United States: Texas
Baker Botts LLP
Baker Botts is as good as any firm when it comes to trademark prosecution and litigation, but its greater breadth of expertise enables it to advise more holistically on brands than the vast majority of its competitors. The Texas superstar is, for example, a leader in the field of grey market goods and parallel imports; it also has an excellent track record in the fight against fakes. Someone who can do it all and at the highest level is national trademark group chair Paul Reilly. As one client comments: “If I have a critical or sensitive matter, I call on Paul. He’s a hard worker and astute lawyer who knows the ins and outs of our business – you can speak shorthand to him and don’t have to explain everything, which maximises efficiencies.” His peers also have nice things to say: “As well as a skilled professional, he’s a great person and a brilliant mentor for younger attorneys.” His practice involves a lot of complex litigation, but rendering clearance opinions and advising on global protection strategies are also everyday tasks. Supporting him excellently in Dallas is another mutli-talented trademark maestro, Elizabeth Rucki. She is coming into her own as a litigator and portfolio manager and increasingly taking lead roles on cases.
Highly proficient at trademark portfolio management and litigation – and one of, if not the best firms in terms of global coverage – Baker McKenzie is a compelling option for any brand owner. The team in Texas, captained by Lisa Meyerhoff, hits the nail on the head when it comes to strategic problem solving and customer service. “Lisa is attentive to her clients. She is not only smart but a quick thinker who looks at complex issues from every angle, and she always finds a way forward.” Dyan House also garners effusive feedback: “She manages multiple trademark matters in multiple jurisdictions in a way that meets her clients’ business needs. She’s as good a trademark counsel as there is; what sets her apart is that she explains complicated points in language that is easy to understand – she doesn’t build a watch when all you need is the time. She is thorough yet efficient and represents excellent value for money.”
Fibbe Lightner LLP
Two-partner setup Fibbe Lightner dispenses a full suite of trademark services and, with an outstanding network of carefully selected foreign associates to call on, does tip-top international and cross-border work. “It is wonderful to partner with Reagan Fibbe and Robin Lightner Maisashvili – they are both diligent, smart and pragmatic in their approach to complex as well as routine trademark matters and transactions. They’re business minded and very thoughtful about strategy; they are also hugely cost-effective and work on flat fees or other alternative arrangements depending on what fits best. They can be highly recommended for so many things – acquisition of trademark rights, licensing arrangements, enforcement work, international strategy and general privacy matters.”
Haynes and Boone, LLP
An IP powerhouse in the Southwest but with a tremendous national and international reputation, Haynes and Boone is a go to for marquee brand owners in need of sophisticated 360-degree advice on brands. The ensemble never lets up in its quest for perfection and is continually honing its expertise in all facets of trademark practice; advertising, marketing and labelling have been key areas of focus in this regard over the past year. The gang in Texas contains names familiar to, and respected by all the key figures in the trademark world, and they form “a truly great team”, which is captained by David Bell, “a reliable source of trademark wisdom who is responsive to the ever-changing requirements of his clients”. An award-winning trademark all-rounder, Bell has cultivated special expertise in the social media area. He and Jeffrey Becker closely support AT&T on brand management and social media strategy. Becker is praised by clients as “an invaluable resource who handles routine and out-of-the-ordinary matters adeptly. He has a world of experience and gives practical advice while being flexible on costs.” Becker is a discerning choice for TTAB disputes – “his low-key demeanour makes for effective advocacy”. Former INTA board member Purvi Patel Albers is “strategic, responsive and highly commercial” and an authority in the e-commerce field. With more than 30 years in the game, San Antonio-based William Nash is the most experienced of the lot. A protean professional, he has clients covered on all fronts. For example, with Nerium Biotechnology he handles clearance, registration, brand management and disputes matters worldwide; his work has been pivotal as the company has grown rapidly from a start-up into a global business with sales totalling more than $1billion.
Hitchcock Evert LLP
Putting clients first and understanding, at a granular level, what drives them makes Hitchcock Evert shine. The team’s passion and creativity – which is embodied by Elisabeth Evert in particular – resonates with highly innovative companies. Evert is “an outstanding lawyer with incredible strategic vision, she’s a great leader who brings the whole trademark bar together”.
Norton Rose Fulbright US LLP
Norton Rose Fulbright’s US brands team is seamlessly integrated into the firm’s international practice and as a result it offers up a cavernous chest of resources to those protecting and enforcing their intangible rights worldwide. With one of the largest trademark groups in the United States, there is nothing the side cannot do when it comes to trademarks; it is perfectly poised to architect strong overarching brand strategies that can weather any storm. The Austin office is a hotbed of talent, being home to top trademark wizards Michael Scott Metteauer and Alicia Morris Groos. As his peers contend: “Michael is a smart and skilled trategic counsellor and a fantastic guy all-round.” “Alicia does an incredible job of driving brand value. Beyond the quality of her legal work, she’s just a pleasure to partner with. She has a wonderful attitude and is one of the most service-minded and responsive lawyers anywhere.” Linda Merritt holds it down in Dallas. She is one of the top practitioners in the country in terms of Madrid Protocol practice; she is an ace on transactional matters too.
“The expertise, value, attentiveness and responsiveness that Pirkey Barber provides is unparalleled. It has an incredibly deep bench, which includes some of the best trademark minds in the United States, all of whom are readily accessible and have complementary strengths.” The firm has 12 individuals selected for inclusion in the Texas chapter of the WTR 1000, which is three times as many as any competitor in the state. Louis Pirkey and William Barber are the talismen of the team and continue to be pre-eminent practitioners, but particular focal points for praise during the 2019 research period were Steve Meleen, Christopher Kindel, Anna Kuhn and Steven Espenshade: “Steve Meleen is a go-to guy for a health check on something, or if as in-house counsel, you need to field a question from your chief executive. He is incredibly smart and has excellent judgement on how to handle enforcement matters in a strategic and practical way. There’s nobody more trustworthy in terms of sound and thoughtful advice in any situation.” “Chris is great to turn to on topics ranging from complex licensing to international portfolio management and enforcement. The breadth of his knowledge makes him well suited to legal tasks with many intertwining threads – his multi-pronged approach to problem solving is unmatched. He sees the big picture and provides pragmatic advice on time and within budget.” “Anna has an Ivy League education and is a brilliant writer. She also has years of in-house experience and has a gift for distilling her advice into easy-to-understand summaries that can virtually be cut and pasted and sent along to your internal business clients. She is excellent on trademark clearance.” Espenshade, who makes his debut in the WTR 1000 this year, “excels at overcoming complex prosecution and enforcement problems with thoughtful, well-reasoned and thorough strategies”. He frequently works alongside Shannon Vale on behalf of top-tier foreign associates; as a duo “they are responsive, pragmatic and commercial and can be recommended in a heartbeat”. Collaboration is always in evidence at Pirkey Barber. Christopher Graff and Wendy Larson make another good pairing; they are currently handling a cancellation action for a supermarket chain against an organic grocer which is claiming trademark rights based purely on consumer use of a term and not the brand owner’s use. Jered Matthysse, alongside Graff and Larsen, is handling a complex opposition for the same. Sherri Eastley has enjoyed notable prosecution successes of late, securing design protection for an aspect of jewellery for Kendra Scott. Showcasing her negotiation skills, she also sealed the deal on a co-branding licence between Spurs Sports & Entertainment and her client HEB Grocery Company. A strategic sounding board for his colleagues and the firm’s clients, senior counsel Rodney Caldwell is one of the market’s luminaries.
Richard Law Group
Molly Buck Richard makes Richard Law Group a compelling choice for trademark protection and portfolio advice. “Molly quickly understands complex issues and is an excellent strategist and problem solver, as well as a wonderful mediator.” Drawing on over 35 years of experience she gets successful outcomes that align well with her clients’ business objectives time and time again. Among her many prestigious patrons are Fossil Group and Greyhound Corporation whose worldwide prosecution matters she oversees. Jim Struthers is another repository of trust for in-house counsel; he has walked a mile in their shoes having served as managing counsel for Hewlett-Packard and chief trademark counsel for Agilent Technologies. A big piece of recent news from the camp was the promotion of David Diamond to partner; he is on a lot of people’s radars now.
Sidley Austin LLP
Distinguished corporate outfit Sidley Austin takes intellectual property seriously; it shines in patent litigation and has a robust national trademark practice too. For a contact in Texas, look to brands and copyright specialist Julia Chester, a confidante of many Fortune 500 companies and start-ups. A versatile pro, she acquits herself with distinction in cross-border transactions as well as in enforcement and prosecution.
Thompson & Knight LLP
Thompson & Knight is constantly looking for ways to enhance the value of its trademark advice – an attitude that has, for example, led to the development of a top-drawer cross-office social media and advertising practice. More recently, the ensemble has assiduously cultivated its data privacy and cybersecurity capabilities; which all makes for a well-rounded service. IP group leader Max Ciccarelli is the firm’s lynchpin in Texas. He is a masterful trial lawyer whose advocacy skills have been sharpened to a fine point as a result of diverse experience encompassing patent, trademark, trade dress, copyright and unfair competition litigation. Dallas associate Craig Carpenter is “exceptionally knowledgeable, fast and efficient” and is a key name to note.
Vinson & Elkins LLP
Vinson & Elkins acquires trademark rights with the minimum amount of fuss, builds them into coherent and attractive portfolios and then creates smart blueprints for their development. The firm is also well-equipped to tackle all manner of IP litigation and execute robust global enforcement programmes. Scott Brown, who currently serves on the INTA Enforcement Committee, maintains a busy practice on all fronts. He is a well-spring of strategic insight and analysis for Fruit of the Earth, Luminex Corporation and the Real Ale Brewing Company, on whose behalf he manages domestic and international trademark prosecution matters.
Other recommended expertsFormer American Intellectual Property Law Association president Margaret Boulware is one of the few practitioners in Texas with expertise encompassing patents and trademarks. On the patent side, she prosecutes in the chemical, mechanical and biotech domains; in trademarks, she litigates at a high level often and frequently. Boulware & Valoir is where she can be found. John Cain and William Raman run the trademark practice at business law and litigation outfit Fleckman & McGlynn; both are seasoned counsellors with connections all around the world. Edward Cavazos manages the Austin office of Pillsbury Winthrop Shaw Pittman. A technologist with a thriving patent practice, he is also an abundant source of insight on trademark, copyright and internet law. John Cone of Ferguson Braswell & Fraser has a rare combination of US and European IP experience, which enables him to give a unique perspective to transatlantic businesses. Litigation sees him at his best. Austin-based Alison D Frey has an unstinting dedicated to quality – the Dickinson Wright lawyer gets it right the first time on a wide range of trademark, copyright and licensing briefs. A vital cog in the King & Spalding IP machine, Richard Groos can be counted on because of his excellent track record representing large global companies on any and all trademark matters. His patrons include the Home Depot whose global portfolio he cares for and nurtures; as he does for many clients. He also oversees enforcement matters, domain name disputes and oppositions. Elizabeth King is a former examining attorney with a long and illustrious career in private practice. A perceptive strategist, she now runs her own self-titled firm from which she gives a close personal service to clients. Deborah Lively of FisherBroyles prosecutes and manages large portfolios with commercial ends in mind; possessing excellent attention to detail and abundant industry knowledge, she is great on contract negotiation too. Dwayne Mason is a Swiss army knife IP lawyer – he does patent, trademark, copyright and trade secret work and straddles the contentious/non-contentious divide without breaking a sweat. The multi-talented Greenberg Traurig lawyer was recently elected to the board of the Houston Intellectual Property Law Association. “Mark Miller is a business-focused guy with strong trademark law fundamentals.” Operating out of Jackson Walker, he has been protecting marks internationally for over three decades and has emerged victorious from many IP law suits. “John Patton is a careful practitioner who pays close attention to detail, which is why he has such excellent clients.” The man behind Patton Law Group “has become a top specialist in trademark enforcement and anti-counterfeiting”. Fish senior principal Russell Rippamonti manages patent and trademark portfolios for energy companies; he is a former petroleum engineer so he speaks his clients’ language and understands their concerns and needs. A specialist on branding and trademark issues in the food and beverage and real estate sectors, Paul Van Slyke of Hoover Slovacek is an ace on TTAB proceedings and other disputes; although he is rigorous, he moves quickly and resolves matters in no time at all, which helps keep client costs down significantly.
- Purvi Patel Albers - Haynes and Boone, LLP
- William G Barber - Pirkey Barber PLLC
- Jeffrey M Becker - Haynes and Boone, LLP
- David Bell - Haynes and Boone, LLP
- Louis T Pirkey - Pirkey Barber PLLC
- William D Raman - Fleckman & McGlynn PLLC
- Paul Reilly - Baker Botts LLP
- Molly Buck Richard - Richard Law Group
- Jim Struthers - Richard Law Group
- Shannon T Vale - Pirkey Barber PLLC
- Margaret A Boulware - Boulware & Valoir
- John M Cone - Ferguson Braswell & Fraser PC
- Elisabeth A Evert - Hitchcock Evert LLP
- Reagan Fibbe - Fibbe Lightner LLP
- Alicia Morris Groos - Norton Rose Fulbright US LLP
- Richard J Groos - King & Spalding LLP
- Christopher M Kindel - Pirkey Barber PLLC
- Anna Kuhn - Pirkey Barber PLLC
- Robin Lightner Maisashvili - Fibbe Lightner LLP
- Deborah Lively - FisherBroyles LLP
- Steve Meleen - Pirkey Barber PLLC
- Linda M Merritt - Norton Rose Fulbright US LLP
- Michael Scott Metteauer - Norton Rose Fulbright US LLP
- Lisa Meyerhoff - Baker McKenzie LLP
- Elizabeth K Rucki - Baker Botts LLP
- W Scott Brown - Vinson & Elkins LLP
- John C Cain - Fleckman & McGlynn PLLC
- Edward A Cavazos - Pillsbury Winthrop Shaw Pittman LLP
- Julia M Chester - Sidley Austin LLP
- Max Ciccarelli - Thompson & Knight LLP
- Sherri L Eastley - Pirkey Barber PLLC
- Steven M Espenshade - Pirkey Barber PLLC
- Alison D Frey - Dickinson Wright
- Christopher L Graff - Pirkey Barber PLLC
- Dyan House - Baker McKenzie LLP
- Elizabeth W King - Elizabeth W King
- Wendy Larson - Pirkey Barber PLLC
- Dwayne Mason - Greenberg Traurig LLP
- Jered Matthysse - Pirkey Barber PLLC
- Mark H Miller - Jackson Walker LLP
- William B Nash - Haynes and Boone, LLP
- John W Patton - Patton Law Group
- Russell N Rippamonti - Fish & Richardson PC
- Rodney K Caldwell - Pirkey Barber PLLC
- Paul C Van Slyke - Hoover Slovacek LLP