The Legal 500 > United States > United States > Trademarks: non-contentious (including prosecution, portfolio management and licensing)

Clients value Finnegan, Henderson, Farabow, Garrett & Dunner LLP for its ‘forward-looking strategic decisions’ and ‘broad and deep legal expertise’. Danny Awdeh, hailed for his ‘tremendous legal expertise and impeccable judgment’, leads the practice, which undertakes the full spectrum of non-contentious matters. Awdeh recently assisted InterContinental Hotel with the expansion of its brand portfolio through the launch of AVID and VOCO and alongside Douglas (Chip) Rettew acted for Varsity Brands regarding the IP considerations of its $2.5bn purchase by Bain Capital. Mark Sommers is an ‘exceptionally good attorney' and is lead counsel to Petco, routinely filing and prosecuting trademark applications domestically and internationally for the client. Boston-based associate Laura Johnson is recommended. Named partners are based in Washington DC.

Sector expertise for Baker McKenzie LLP spans industries such as pharmaceuticals, fashion, financial services, technology and retail. Nielsen is one of many new clients and recently engaged Lisa Rosaya on global filing strategies, trademark prosecution and portfolio management. Pamela Church serves as practice head and represents The CS Lewis Company, managing the trademarks relating to the works of the late CS Lewis, which include The Chronicles of Narnia novels. Lisa Parker Gates is based in Chicago alongside the well-regarded David Davis; she advises Liberty Mutual on a variety of global brand protection and enforcement strategies. Named partners are located in New York unless otherwise stated.

The practice at New York-based Cowan, Liebowitz & Latman, PC is praised for its ‘excellent’ attorneys, ‘client-oriented’ service and ‘outstanding expertise’. It acts on the full range of domestic and international trademark prosecution matters and is jointly led by Lynn Fruchter and the ‘highly responsive’ Deborah Squiers. Fruchter recently acted for Sony Pictures Entertainment, supervising international trademark registrations for the merchandising of Jumanji, Men in Black and Ghostbusters. In another highlight, the 'outstanding' Jeffrey Epstein handled the searching, clearance and filing program for the worldwide rebranding of Liberty Interactive Corporation as Qurate Retail. Other recommended names are Mary Kevlin, William Borchard and the ‘very friendly and attentive’ Joel Karni Schmidt.

Dechert LLP is well regarded for searching and clearance matters as well as prosecution and portfolio management. Glenn Gundersen and Jeffrey Plies chair the practice, which notably represents Apple. In a recent highlight, Gundersen advised Willis Towers Watson on a wide range of trademark-related matters, including infringement and enforcement issues. Jennifer Insley-Pruitt and Spencer Joffrion are new arrivals, joining from Fross Zelnick Lehrman & Zissu, P.C. and Cravath, Swaine & Moore LLP respectively.

DLA Piper LLP (US) ‘approaches everything from a business perspective’ and ‘excels in client service’. Ann Ford, valued for the quality of her ‘counsel and business acumen’, coordinates all trademark and other IP-related issues on behalf of CFA Institute. Frank Ryan delivers ‘outstanding guidance’ and heads the group with San Francisco-based Gina Durham and Ford. High-profile clients include Nike, Al Jaazera, ESPN and also Dr Seuss Enterprises, which Ryan Compton advises on prosecution, licensing and enforcement issues. Keith Medansky is a key figure in the Chicago office. Other partners are based in Washington DC unless stated otherwise.

Hunton Andrews Kurth LLP is adept in portfolio management, prosecutions and Trademark Trial and Appeal Board (TTAB) proceedings. Edward Colbert and Susan Smith are the key names in Washington DC, with Colbert chairing the practice alongside Houston-based Jeff Dodd. New York-based James Rosini is also recommended.

K&L Gates is particularly active in the fashion industry, serving as counsel to Abercrombie & Fitch on enforcement matters and the registration of new marks. TripAdvisor is also a client and has engaged the firm for international clearance, prosecution, maintenance and enforcement matters. Other key clients include MannKind, Valve Corporation and The Procter & Gamble Company/Gillette. The team was recently bolstered by the arrivals of Washington DC-based Susan Kayser from Jones Day and Christopher Fahy, who joined the Chicago office from Quarles & Brady LLP. Co-head Pam Jacobson is highly rated in Seattle.

At McDermott Will & Emery LLP, the ‘very strong’ attorneys provide ‘solid support and deep knowledge’. The full spectrum of trademark-related matters is undertaken by the team, which includes Chicago-based co-head Jennifer Mikulina and the ‘strong business acumen’ of Joanne Ludovici. Richard Kim and Robert Zelnick handle filing, search, clearance, and enforcement matters for Amgen and the team also serves as counsel to Hitachi for US-related trademark matters. Jorge Arciniega is a name to note in the Los Angeles office, other attorneys are based in Washington DC unless otherwise stated. Mars, Hot Topic and 23andMe are also clients.

Baker & Hostetler LLP’s practice is headed by Deborah Wilcox in Cleveland and Washington DC-based Mark Tidman. It is particularly well regarded for portfolio management and maintains SPX FLOW’s worldwide collection of trademarks, routinely undertaking clearance searches and prosecuting trademark applications. The team also includes New York-based Robert Horowitz; he leads on enforcement, transactional and application matters for Sony both domestically and internationally.

Brinks Gilson & Lione, a full service IP boutique, is headed by Howard Michael and Andrew Avsec and is engaged by clients operating in the automotive, pharmaceutical, airlines, publishing and education sectors, among others. United States Federal Reserve and Apple Vacations are new clients and respectively engaged Michael and Bradley Lane for portfolio management. Michael also recently conducted worldwide clearance searches on behalf of Sallie Mae pertaining to the client’s credit card. Other work undertaken includes clearance, prosecution and licensing matters. Virginia Wolk Marino was recently promoted to shareholder. Named attorneys are based in Chicago.

Cooley LLP is active on both the domestic and international fronts, acting on a number of matters across the European Union and other overseas jurisdictions. The group handles all aspects of the selection, prosecution, protection and enforcement of trademarks and is particularly strong on licensing and brand expansion. In Washington DC, Peter Willsey notably assists Nintendo of America and Mozilla Corporation with the enforcement of their trademark rights. Counsel John Crittenden is also a key member of the team; he operates from San Francisco and manages the worldwide trademark portfolio of Yelp!

Noted for its ‘strong IP capabilities’, Greenberg Traurig LLP counts high-profile names such as Ralph Lauren, American Airlines, UPS and Caesars Entertainment Group among its clients. The practice, chaired by Chicago-based Mark Galis and Susan Heller in Orange County, advises clients on selecting, building, protecting, enforcing and monetizing their trademarks on a global scale. Work highlights included assisting CrossFit with the establishment of various new trademark licenses and, in the entertainment space, respectively advising Jennifer Lopez/JLO Holding Company and Katy Perry/Killer Queen on worldwide trademark clearance and strategy.

Jones Day handles trademark clearance, prosecution, licensing and enforcement matters. In Cleveland, Carrie Kiedrowski  serves as counsel to the WikiMedia Foundation, helping the client with prosecution, opposition and enforcement matters arising from its portfolio of 2,000 trademarks in over 110 jurisdictions. Abercrombie & Fitch and Square Enix are also clients, with the latter entrusting the team for strategic portfolio management advice and to file and maintain US trademark applications and registrations. Cleveland-based Meredith Wilkes and John Froemming head the practice, which also includes Tracy Stitt and Jessica Bradley. Susan Kayser departed to join K&L Gates while Tom Vitt joined the firm’s Minneapolis office from Dorsey & Whitney LLP. Attorneys are based in Washington DC unless stated otherwise.

King & Spalding LLP is engaged by clients in a broad range of sectors, with a particular focus on food and beverages, retail and consumer products. Austin-based Richard Gross handles the global trademark portfolio of The Home Depot and heads the practice with Kathleen McCarthy, who operates from New York. The team is also engaged by Mary Kay and Steve Jackson Games for the respective enforcement and protection of each company’s brands. Other work undertaken includes trademark searching, clearance and licensing.

IP boutique Knobbe Martens Olson & Bear LLP is well regarded for protection, enforcement and portfolio management, both domestically and internationally. Susan Natland leads on assisting First American Financial with trademark selection, procurement and enforcement matters, while Diane Reed is responsible for trademark enforcement on behalf of Monster Energy. Other clients include Terra Tech Corp, The Rubicon Project and Mechanix Wear. Jeff Van Hoosear heads the practice. Named partners are based in Orange County.

The team at Morgan, Lewis & Bockius LLP has experience in portfolio management as well as IP-related transactions. Practice head Karen Butcher and Anita Polott serve as counsel to Anthem, managing its trademark portfolio and coordinating global clearance, protection and enforcement strategies. On the transaction front, Boston-based Rachelle Dubow along with Ron Dreben and Dana Gross handled the IP elements of Apollo Global Management’s acquisition of Qdoba Restraurant Corp. Urban Outfitters, Dr Pepper Snapple Group and Wayfair are also clients. Named attorneys are based in Washington DC unless otherwise stated.

Timothy Kenny heads the practice at Norton Rose Fulbright from Minneapolis and is a specialist in licensing, prosecution and strategic portfolio management. He represents several high-profile clients in enforcing their marks, both in the US and internationally. The team also includes Austin-based Alicia Morris Groos; she was recently engaged by a key client for federal trademark registration and brand protection, specifically on the internet and social media platforms.

Core strengths for Orrick, Herrington & Sutcliffe LLP include global portfolio management, trademark filings and clearance as well as IP-related due diligence. Recent work highlights include an engagement from BIC in which New York-based Peter Vogl assisted the client in combating gray goods and infringing products entering the US from China. The client roster encompasses clients from a vast array of industries and includes cloud computing company Salesforce.com. The client recently engaged Beth Goldman in San Francisco for counsel on trademark matters related to the Dreamforce Conference and also for clearance on its new mascots.