United States: Ohio
- Baker & Hostetler LLP
- Dinsmore & Shohl LLP
- Frost Brown Todd LLC
- Jones Day
- Wood Herron & Evans LLP
Baker & Hostetler LLP
Intellectual property is a priority practice area at Baker & Hostetler; its trademark lawyers are the primary relationship contacts for some of the firm’s top clients. A well-integrated, cross-country team has all aspects of trademark prosecution locked down – it manages tens of thousands of registrations globally for blue-chip corporations – and brings the heat in litigation and enforcement. The go to in Cleveland is Deborah Wilcox, who is a “smart, responsive professional who knows trademark law cold” and is an experienced IP asset manager and first-chair litigator. Also recommended is John Mueller, an IP all-rounder with a deft touch in the consumer products industry.
Dinsmore & Shohl LLP
“Dinsmore & Shohl has a sizeable and solid trademark practice run by extremely accomplished lawyers” and is a repository of trust for many marquee global brands. Operating a sophisticated internal management system, by utilising an advanced docketing system and leveraging the experience of a well-organised paralegal corps and team of staff, the set makes light work of global portfolio management affording partners more time to engage in the strategising and conflict resolution they are there for. Setting the highest standards as chair of the practice is Karen Gaunt, a “natural leader and extremely responsive lawyer”. “Karen understands her clients’ risk tolerances and is flexible about adapting her work product to formats most useful for business people. She is well-versed regarding TTAB proceedings – her writing is persuasive and she is practical at devising case strategies.” She is a key contact for Procter & Gamble’s in-house legal team which she supports on clearance, advertising review, brand strategy, prosecution and enforcement. Alongside her in the WTR 1000 gold tier is James Dimitrijevs, who safeguards iconic brands for one of the largest retailers in the world. Helping him to manage more than 25,000 active trademark matters globally for this company is Grant Monachino, who has “an instinctual feel for his clients’ needs”. One of the most experienced members of the team is all-rounder Lynda Roesch, who has served as general counsel for INTA and on the organisation’s board.
Frost Brown Todd LLC
“Frost Brown Todd is an excellent general practice firm with depth in many areas. It organises its groups very well and puts great leaders in key positions.” One such individual is Samantha Quimby, who helms the trademark practice. As one client enthuses: “Sam offers practical and commercial guidance based on her years of experience – it’s never cookie-cutter advice – and is proficient in all aspects of trademark work from prosecution to litigation and licensing.” As well as serving as trademark counsel to a top university, she acts for Associated British Foods North America, the parent owner of many recognisable food and beverage brands and for Minor League Baseball for which she recently oversaw a major clearance project regarding alternative Spanish team names for the organisation’s Copa de la Diversión event series. Although she undertakes extensive media litigation work, Monica Dias also knows all about the business of brands. She is adept at helping small companies evolve into bigger companies and establish a global presence and is appreciated for her sensitivity to commercial risk and willingness to provide recommendations rather than just restate the law.
Efficient and strategic in its management of worldwide portfolios, watchful and swift in enforcement and assured in its handling of make-or-break trademark infringement litigations, Jones Day is hard to beat as a global one-stop shop for big brands. The seamlessness of the operation of its cross-border trademark group can be seen through the prism of several key client relationships: the Wikimedia Foundation is supported on global brand planning and strategy by lawyers in the United States, Hong Kong, Japan, Germany and the United Kingdom; Educational Testing Service (ETS) is robustly protected by practitioners in the same jurisdictions with the addition of France; and ICANN is guided on portfolio, licensing and enforcement matters and special projects by US, French and Japanese professionals. Intimately involved in the Wikimedia and ETS work is Cleveland’s Carrie Kiedrowski, who debuts in the WTR 1000 this year as one of Jones Day’s exciting future leaders. Kiedrowski is well versed in the art of protecting brands on the Internet and in social media settings. Timothy Fraelich also supports ETS, leveraging his all-encompassing trademark expertise. Taking the lead for ICANN is Meredith Wilkes, a top trial lawyer who co-leads the global trademark, unfair competition and copyright group. An excellent forecaster who is straightforward when it comes to fee estimates, Wilkes makes budget planning easy for her clients and always hones in on the best strategies to achieve commercial ends and keeps brand owners involved in the process.
Wood Herron & Evans LLP
Historic Cincinnati boutique Wood Herron & Evans is one of the United States’ IP pioneers. Consistently staying abreast of emerging trends in trademark law and practice, the ensemble offers a contemporary brands service both domestically and internationally. With four recommended practitioners featuring in the WTR 1000, the firm is certainly not lacking for depth. The “dean of trademark practice in Ohio” is Kenneth Germain, a senior counsel often called on as an expert witness in commercially consequential trademark and unfair competition suits. The engines of the Wood Herron practice include Theodore Remaklus, a prosecutor and litigator hailed as an “excellent all-around consultant” by foreign associates; Lori Krafte, whose expertise on trademark law and adjacent areas including advertising, media law and privacy translates into well-rounded advice; and Kathryn Smith, an experienced prosecutor with a knack for resolving the most intransigent disputes.
Other recommended experts
Roger Bora is a trademark partner in Thompson Hine’s respected IP group. He is recommended by foreign associates as a “helpful lawyer who gives practical, straight-to-the-point advice”. Bora’s colleague at the firm Louis Ebling is another proficient portfolio manager. Colleen Flynn Goss of Fay Sharpe is a popular choice among foreign law firms and companies filing trademarks in the United States; she is efficient, an excellent critical thinker and very persuasive when it comes to convincing examiners. She also understands the mindset of corporate clients. Thomas Earl LeVere is a “great all-encompassing IP litigator with a exceptional knowledge of trademark issues”. He is based in Ice Miller’s Columbus office. Managing global portfolios is a cinch for Ulmer & Berne’s Michael Marrero; the proactive and responsive lawyer – and great communicator – does it day in, day out for companies such as GOJO Industries, Cotton Council International and Rhinegeist Brewery. Raymond Rundelli and Georgia Yanchar are the key contacts at Calfee Halter & Griswold for counsel on brands. The dynamic duo have broad expertise which encompasses trademark, unfair competition, false advertising and trade secret law and are talented and versatile IP litigators and counsellors.
- James A Dimitrijevs - Dinsmore & Shohl LLP
- Karen K Gaunt - Dinsmore & Shohl LLP
- Samantha M Quimby - Frost Brown Todd LLC
- Deborah A Wilcox - Baker & Hostetler LLP
- Meredith M Wilkes - Jones Day
- Roger Bora - Thompson Hine LLP
- Monica L Dias - Frost Brown Todd LLC
- Louis K Ebling - Thompson Hine LLP
- Timothy P Fraelich - Jones Day
- Colleen Flynn Goss - Fay Sharpe LLP
- Carrie L Kiedrowski - Jones Day
- Lori E Krafte - Wood Herron & Evans LLP
- Thomas Earl LeVere - Ice Miller LLP
- Michael A Marrero - Ulmer & Berne LLP
- Grant Monachino - Dinsmore & Shohl LLP
- John M Mueller - Baker & Hostetler LLP
- Theodore R Remaklus - Wood Herron & Evans LLP
- Lynda E Roesch - Dinsmore & Shohl LLP
- Raymond Rundelli - Calfee Halter & Griswold LLP
- Kathryn E Smith - Wood Herron & Evans LLP
- Georgia E Yanchar - Calfee Halter & Griswold LLP
- Kenneth B Germain - Wood Herron & Evans LLP