Evan Everist
PEOPLE

Evan Everist

Partner
everist.evan@dorsey.com

Overview

EVAN HELPS CLIENTS PROTECT AND EXPAND THEIR IP ASSETS THROUGHOUT THE WORLD.

Evan is a nationally recognized partner in Dorsey’s Trademark, Copyright and Advertising Group. He provides counsel to a wide variety of trademark and copyright owners in many industries, from multinational food and beverage companies with large international trademark portfolios and enforcement regimes to local non-profit organizations, international musical acts, professional athletes, digital art creators, and startups.

Evan’s practice encompasses all aspects of the trademark and copyright lifecycle, including the creation and implementation of trademark and copyright prosecution and enforcement programs in the United States and internationally, trade dress and product configuration issues, trademark dilution, trademark priority disputes, trademark abandonment issues, trade secret, false advertising, genericness claims, DMCA and platform takedowns, UDRPs, and matters before the Trademark Trial and Appeal Board (TTAB). He also advises clients on issues related to entertainment law (such as music royalties disputes and film production agreements), cannabis brand protection and enforcement, licensing, due diligence, social media, Internet domain names, hotel/event fraud, and emerging technologies such as NFTs (non-fungible tokens), cryptocurrency, and AI (artificial intelligence).

Evan is a co-manager of Dorsey’s critically acclaimed and award-winning IP blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising.

Before joining Dorsey, Evan was a law clerk for Judge Matthew E. Johnson in the Minnesota Court of Appeals.

Education & Admissions

University of St. Thomas School of Law (J.D.), summa cum laude

University of Minnesota, Twin Cities (M.M., Classical Guitar Performance)

Gonzaga University (B.A.), cum laude

Admissions

  • Minnesota
  • U.S. District Court for the District of Minnesota

Clerkships

  • Minnesota Court of Appeals, Honorable Matthew E. Johnson, 2013-2014

Experience

Representative Work

Technology, Internet, and Social Media Matters

  • Counsel clients on various AI (artificial intelligence) issues, including drafting AI policies, considering copyright infringement and ownership issues, and filing takedown requests with AI platforms, such as OpenAI
  • Advise clients on domain name cybersquatters using trademarks and personal names
    Prepare pleadings for domain name disputes under Uniform Domain-Name Dispute-Resolution Policy (UDRP)
  • Prepare and negotiate software license agreements and end-user license agreements
  • Advise clients on intellectual property issues relating to emerging technologies, such as NFTs (non-fungible tokens) and cryptocurrency, including advise related to infringing “meme coins”
  • Devise and implement strategies to deal with and prevent “housing pirates” that attempt to defraud attendees of large conferences and events that require hotel bookings

Trademark Clearance, Prosecution, and Maintenance

  • Provide counsel on the development, availability, registrability, and strength of proposed trademarks
  • Conduct trademark clearance searches 
  • Coordinate international trademark portfolios for market-leading clients
  • Work with local counsel to prosecute and maintain international trademark portfolios
  • Prepare and negotiate trademark license agreements

Trademark and Intellectual Property Enforcement

  • Protect world-famous brands and develop international trademark enforcement strategies for institutional clients
  • Advise clients on enforcement measures for misappropriation of trademarks, including demand letters, litigation, and trademark coexistence agreements
  • Represent clients before Trademark Trial and Appeal Board in trademark opposition and cancellation proceedings
  • Successfully leverage new reexamination and expungement proceedings under the Trademark Modernization Act (TMA)

Copyright Matters

  • Provide counsel on the creation and use of copyrighted works
  • Prepare copyright applications for various types of works, including secure tests, coll ections of photographs, collections of unpublished works, units of publication, serials, software, artwork, books, mag azines, etc.
  • File and respond to takedowns under the Digital Millennium Copyright Act (DMCA), including counter notifications, on various platforms and online stores such as Amazon, Alibaba, eBay, Etsy, Facebook, Instagram, Redbubble, TikTok, and Walmart
  • Protect copyrighted works and advise clients on defending claims of copyright infringement, including those from well-known copyright “trolls”
  • Prepare copyright assignment and work-made-for-hire agreements

Entertainment Law Matters

  • Advise world-famous musicians on various aspects of intellectual property protection, including developing trademark and copyright filing strategies
  • Advise clients on rights-clearance issues
  • Prepare and negotiate publishing, recording, and music licensing contracts
  • Assist clients with navigating performing-rights organizations such as BMI, ASCAP, and SESAC
  • Prepare and negotiate film production agreements
  • Represent musicians in royalties disputes with record labels and former bands
  • Negotiate name, image, and likeness (NIL) merchandising deals on behalf of professional athletes and their estates

Cannabis Intellectual Property

  • Conduct intellectual property due diligence for cannabis company mergers, acquisitions, and IPOs, including for cross-border matters 
  • Develop and deploy federal, state, and international trademark prosecution strategies for cannabis-related trademarks and successfully argue against refusals based on unlawful use in commerce 
  • Develop alternative protection strategies for cannabis brands and creative collateral, including seeking copyright registrations and design patents
  • Respond to and send cease and desist letters leveraging the nuance of geographic trademark rights in the cannabis context
 

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News & Resources

Articles

Extraterritoriality of the Lanham Act: Fearsome Watchdog or Muzzled Chihuahua?
Supreme Court’s Jack Daniel’s Decision Clarifies That Traditional Trademark Use “Does Not Receive Special First Amendment Protection,” Even When it Has Expressive Message
Supreme Court’s Jack Daniel’s Decision Clarifies that Traditional Trademark Use “Does Not Receive Special First Amendment Protection,” Even When it Has Expressive Message
So, Nine Justices Walk into a Bar… SCOTUS to Consider Role of Humor in Infringement and Dilution Claims
AI Artwork: Worth a Thousand Words, but Zero Copyright Protection?
Final Rules for Trademark Modernization Act in Effect This Weekend – New Nonuse Procedures Available and Shortened Office Action Deadlines on the Horizon
It’s a Hard Knock Life for Damon Dash’s Planned NFT Sale
FTC Finalizes Deals with Six CBD Companies
Fair Use Mashup Theory Ga-Fluppted by Ninth Circuit
#AdLaw – A Quick Wrap-Up From The 2020 ANA/BAA Marketing Law Conference
Court Trims Cannabis Company’s Prior Use Defense Based on Preemption by Federal Trademark Law
Dispute Over KIVA Trademark Continues to Smolder
FDA a Buzzkill for 15 CBD Companies
Time to Face the .MUSIC
INTA Boston: Highlights from Bean Town
Some CBD Trademarks Are Now Federally Registrable Based on New Guidance from the USPTO
American Airlines Flying High After Copyright Office Reversal
Hard Times With WHOIS? INTA Wants To Know
INTA SEATTLE – What You May Have Missed in the Emerald City
What’s up with WHOIS? The GDPR May Limit or Prevent Access to Domain Name Registration Information
Master of Your Domain – ACPA Damages Sought by Greg LeMond
KISS That Trademark Application Goodbye
THE DEVIL MADE ME DO IT
Phish Snared in Trademark Office’s Net Due to Phan Products
Ed Sheeran Gears up to “Get it On” in Another Copyright Lawsuit

News & Press Mentions

Dorsey’s Trademark Lawyers and Offices Ranked in 2024 World Trademark Review 1000
Dorsey Attorneys and Practices Recognized for Intellectual Property Strength by 2023 IP Stars
Dorsey’s Trademark Lawyers and Offices Ranked in the 2023 World Trademark Review 1000
Dorsey Partner Evan Everist Discusses Copyrighting AI-Generated Art
Dorsey & Whitney Names New Partners
Seventeen Dorsey Attorneys Ranked as Managing Intellectual Property 2021 IP Stars
IP Stars Recognizes Evan Everist as a 2020/2021 Rising Star
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
Jeffrey Cadwell and Evan Everist comment on .law and .legal gTLDs in World Trademark Review

Events & Speaking Engagements

Practical Approaches to Online Trademark Enforcement, Rocky Mountain IP Institute
Top Tips for Cease and Desist Letters, Midwest IP Institute
Webinar Playback: FB&A: Protection of Intellectual Property During the Lifecycle of a Consumer Food Product
Webinar Playback: Can I Use This? Practical Tips for Responding to Fair Use Inquiries
Practical Tips for Navigating Fair Use Inquiries, Midwest IP Institute
Top Tips on Writing Trademark Cease-and-Desist Letters, Midwest IP Institute
 

Industries & Practices

Cybersecurity, Privacy & Social Media
  • Advertising & Marketing
  • Artificial Intelligence
  • Banking & Financial Institutions
  • Cannabis
  • Creative Industries
  • Cybersecurity, Privacy & Social Media
  • Food, Beverage & Agribusiness
  • Healthcare & Life Sciences
  • Intellectual Property
  • Technology
  • Technology Commerce
  • Trademark & Copyright

Professional & Civic

Professional Achievements

  • International Trademark Association (INTA) – Member, Brands and Innovation Committee (2023 – Present) 

Community Involvement

  • Friends of the Minnesota Sinfonia – Board of Directors (2022 – Present)
  • MacPhail Center for Music – Board of Directors (2023 – Present)

Accolades

  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2023-2024
  • Named "Minneapolis Ones to Watch" in Intellectual Property Law and Banking and Finance Law by Best Lawyers®, 2021-2024
  • Named a Rising Star in Minnesota and Nationally by Managing Intellectual Property IP Stars, 2019-2023

Contributed 50+ Pro Bono Hours in 2020

  • Contributed more than 50 Challenge pro bono hours, 2020

     North Star Lawyer logo

  • MSBA North Star Lawyer, 2014-2020
Evan Everist