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© 2012 Dorsey & Whitney LLP

  • Named as an "All Star-IP Attorney" for providing exceptional client service by the BTI Consulting Group, Inc., 2011
  • Listed in Best Lawyers in America, 2010-2012
  • Who's Who Legal USA: Trademarks 2006
  • Dorsey & Whitney Partner of the Year Award in 2001 for excellence in training and mentorship

  • Smith College (B.A., Government, 1985), magna cum laude, Phi Beta Kappa
  • Harvard Law School (J.D., 1988), Articles Editor, Harvard Journal on Legislation, 1987-88

  • Minnesota
  • The United States Courts of Appeal for the Seventh, Eighth and D.C. Circuits
  • The United States District Courts for the District of Columbia and the District of Minnesota

Elizabeth C. Buckingham

Partner
Minneapolis
P: (612) 343-2178
F: (612) 340-8856
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Liz Buckingham is a partner in, and former Chair of, Dorsey's Trademark, Copyright, Advertising and Brand Management practice group. She practices exclusively in the areas of trademark, copyright, entertainment, unfair competition and internet law. Her work includes brand management, counseling, prosecution, transactional work, implementation of enforcement strategies and litigation before courts and the Trademark Trial and Appeal Board.

Representative Work

  • Counseling and Prosecution
    • Clearance – advises clients on availability, registerability, and strength of marks
    • Prosecution – obtains trademarks, copyrights, and domain name registrations for clients and supervises foreign associates worldwide
    • Enforcement – monitors watch reports, prepares and responds to demand letters, institutes opposition and cancellation proceedings, and negotiates settlement agreements
    • Portfolio Management – analyzes clients' portfolios and implements strategies to strengthen and enforce existing rights and to develop new rights
  • Representative Litigation
    • Radisson Hotels International, Inc. v. Ron Schumaker (obtained domain name from cybersquatter in Uniform Dispute Resolution Policy proceeding)
    • Radisson Hotels International, Inc. v. Smith A (won domain name back from cybersquatter in Uniform Dispute Resolution Policy proceeding)
    • Edwards Lifesciences Corp. v. VigiLanz Corp. (TTAB published decision) (won dismissal of trademark opposition proceeding after trial)
    • General Cable Technologies Corp. v. National Rural Electric Cooperative Association (TTAB) (won dismissal of trademark opposition proceeding after trial)
    • Northland Products Company v. Farmers Union Industries, LLC (TTAB) (defeated applicant's summary judgment motion and obtained favorable settlement, including withdrawal of applications and stipulated injunction prohibiting future use)
    • Imation Corp. v. James Huxley aka OM Enterprises (won domain name back from cybersquatter in Uniform Dispute Resolution Policy proceeding)
    • National Institute on Media and the Family v. Kansas City Alliance for Nonviolent Programming (TTAB) (obtained summary judgment for registrant)
    • Imation Corp. v. Jean Streut (obtained domain name from cybersquatter in Uniform Dispute Resolution Policy proceeding)
    • Mayo Foundation v. PNS & WSS, Inc. (TTAB) (won opposition against publisher of medical newspaper)
    • S Industries, Inc. v. Centra 2000 (N.D. Ill; 7th Cir.) (obtained summary judgment of non-infringement and attorney's fees for computer software trademark; award of attorney fee's upheld on appeal)
  • Representative Transactions
    • Licensing – negotiates all manner of trademark and copyright licenses including product sponsorship, co-branding, publishing, and website development and content license agreements; prepares technology agreements including development, distribution, licensing, and dealer agreements
    • Mergers and Acquisitions – advises clients on strength and breadth of intellectual property of target companies and negotiates trademark and copyright aspects of purchase and sale agreements
    • Financing – handles trademark aspects of financings for lenders and borrowers, prepares and negotiates trademark security agreements, and gives opinion letters on behalf of borrower clients

Presentations

  • "Tops Tips for TTAB Advocacy" with Chief Judge Gerard F. Rogers, The Midwest Intellectual Property Institute, September 2011
  • "Letters of Protest: Attractive Alternatives to U.S. Oppositions," Moderator, Roundtable Discussion, International Trademark Association Annual Meeting, May 2011
  • "IP Basics: What Every Business Lawyer Should Know About Intellectual Property," Dorsey & Whitney Client Presentation, June 2010
  • "Licensing Trademarks in a Web 2.0 World," Moderator, Roundtable Discussion, International Trademark Association Annual Meeting, May 2010
  • "Buyer (or Seller) Beware: The Problems You Want to Know About Now, IP Due Diligence in Corporate Transactions (the known unknowns)," Presentation to Dorsey M&A Attorneys, July 2008
  • "Fair's Fair: Legally Using the IP of Others," Dorsey & Whitney Corporate Counsel Symposium, November 2006
  • "What Every Business Lawyer Must Know About Intellectual Property," Dorsey & Whitney Client Presentation, October 2006
  • "Verifying Trademark Use Before Filing: Practical Tips and Costly Mistakes to Avoid," The Midwest Intellectual Property Institute, September 2005
  • "Cybersquatting and Brand Protection on the Internet," Minnesota Chapter of the Association of Corporate Counsel Quarterly Lunch, June 2005
  • "Trademark Licensing: Advanced Strategies for Domestic and International Transactions," The Midwest Intellectual Property Institute, October 2004

Professional Activities

  • Twin Cities Business Magazine, Intellectual Property Advisory Committee, 2012
  • International Trademark Association – INTA Bulletin Committee, Features Subcommittee, Member, 2010 to present
  • William Mitchell College of Law – Intellectual Property Law Clinic, Guest Lecturer, Spring 2010
  • Minnesota Continuing Legal Education – Member, Planning Committee, The Midwest Intellectual Property Institute, 2004-09
  • Minnesota Intellectual Property Lawyers Association – Member, 1993 to present
  • International Trademark Association – Chair, Model State Trademark Bill Subcommittee, 1997-99; Member, U.S. Legislation Subcommittee, 1999-2001
  • Testified before Kansas Senate Judiciary Committee and Minnesota House and Senate Commerce Committees in support of bill to update trademark law (bill enacted in both states)

Civic & Community Activities

  • Hennepin Avenue United Methodist Church – Vice Chair, Administrative Council, Chair, Administrative Council and Executive Committee, Member, Koinonia Partnership Task Force
  • WomenVenture – Board of Directors, Member, Executive Committee

Attorney Articles

February 15, 2012
TTAB or Federal Court: Where to Litigate a U.S. Trademark Dispute? Part Two: Civil Lawsuits in Federal Court
February 1, 2012
TTAB or Federal Court: Where to Litigate a U.S. Trademark Dispute? Part One: Board Proceedings
February 15, 2011
Letters of Protest: An Attractive Alternative to a U.S. Opposition
October 15, 2010
Eight Tips for Licensing Trademarks in a Web 2.0 World
September 2005
"Use It or Lose It: The Risk to Licensing Trademarks in a Post-Medinol World," The Licensing Journal, co-authored with Johanna Sistek
November/December 2004
"Use It or Lose It: The Importance of Verifying Trademark Use," West Publishing's Findlaw for Legal Professionals website and Findlaw section of ACC Docket"
October 31 - November 6, 2003
"Madrid Translates Into Expedient Global Trademarks," Puget Sound Business Journal, co-authored with Gary Duvall
October 2003
"It’s a New World in Trademarks - The U.S. Joins The Madrid Protocol," (co-author, Gary Duvall) West Publishing's Findlaw for Legal Professionals website and Dorsey & Whitney LLP Intellectual Property Newsletter

News & Press Mentions

November 6, 2011
"Target's Patents Protect the Card," Minneapolis/St. Paul Business Journal (discussing intellectual property holding companies)
April 15, 2011
"Gander Mountain gun school sued over use of 'academy' moniker," Minneapolis/St. Paul Business Journal (explaining Gander's position in case)
February 15, 2011
"Corporate Counsel Name Favorite IP Lawyers," Law360 (sharing tips on how to provide excellent customer service)