United States: Ohio

BakerHostetler LLP

BakerHostetler has a long history of representing brand owners in the media area, but its client roster also features notable retail, software and manufacturing names. Filing, portfolio management and enforcement matters are all handled with flair and finesse, with TTAB opposition and cancellation proceedings being a particular forte. Leading the team, Deborah Wilcox is a razor-sharp first-chair litigator who is au courant with new technologies. She is currently representing In-N-Out Burger in a district court lawsuit against Azim Bagel. Christina Moser is another contentious superstar. Her pragmatism and creativity make all the difference in bet-the-company cases. Prosecution is handled by the methodical, meticulous John Mueller, who counts Fortune 500 retail company Big Lots as a loyal fan.

Calfee Halter & Griswold LLP

The lawyers at Calfee Halter & Griswold keep clients’ long-term commercial interests front and centre of their thinking at all times; IP rights are shrewdly monetised and infringements pursued with carefully calibrated force. Raymond Rundelli and Georgia Yanchar anchor the Ohio practice. Rundelli complements wide-ranging trademark expertise with stellar advertising, copyright and unfair competition knowledge. Litigation is the metier of the hard-hitting Yanchar. She has experience handling all aspects of the contentious process, from the preparation of initial pleadings to trial planning and settlement negotiation.

Dinsmore & Shohl LLP

Every single piece of work produced by the Cincinnati-headquartered Dinsmore & Shohl lives up to the premium standards set by its founding partners over a century ago; clients can count on efficient, cost-effective, comprehensive solutions. Head of the firm’s branding and advertising practice, Karen Gaunt is a crack litigator who knows how to sew up a licensing agreement too. Lynda Roesch and James Dimitrijevs are names to remember on the non-contentious side. Roesch has more than 30 years’ experience prosecuting watertight applications. Dimitrijevs oversees the portfolios of major retailers, as well as consumer products and industrial manufacturing titans. “He’s thorough, timely and innovative – a real pleasure to work with.”

Frost Brown Todd LLC

With offices across the Midwest, the Mid-Atlantic and the South, Frost Brown Todd has the wherewithal to assist national and global brand owners on the whole gamut of trademark issues. Recent highlights include assisting the National Association of Professional Baseball Leagues on the clearance of new brands and maintenance of its existing portfolio, and representing A&W Restaurants on a district court battle against Papa Burgers. Both matters are in the charge of the supremely talented Samantha Quimby, who leads the trademark practice out of Columbus. There are few lawyers who know as much as her about TLD issues. Monica Dias joins her in the WTR 1000 this year on the back of warm client feedback. “She provides sound, practical portfolio management advice and a clear reading of all the competitive marks that could pose a threat to her clients’ existing rights or future applications.”

Jones Day

Because the litigators at Jones Day are true subject-matter experts who have received extensive training in prosecution and counselling, they understand all the nuances of trademark law and so are routinely called on for critical competitor-versus-competitor cases. Meredith Wilkes and Timothy Fraelich have certainly handled their fair share. A recent example is Wilkes’ representation of McCain Foods against JR Simplot in a matter concerning a twisted French fry product. Fraelich’s curriculum vitae includes work for BlackBerry, Smucker, Heinz and Hamilton Beach. He has been in the game for over 25 years, yet he shows the same drive and determination today as he did on day one.

Thompson Hine LLP

Since its establishment in Cleveland in 1911, Thompson Hine has expanded impressively across the country – it now has approximately 400 lawyers in seven offices – but it remains strongest in its hometown. Innovation is the keyword of the practice; state-of-the-art SmartPaTH software is used to solve clients’ problems efficiently and effectively and out-of-the-box thinking is the norm. Louis Ebling and Roger Bora are two names for the address book. Ebling is a savvy portfolio manager with the business nous to secure favourable licensing contracts time and again; having worked at the USPTO, Bora is intimately familiar with its registration, opposition and cancellation procedures.

Wood Herron & Evans LLP

Celebrating its sesquicentennial anniversary in 2018, Wood Herron & Evans is a trusted name in intellectual property in Ohio. Business savvy and strongly anchored in theory, its practitioners pool their knowledge together to find cost-effective solutions that safeguard their clients’ IP assets and further their business goals. A former full-time professor, Kenneth Germain knows trademark law inside out and is often retained as an expert witness; he has testified in court over 15 times. For high-stakes, cutting-edge cases, there are few more reliable options. Theodore Remaklus and Kathryn Smith, meanwhile, serve up cracking non-contentious support. Remaklus is singled out by peers for his “excellent” prosecution skills; Smith manages a docket of around 2,000 US trademark applications and registrations and 1,500 foreign ones around the world. Lori Krafte steps up to the plate when significant advertising, media or copyright law knowledge is needed.

Other recommended experts

Susan Clady at Benesch Friedlander Coplan & Aronoff drafts airtight trademark applications and is ace at counselling clients on which marks to maintain – due to current use, anticipated use or preventative registration – and which to abandon. Fay Sharpe’s Colleen Goss oversees the worldwide trademark assets of a major healthcare provider, as well as those of several notable consumer products and manufacturing companies, with a steady hand. Having served as in-house counsel at a Fortune 500 company for over a decade, Michael Marrero of Ulmer & Berne understands the importance of producing reports that can be easily scanned in the C-suite.