United States: Texas

Firms

  • Haynes and Boone LLP
  • Pirkey Barber PLLC
  • Baker Botts LLP
  • Fibbe Lightner LLP
  • Norton Rose Fulbright
  • Richard Law Group
  • Baker McKenzie
  • King & Spalding LLP
  • Thompson & Knight LLP

Baker Botts LLP

When infringement headaches loom, Baker Botts is the place to go for a remedy: its dedicated branding, advertising and copyright specialists demonstrate finely tuned strategic litigation instincts and possess the aptitude and fortitude for trial work. The firm is also a dab hand at managing portfolios and renders a precision prosecution and counselling service to a host of Fortune 500s, as well as growth companies. Its lawyers are also proficient in handling advertising clearance tasks, contests, sweepstakes and promotions, and digital advertising and social media matters – proving that nothing is off limits in trademark practice for the firm. Clients, colleagues and competitors all draw inspiration from department chair Paul Reilly: “He is a fantastic trial lawyer with a good business sense to resolve issues. He delivers excellent value for money by doing things in a lean and efficient manner.” Elizabeth Rucki also comes in for deserving praise: “She develops robust portfolios and maintains them in peak condition while optimising your public-facing use of marks. She is incredibly knowledgeable and responsive, and a pleasure to work with.” The two frequently link up to give prestigious clients across-the-board support; PepsiCo is one they have worked with for many years, advising it on clearance, enforcement, TTAB proceedings and federal court cases.

Baker McKenzie

For global portfolio management, Baker McKenzie fits the bill perfectly. Very few firms have as much experience advising on worldwide trademark selection, clearance, prosecution and enforcement – and fewer still have the geographic reach and resources (personnel and technical) to carry out such tasks seamlessly and efficiently. Dallas, Texas is an important location in the firm’s network, as the base of operations for Dyan House. She has taken over some major portfolios during the review period and added to her catalogue of industry-leading clients in the process. Key to her enduring popularity, she does a fantastic job educating business folks and marketing teams on brand matters and providing them with practical guidance. House is also noted as an adroit performer in opposition and cancellation proceeding; but for hardcore enforcement, WTR 1000 newcomer Bart Rankin is the person to call. He takes the anti-counterfeiting lead for the Texas group and is a seasoned cross-spectrum IP litigator.

Fibbe Lightner LLP

Though only a two-partner set-up, Fibbe Lightner makes its presence felt globally; the team carries out international brand instructions with finesse by working with some of the finest foreign associates handpicked according to the demands of specific tasks. Punching well above its weight, the ensemble has forged lasting relationships with the companies it represents in a such personal and tailored fashion. Unsurprisingly, the feedback is fantastic: “Reagan Fibbe and Robin Lightner Maisashvili thrive in critical problem-solving situations – when you have a head-scratching, seemingly unsolvable problem, the smart thing to do is expedite a call or email to them. Brilliant at coaching brand owners on protecting and managing assets, they ensure that clients have the edge in any geographies of interest to them. They are consummate trademark lawyers with an ocean of practical approaches and solutions, and they truly care about the people they assist.” Both have individual expertise worth highlighting: “Reagan is extremely clever in the way she explains complicated legal issues to laymen and is also highly efficient”; while “Robin is an American lawyer based in London who deftly helps US companies navigate the cultural and legal nuances of Europe.” As examples, they serve as primary trademark prosecution and strategy counsel for the University of Texas, MD Anderson Cancer Center; Europe, Middle East and Africa prosecution, clearance and enforcement counsel for Phillips 66 Company; and US and international trademark strategy advisers for Nabors Industries.

Haynes and Boone LLP

A trademark heavyweight in the Southwest with a coast-to-coast presence, Haynes and Boone is a reference in the United States when it comes to the business of brands. The crossover between the firm’s trademark and advertising, marketing and promotional law groups ensures it can give appropriate coverage to clients on the complete range of brand matters – an ability enhanced by a supportive, collaborative internal culture. At the forefront of the practice are David Bell and Jeffrey Becker who work closely together alongside newly minted partner Rob LeBlanc in support of AT&T, for which they handle thousands of clearance, prosecution, enforcement and domain name matters worldwide. All three garner glowing reviews from the market. “David understands his clients’ products, business philosophies and go-to-market strategies, and provides invaluable perspective along with options and action plans.” “Jeff is exceptionally responsive and handles matters personally, driving them towards desired outcomes. He is a trusted adviser who does a wonderful job, making you feel like his only client. He is also extremely cost-effective, which is especially important in tight economic circumstances stemming from the pandemic.” “Rob is skilled in all areas of trademark law, but is particularly adept at diffusing potential conflicts: with a well-placed call, he can frequently smooth over issues and bring about amicable solutions. He gives practical advice that is easy to use in-house.” Another star of the show is Purvi Patel Albers, who sits in the WTR 1000 gold tier alongside Bell and Becker. Deploying encyclopaedic substantive knowledge as well as commercial acumen, she continues to work wonders for a world-leading technology company and has lately been expanding the firm’s media and entertainment practice, acting, for example, on behalf of Starz Entertainment with respect to global clearance, prosecution and enforcement. An anchor on the litigation side, William Nash is on hand for trademark and patent infringement skirmishes in courts across the land. Having spent over three decades in intellectual property, he is also a seasoned and savvy counsellor with a vibrant all-round practice.

King & Spalding LLP

Resolving conflicts is the special talent of King & Spalding’s trademark attorneys: the team has abundant experience in federal court trials, TTAB proceedings, ITC investigations and ICANN domain name arbitrations, and has developed a deep strategic playbook as a result. The group acquits itself with distinction on the prosecution and counselling side, too; here, its disputes know-how is a boon, as it promotes a forward-thinking, risk-wise approach to trademark protection. Austin-based Richard Groos runs the show in Texas. Testament to the quality he offers, he has acted as trademark counsel to The Home Depot for 20-plus years, advising it on all aspects of global trademark clearance, registration, enforcement, licensing and so on; notable is the large number of enforcement actions in China which he takes care of for the client. International sources call him “hugely knowledgeable and solutions oriented”.

Norton Rose Fulbright

Norton Rose Fulbright has specialists stationed in Austin, Dallas, Houston, San Antonio, New York and Minneapolis, who collectively deliver an extremely rigorous trademarks service. Each year, the firm handles hundreds of searches, filings, TTAB proceedings, infringement lawsuits and IP-driven transactions; in the process, it has cultivated a holistic understanding of the ingredients that go into strong, distinctive market identities, and how those play into the achievement of business objectives. Collaborating with colleagues in Canada, Europe and Asia, the US team is also well placed to guide clients at a global level. Recent developments include the naming of Austin’s Alicia Morris Groos as head of brands for the United States. She’s a prime pick for the position, given the “incredible job she does representing top companies on prosecution, licensing, enforcement and litigation”. “Alicia has a wonderful attitude and is one of the most responsive lawyers you could ever work with, which is a huge help given how fast business moves these days – it’s as if she’s working around the clock seven days a week.” Called on for projects of strategic importance, she recently assisted Tiff’s Treats – which has dozens of stores in Texas and other states, and a prominent online presence – in connection with federal trademark registration of its unique baker box trade dress. The person to look to in Dallas, meanwhile, is Linda Merritt, a doyenne of international trademark protection. Defending US oppositions is a task she has been busy with lately – and one she performs with alacrity.

Pirkey Barber PLLC

“Pirkey Barber provides an exceptional service characterised by speed, responsiveness and subject-matter and practical proficiency. The firm is best in class.” The depth of its bench – and the exceptional degree of specialisation in brands that goes along with it – is a distinguishing feature and one reflected in the WTR 1000 rankings, which feature no fewer than 13 of the roster’s top professionals. Experience counts for a lot and in Louis Pirkey, William Barber and Shannon Vale the line-up contains three of the most seasoned trademark vets in the country. Pirkey has been in the game for over five decades and made the difference for countless clients; having served as an INTA board member and as president of the AIPLA, for many other stakeholders in the IP market, too. Sources point out that “it was Lou who, from the beginning, set the resolutely client-first mentality of the group”. “Barber is a specialist in the truest sense and has an amazing knowledge of US trademark law. He understands business and the needs of in-house attorneys, and works incredibly hard to exceed expectations. Across the trademark lifecycle, the guidance he gives is always pragmatic.” Vale is appreciated as “an excellent listener with a detail-oriented and commercial mind and an eye for creative solutions.” Superb grades are awarded to many others, including Sherri Eastley, Christopher Kindel, Wendy Larson, Steve Meleen, Christopher Graff and Anna Kuhn. International sources speak highly of Eastley, as “a perfectionist in the best sense and wonderfully smart”. She’s a go-to on all manner of trademark tasks, but has a special facility for sponsorship, licensing, endorsement and co-branding matters. Kindel – a member of the management committee – is also gifted in the transactional IP context, but showcases impressive portfolio management, enforcement and strategic counselling skill. “His advice is easily actionable and his risk assessments show an attuned business sense.” Litigation is the metier of Larson, a noted authority on internet-related brand issues. “She works towards commercial resolutions, but is ready to litigate to judicial outcomes if need be. She partners closely with corporate trademark counsel and, much more than a hired gun, is a valuable team member.” Attesting to this are the longstanding relationships she has formed with many patrons. Meleen also has a strong contentious focus, with a flair for online challenges: “There is nobody more trustworthy when it comes to handling complex litigation than Steve. His approach to enforcement situations is sound, thoughtful, strategic and practical.” Graff, who has won awards for client service and been recognised in the WTR 1000 for many years, handles complex global projects with composure. “Anna has valuable in-house experience which informs her pragmatic and commercial approach. Her counsel is ready to put into action right away, so you can crack on with business.” Another standout feature of the firm is the quality of its up-and-coming practitioners – Steven Espenshade, Travis Wimberly, Jered Matthysse and Alexandra Bistline among them. “Steven is a great negotiator with a strong sense of clients’ risk tolerance. He has great ideas about how to structure arrangements and never shies away from new and unusual projects where there’s not a lot of black-letter law to fall back on. He really understands new social and digital media, too.” “Travis sees issues in the round, which enables him to drive the best possible outcomes. He has a great sense of when to step back and let the client take the lead, and when to step in and redirect.” Like Wimberley, Matthysse is making his mark as a litigator; his clear, commercial head serves him well as a problem solver. Also on the contentious end, Bistline “catches on very quickly whatever scenario you throw at her and is ridiculously sharp”. Her approach is “calm, methodical, calculating, strategic and results focused”. Astute recruitment in 2020 has enriched Pirkey Barber even further; former Norton Rose Fulbright partner and long-time leader within INTA Michael Metteauer is one of the most seasoned among new arrivals.

Richard Law Group

Positive feedback pushes Richard Law Group into the WTR 1000 silver tier for 2021: “Deserving of higher recognition, the firm is small but mighty and can handle an awful lot of work. It has excellent lawyers, too, in Molly Buck Richard and Jim Struthers.” Richard is a “seasoned litigator with smart strategies” and “represents clients zealously while being reasonable”. “She is fantastic all round and someone whom everyone respects and admires.” “Jim can quickly analyse complex issues and map out forward paths with exceptional clarity. You can send work to him without hesitating, knowing you’re in safe hands.” Cut from a similar cloth is rising star David Diamond; he prosecutes with exactitude, manages portfolios with care and, when necessary, litigates with determination.

Thompson & Knight LLP

“Thompson & Knight can handle all your IP needs, from the preparation and filing of applications to compliance issues and litigation – and its service and expertise are stellar.” No mere filing mill, the firm is in its element advising on more strategic matters around brand building; its lawyers are big-picture thinkers who work well with business executives and understand what makes clients tick. Herbert Hammond, the senior-most attorney on deck, has evolved his practice in this direction and is a sought-after counsellor. He did a lot of litigation earlier in his career which gives him an edge – he spots issues before they become major problems and works through and around them to get clients to where they need to be. Litigation remains a forte for the team, with success being driven by IP section leader Max Ciccarelli. His track record in complex disputes involving all kinds of IP rights is a distinguished one. Being unafraid to push boundaries has served him well in his career.

Other recommended experts

The top trademark expert at Vinson & Elkins, Scott Brown provides a well-calibrated prosecution service to a diverse clientele that includes leading Texas craft brewer Real Ale Brewing Company, global asset management company Hudson Advisors and life biological testing entity Luminex Corporation. For the latter two, he puts in place protections all over the world – a task he excels at. Pillsbury’s Edward Cavazos is one of the best transactional IP experts in Texas. The former general counsel is a savvy negotiator of all kinds of IP and technology-driven deals, his table tactics informed by extensive IP litigation experience. Elisabeth Evert of Hitchcock Evert upholds a worldwide reputation for meticulous strategic IP planning, prosecution, enforcement and licensing. Deeply knowledgeable about trademarks and a registered patent attorney, she serves a diverse base of IP-rich clients. Dickinson Wright’s Alison D Frey fulfils a broad counselling role for rights holders and sees them safely through disputes at administrative and judicial levels. They include a leading special subjects media company, whose expanding portfolio she manages diligently worldwide. Heading up Greenberg Traurig’s Texas IP practice, Dwayne Mason is a protean IP professional with a deft portfolio management touch and sterling contentious credentials. Based in Houston, he has his fair share of energy clients and is a great fit for them, too, given his blend of trademark and patent expertise. One of Seyfarth Shaw’s crack enforcers, Lisa H Meyerhoff engenders loyalty – and gets results – because she cares about the brands she protects and takes her work personally. She doesn’t go through the motions but brings intensity and a laser focus to litigation; sources back this up, citing her as a “pragmatic, aggressive and first-rate litigator” and a “phenomenal asset to have on your side”. John Patton has a broad IP compass and is at home taking the lead on disputes and transactional matters across the IP spectrum. The Patton Law Group chief takes a business-aligned approach and gets to the heart of matters quickly. Dallas-based Fish & Richardson senior principal Russell Rippamonti is a go-to for petroleum industry companies for patent and trademark portfolio management. The former petroleum engineer speaks the language of his clients, which makes for efficient and easy communication and advice informed by industry expertise. Paul Van Slyke has had an illustrious career in intellectual property, with many litigation high points. The Hoover Slovacek senior counsel leverages decades of courtroom experience across the country in dispensing astute strategic disputes counsel.

Individuals

  • 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
  • Reagan Fibbe - Fibbe Lightner LLP
  • Alicia Morris Groos - Norton Rose Fulbright
  • Robin Lightner Maisashvili - Fibbe Lightner LLP
  • Michael Scott Metteauer - Pirkey Barber PLLC
  • Louis T Pirkey - Pirkey Barber PLLC
  • Paul Reilly - Baker Botts LLP
  • Molly Buck Richard - Richard Law Group
  • Jim Struthers - Richard Law Group
  • Shannon T Vale - Pirkey Barber PLLC
  • Max Ciccarelli - Thompson & Knight LLP
  • Sherri L Eastley - Pirkey Barber PLLC
  • Elisabeth A Evert - Hitchcock Evert LLP
  • Christopher L Graff - Pirkey Barber PLLC
  • Richard J Groos - King & Spalding LLP
  • Dyan House - Baker McKenzie
  • Christopher M Kindel - Pirkey Barber PLLC
  • Anna Kuhn - Pirkey Barber PLLC
  • Wendy Larson - Pirkey Barber PLLC
  • Steve Meleen - Pirkey Barber PLLC
  • Linda M Merritt - Norton Rose Fulbright
  • Lisa H Meyerhoff - Seyfarth Shaw LLP 
  • Elizabeth K Rucki - Baker Botts LLP
  • Alexandra Bistline - Pirkey Barber PLLC
  • W Scott Brown - Vinson & Elkins LLP
  • Edward A Cavazos - Pillsbury Winthrop Shaw Pittman LLP
  • David Diamond - Richard Law Group
  • Steven M Espenshade - Pirkey Barber PLLC
  • Alison D Frey - Dickinson Wright 
  • Herbert J Hammond - Thompson & Knight LLP
  • Rob LeBlanc - Haynes and Boone LLP
  • Dwayne Mason - Greenberg Traurig LLP
  • Jered Matthysse - Pirkey Barber PLLC
  • William B Nash - Haynes and Boone LLP
  • John W Patton - Patton Law Group
  • Russell N Rippamonti - Fish & Richardson
  • Travis Wimberly - Pirkey Barber PLLC

Luminaries

  • Paul C Van Slyke - Hoover Slovacek LLP