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
Gold - Individuals: enforcement and litigation
Silver - Individuals: prosecution and strategy
Mr Louis T Pirkey Mr William G Barber Barber PLLC (Austin TX) Mr Louis T Pirkey Mr Shannon T Vale Mr William G Barber
Gold - Individuals
A celebrated name in the United States and globally, Pirkey Barber provides gold-standard guidance throughout all phases of the trademark lifecycle; it lives and breathes the practice and is regarded by rights holders as a dynamic force for good in the world of brands. The firm has recorded impressive growth since it was established in 2006 and has landed some significant laterals recently, with the arrival of Alicia Morris Groos in 2021 and Michael Metteauer joining in 2020. Both are enthusiastically recommended by the market. Of Groos, one client comments: “Alicia has been handling our trademark work for many years and is a great partner to have. She has instilled best practices around using, maintaining and policing our marks, which have made a huge difference.” “Michael provides timely, thorough, proactive and practical counsel on trademark prosecution and enforcement. He takes the time to really learn his clients’ business and understand their commercial goals, so he isn’t giving legal advice in a vacuum.” Metteauer has settled in well and has assumed lead roles on teams handling important cases: he recently acted for Best Buy and subsidiary GreatCall in a trademark infringement suit (now settled) in the Southern District of California and – putting the spotlight on Pirkey Barber’s incredible breadth of expertise – represented a diversified multinational conglomerate on a wide range of matters, including clearance, domain name proceedings, social media takedowns, licensing agreements and much more. This work has given him an opportunity to link up with esteemed litigators including Bill Barber, Alexandra Bistline and Wendy Larson. Having taken on and won many important disputes, Barber has cultivated valuable strategic and worldly wisdom. A “compelling speaker”, Bistline is “becoming quite the star at Pirkey Barber”, according to peers at competing firms. A beacon for those grappling with online brand protection and enforcement challenges, Larson “has a gift for distilling complexity and making things easy to understand” – something that sets her apart as a “highly sophisticated lawyer”. Additional contentious firepower is supplied by several others, including veterans Louis Pirkey and Steve Meleen and rising stars Jered Matthysse and Travis Wimberly. Pirkey is a thought and practice leader with over four decades in the game and many notable accomplishments on his CV. Meleen recently secured a resounding victory for the Board of Regents of the University of Texas System in a suit against Longhornville Limited, which was incorporating the university’s well-known marks such as TEXAS FIGHT in its merchandise. The defendant was enjoined from using the relevant marks; had state registrations cancelled; was subjected to an order directing the USPTO to refuse registration of federal trademark applications; and was slapped with the university’s reasonable attorneys’ fees. With him on this, Matthysse – a member of the firm’s management committee – is constantly adding wins to his track record and distinguishing himself as a vigorous and tactically smart advocate. Wimberly is hailed as a “high-energy and conscientious lawyer with good listening skills, a creative mind and a passion for his craft”. He has teamed up with Pirkey to great effect on several recent cases and prevailed for De Boulle Diamond & Jewelry in an opposition against a defendant’s application to register the mark ANDRE-CHARLES BOULLE for furniture. This was an interesting matter in which the team presented evidence to show that Andre-Charles Boulle was a well-known 17th century French furniture maker; the result will have significant implications for applicants seeking to register the names of famous historical artists and creators as trademarks. Emphasising prosecution, portfolio management and counselling in their practices, Sherri Eastley, Shannon Vale, Anna Kuhn, Steven Espenshade and Christopher Kindel round out the firm’s list of WTR 1000 representatives for 2022. “Sherri provides clear, practical and commercial advice in a timely manner.” Senior counsel Vale elevates any trademark discussion by drawing on many years of global experience. Kuhn is an “exemplary lawyer in terms of responsiveness and knowledge. She sees the law in its business context and has great leadership skills”. Espenshade is recommended wholeheartedly by clients, who call him a “valuable extension of in-house teams” and highlight his efficiency and approachability. Kindel is endorsed for his rigorously commercial mindset and for the international support package he offers.
William G Barber specialises in trademark law, focusing primarily on litigation and policing, handling cases in federal courts across the United States and before the US Patent and Trademark Office (USPTO)Trademark Trial and Appeal Board. Experienced in all aspects of litigation, including jury and bench trials as well as appeals, Mr Barber also handles domain name disputes through the dispute resolution policies of the Internet Corporation for Assigned Names and Numbers. He also regularly assists clients with a wide range of trademark needs, including trademark policing strategies and programmes, trademark clearance and trademark prosecution.
Mr Barber served as chair of the USPTO Trademark Public Advisory Committee, has testified before Congress regarding reforms to the federal trademark dilution statute, and is a frequent author and speaker on various trademark and unfair competition topics. He is a past president of the American Intellectual Property Law Association and a past chair of the State Bar of Texas Intellectual Property Law Section.
Mr Barber has received a number of professional awards in his career, including Best Lawyers’ Austin Lawyer of the Year for Trademark Law (2012, 2015, 2017) and Intellectual Property Litigation (2013, 2016). Appearing in WTR 1000 since the inaugural edition, Mr Barber has been listed in the Gold band nationally in both the Prosecution and Strategy and Enforcement and Litigation categories, and heralded as a “legend in the field”. He has also been recognised in Chambers USA/Global, Expert Guides Trademark, Texas Super Lawyers, Trademark Law Experts and Who’s Who Legal: Texas/Trademarks.
Mr Barber received a BS in chemical engineering with highest honours from the University of Texas at Austin in 1984 and a JD with high honours from the University of Texas School of Law in 1987.
Pirkey Barber is one of the largest firms in the United States focusing on trademark and copyright law. Our offices are located in Austin, Texas and the Washington DC Metro area (Tysons VA) and our clients are located throughout the world.
Founded in 2006 with three partners, one associate and one paralegal, Pirkey Barber has grown to almost 50 attorneys and paralegals, all dedicated to establishing and defending our clients’ IP rights. Many of our clients are Fortune 500 companies, while others are prominent universities and growing entrepreneurial businesses. With a team of leading experts in the field, we have guided a wide range of extraordinary clients through dynamic shifts in technology and the world economy that have profoundly affected strategies for protecting and enforcing brands and content.
With decades of collective experience representing clients from a variety of industries, our attorneys specialise in trademark and copyright law and are experts in both prosecution and adversarial matters. We help clients large and small establish, promote, defend and enforce their rights as owners of valuable IP rights, including some of the most well-known trademarks in the world.
Experienced in all facets of trademark clearance and prosecution, Pirkey Barber counsel clients regarding brand selection and helps develop and implement global trademark strategies. Our attorneys regularly:
- perform preliminary trademark searches;
- analyse full searches performed by outside vendors;
- represent clients before the USPTO and the TTAB through all aspects of registration, from filing applications through ex parte appeal; and
- manage global trademark portfolios of all sizes.
Pirkey Barber helps companies minimise social media risks while maximising brand protection by advising on responsible and lawful social media use, conducting social media risk assessment, protecting IP assets and developing policies to promote collaboration between marketing and legal departments.
Pirkey Barber counsels clients seeking to acquire, protect and enforce copyright assets, and assist in obtaining registrations, assessing fair use claims, negotiating licenses, and asserting take-down notices or claiming safe harbour status under the Digital Millennium Copyright Act.
Pirkey Barber’s attorneys have represented defendants and plaintiffs in hundreds of trademark, copyright and domain name cases in federal and state courts, before the USPTO TTAB, and in arbitration proceedings under ICANN’s domain name dispute policies.
Pirkey Barber has established an international reputation for excellence and has been regularly recognised by industry experts. Pirkey Barber was the only trademark practice to have received a top-tier gold ranking in World Trademark Review’s inaugural edition of WTR 1000 for Texas in 2011 and again in 2020 and 2021. In addition, the 2021 edition of WTR 1000 accorded the firm a gold ranking nationally. The firm was awarded Firm of the Year by Managing Intellectual Property in 2015 and 2016 in the national trademark contentious category; won Firm of the Year awards in 2014, 2020 and 2021 in the US-prosecution South category; and, in 2013, 2015, 2016, 2017 and 2021 in the US-contentious South category. Managing Intellectual Property’s IP Stars has awarded us a Tier 1 ranking nationally in the trademark contentious category for the past four years and Tier 2 in the trademark prosecution category for the past three years. Pirkey Barber also enjoys a Tier 1 firm ranking in the Best Lawyers Best Law Firms listings published by US News Media Group.