchant & Gould
  • Timothy M Kenny - Norton Rose Fulbright US LLP
  • James R Steffen - Faegre Baker Daniels LLP
  • 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
  • Gregory C Golla - Merchant & Gould
  • Heather J Kliebenstein - Merchant & Gould
  • Christopher K Larus - Robins Kaplan LLP
  • Joel D Leviton - Stinson Leonard Street LLP
  • Kyle Peterson - Patterson Thuente IP
  • Ruth Rivard - Stinson Leonard Street LLP
  • Brent Routman - Merchant & Gould
  • Ann Dunn Wessberg - Fredrikson & Byron PA

Individuals: prosecution and strategy

  • Stephen R Baird - Winthrop & Weinstine PA
  • Elizabeth C Buckingham - Dorsey & Whitney LLP
  • Jeffrey Cadwell - Dorsey & Whitney LLP
  • Jennifer C Debrow - Gray Plant Mooty
  • Andrew S Ehard - Merchant & Gould
  • Timothy M Kenny - Norton Rose Fulbright US LLP
  • Christopher J Schulte - Merchant & Gould
  • Felicia J Boyd - Barnes & Thornburg LLP
  • Molly T Eichten - Larkin Hoffman Daly & Lindgren Ltd
  • Ashley Bennett Ewald - Gray Plant Mooty
  • Patrick J Gallagher - Cozen O'Connor
  • Gregory C Golla - Merchant & Gould
  • Barbara Grahn - Fox Rothschild LLP
  • Scott W Johnston - Merchant & Gould
  • Joel D Leviton - Stinson Leonard Street LLP
  • Cynthia Moyer - Fredrikson & Byron PA
  • Jamie Nafziger - Dorsey & Whitney LLP
  • Kyle Peterson - Patterson Thuente IP
  • John Pickerill - Fredrikson & Byron PA
  • Brent Routman - Merchant & Gould
  • James R Steffen - Faegre Baker Daniels LLP
  • Kenneth D Suzan - Barnes & Thornburg LLP
  • Ann Dunn Wessberg - Fredrikson & Byron PA
  • Lori L Wiese-Parks - Gray Plant Mooty