Donna Schmitt

Ranked in United States: Missouri
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Recommended - Individuals

Rigorous in prosecution and relentless in litigation, Armstrong Teasdale can assist brand owners in many meaningful ways. The firm has lately been on an expansion drive, opening eight new offices over the past two years in a move which has significantly increased its accessibility to clients. Meanwhile, its collaborative ethos ensures that the right expertise is tapped for each individual brief. Leading the trademark practice is seasoned trademark attorney Donna Schmitt, a smart portfolio manager whose remit also encompasses licensing and enforcement work. She leverages her in-house experience to provide detailed, business-oriented solutions that benefit clients both commercially and legally. “Donna is an excellent trademark attorney who is trustworthy and reliable. She provides invaluable practical and holistic advice which is always tailored to the specific business or issue. She is calm, cool, methodical and patient in her work and with her clients. She is a brilliant mentor and a true pleasure to work with.” Courtney Jackson is another highly regarded trademark prosecutor who is adept at portfolio management and dispenses sage counsel on marketing and advertising issues. Her broad trademark knowledge is highly sought after by A-listers from a host of industries.

Donna Schmitt's Profile

Donna Schmitt leads Armstrong Teasdale’s trademark services practice area. She strategically manages global trademark portfolios and advises clients on copyright, trade dress and trade secret matters. Businesses in a variety of industries look to her to handle domestic and foreign trademark prosecution and for guidance on trademark selection, use, registration, policing, protection, infringement and enforcement. She also advises on commercialisation of intellectual property through licensing. Further, Ms Schmitt counsels on domain name registration and use of trademarks and copyright in social media.

As part of her practice, Ms Schmitt works to identify trends and new tools to enforce IP rights, including efforts to curb the sale and distribution of counterfeit and knockoff products from electronics to personal care items. She manages oppositions and cancellations at the US Trademark Trial and Appeal Board, as well as in dozens of foreign countries. She develops and implements customs enforcement programmes for her clients and, due to her in-house experience, incorporates business solutions along with legal options.

Ms Schmitt’s experience and current practice includes entities that provide goods and services in an array of industries. She is a member of Armstrong Teasdale’s healthcare and life sciences industry team, representing numerous entities, including local, regional and global healthcare systems and technology and investment companies focusing on this industry. She is also a member of the firm’s fashion and design practice area, representing large international luxury brands and local and international fashion entrepreneurs.

Firm Profile

For more than a century, Armstrong Teasdale has forged long-term relationships with clients large and small around the globe. Since our founding in 1901, we have grown to be one of the 200 largest US law firms, with offices throughout the United States and in the United Kingdom.

Our attorneys work together to guide clients through virtually every challenge, from day-to-day operational decisions to some of the most complex legal matters.

Some of the world’s best-known companies turn to Armstrong Teasdale for the global management and protection of trademarks, trade dress and internet-related assets.

Our IP attorneys and professionals have a broad range of experience, including former in-house counsel for some of the most widely recognised global brands. They are experienced in the preparation and prosecution of trademark and service mark applications domestically and around the world, as well as opposition and cancellation efforts before the Trademark Trial and Appeal Board of the US Patent and Trademark Office (USPTO).

The trademark team works closely with lawyers in the copyright, patent, international, corporate and litigation practice areas, among others, to ensure clients’ rights are protected and enforced worldwide. This close collaboration offers each client the full benefit of our attorneys’ knowledge in every situation.

The services we provide to our clients include:

  • conducting trademark searches and providing risk analyses associated with the adoption and use of new trademarks, service marks, trade dress, logos and slogans;
  • filing and prosecuting trademark applications and maintaining registrations around the world;
  • negotiating and advising clients on inbound and outbound trademark licences and consent, co-existence and other related agreements;
  • advertising, marketing and social media content review and counselling, including the creation and implementation of marketing promotions, sweepstakes and contests;
  • product and packaging review and counselling;
  • monitoring and enforcing trademark rights around the world, including watch notice services, online marketplace research, oppositions, cancellations, and trademark and trade dress litigation;
  • enforcing proper use of trademarks online and in court;
  • strategising and coordinating investigations and enforcement actions against counterfeiters in the United States, China and across the globe; and
  • conducting IP due diligence and related aspects of complex business transactions, specifically brand acquisitions and divestitures.

Armstrong Teasdale also has cases pending for IP clients in nearly every country in the world. For many clients, we manage international portfolios. Our current international docket consists of over 10,000 files.

In addition, our attorneys consistently earn recognitions based on their depth of experience, including in Chambers USA; Super Lawyers and Rising Stars; The Best Lawyers in America; and top-tier rankings for trademark law, patent law, patent litigation and IP litigation in US News & World Report’s Best Law Firms list. In addition, partner Courtney Jackson was recently named one of the top 200 USPTO representatives in the country by Trademark Now.

More broadly, our IP practice group guides its clients through all aspects of the acquisition, licensing, application, protection and enforcement of their IP rights, including patents and trademarks. This includes supporting clients such as inventors, manufacturers, universities, private equity firms and others with a focus on driving technological advances.

From patents to trademarks, copyright to licensing, and technology transfers to opinion work and due diligence, our attorneys have the background and experience to protect clients’ most valuable assets in today’s competitive market. Our professionals have advanced degrees in a variety of technologies, including the chemical, biotech, electrical and mechanical areas, and understand the complex inventions and ideas for which they advocate. They guard those innovations using a number of different strategies best suited for each client’s business application, including copyright; IP litigation; non-compete and trade secrets; patents; post-grant and inter partes review proceedings; and trademarks.

We frequently manage not only a team of lawyers working together in our firm, but also coordinate carefully with inventors and other client representatives. As one of our core values, we believe teamwork is key to achieving optimal results and as such, our attorneys work seamlessly across Armstrong Teasdale’s global network, which includes attorneys with experience in other areas such as technology licensing, international law and M&A. This holistic approach enables our attorneys to provide guidance on the broader implications of our clients’ IP matters.
 

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