Charlene Krogh
PEOPLE

Charlene Krogh

Partner
krogh.charlene@dorsey.com

Overview

CHARLENE PARTNERS WITH CLIENTS TO CREATE AND EXECUTE BRAND MANAGEMENT STRATEGIES THAT ACHIEVE PROTECTION AND ENFORCEMENT GOALS AND RESULT IN ROBUST AND VALUABLE INTELLECTUAL PROPERTY ASSETS. IN ADDITION TO ADVISING ON BRAND STRATEGY AND PROTECTION AND ENFORCEMENT, CHARLENE ALSO COUNSELS CLIENTS ON AGREEMENTS, OPEN SOURCE SOFTWARE AND GENERATIVE ARTIFICIAL INTELLIGENCE, AND HAS DEEP EXPERIENCE IN THE ACQUISITION AND SALE OF INTELLECTUAL PROPERTY ASSETS.

Charlene is Chair of Dorsey’s top-ranked Trademark, Copyright and Advertising practice group.  Charlene serves as intellectual property counsel for small and large businesses in a wide variety of industries, including consumer products, cosmetics, financial services, telecommunications, software, and medical devices.  Charlene has extensive experience in all stages of the brand management process and her work includes representation of clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, assistance with demand letters and allegations of infringement, and assistance with take down requests related to online infringement, as well as prosecution of UDRP proceedings.

Charlene advises clients on open source licensing and compliance and generative artificial intelligence, and provides clients with trainings and seminars on the use of both. In addition, she works with clients in the development and execution of marketing promotions and counsels clients on substantiation related to advertising.  Charlene also has significant experience in transactions involving intellectual property, including due diligence, negotiation of agreements, and assistance with the transfer of intellectual property rights and recordation of security interests related to corporate transactions and asset purchase and sale agreements.

Charlene is the co-manager of Dorsey’s IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. Charlene is also the Pro Bono Coordinator for the Denver office of Dorsey & Whitney and authors Chapter 29 of The Practitioner’s Guide to Colorado Business Organizations.

Education & Admissions

University of Denver, Sturm College of Law (J.D.), Order of the Coif

University of Wisconsin - Madison (B.S., Political Science and Behavioral Science and Law)

Admissions

  • Colorado
  • U.S. Court of Appeals for the Tenth Circuit
  • U.S. District Court for the District of Colorado

Experience

Representative Transactions

  • Represented global provider of digital services and technology solutions for content creation and delivery to major motion-picture groups, television studios, digital content providers and advertising agencies in acquisition of a global, cloud based localization platform and distributed services firm
  • Represented world’s largest luggage company in $1.9 billion financing secured by portfolio of over 6000 intellectual property assets, including post-closing recordings
  • Leading hospitality company in acquisition of global brands and brand operations of hospitality company priced at $23 million
  • Represented oil and gas technology companies in the sale of all intellectual property, including primarily software technology, of both Canadian and United States entities to private equity firm, in a transaction valued at $140 million
  • World’s largest travel luggage company in $85 million acquisition of leading designer of protective cases for personal electronic devices
  • Leading travel luggage company in multiple acquisitions of international luggage and travel products companies
  • Leading consumer products company in multimillion dollar financing secured by portfolio of more than 4000 patent and trademark assets, including recordation of security interests throughout the world
  • File and prosecute Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints resulting in recovery of domain names for clients. Representative Cases:
      • Goodr LLC v. Michael Rader, Brandroot, WIPO Case. No. D2018-1171 (2018).  Represented consumer products company in contested Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding to recover domain related to client’s core brand, GOODR
      • Water Pik v. Piao Ying, WIPO Case No. D2014-2262 (2015). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of WATERPIK.ASIA domain name to client
      • Water Pik, Inc. v. Omar Motta, WIPO Case No. DAE2014-0003 (2014). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of WATERPIK.AE domain name to client
      • Gates Corporation v. Embelle Litumbe, WIPO Case No. D2013-0231 (2013). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of GATESBELTS.ORG domain name to client
      • Water Pik, Inc. v. OMNISOURCE D.D.S. L.L.C., WIPO Case no. D2008-1657 (2009). Successful UDRP complaint resulting in transfer of AQUA-PIK.COM and AQUAPIK.COM domain names to client
      • Water Pik, Inc. v. Don Bankston, WIPO Case No. D2010-1022 (2010). Successful UDRP complaint resulting in transfer of WATERPIKREVIEWS.COM domain name to client
  • Central Garden & Pet Company v. Doskocil Mfg Co., United States Trademark Opposition No. 91188816 (2013). Successful defense of trademark opposition and prosecution (including counterclaim) resulting in cancellation of adverse parties trademark registration. Case resulted in a published precedential decision of the U.S. Trademark Trial and Appeal Board (TTAB)
  • Strategy and management of numerous international actions resulting in recovery of country code top level domain names (ccTLD) from cybersquatters. Representative Cases:
      • Water Pik, Inc. v. Viviani Sacomori, WIPO Case No. DBR2013-0009 (2013). Strategy and counseling related to recover of WATERPIKDOBRASIL.COM.BR domain name on behalf of client. Management of international counsel in UDRP complaint preparation, filing and strategy
      • Water Pik, Inc. v. Omar Quadros Motta, WIPO Case No. DBR2015-0004 (2015). Strategy and counseling related to recover of WATERPIKBR.COM.BR, WATERFLOSS.COM.BR and WATERFLOSSER.Com.BR domain names on behalf of client. Management of international counsel in UDRP complaint preparation, filing and strategy
  • Counsel client with portfolio of thousands of trademark assets on global branding strategy including, clearance, registration and enforcement on a worldwide basis
  • Strategy and management of trademark portfolios for international companies in the consumer goods, health care, personal care, skin care, and medical device industries
  • Counsel and assist large foreign corporation with registration of trademark assets with customs agencies in numerous countries
  • Develop and assist with strategy for enforcement of trademark rights worldwide, including demand letter campaigns, negotiation of settlement, consent and coexistence agreements, registration of trademarks with customs agencies throughout the world, assistance with seizure actions and filing and prosecution of opposition and cancellation actions before the United States Trademark Trial and Appeal Board
  • Assist clients in strategy and planning related to launch of new generic top level (gTLD) domain name system, including counseling on registration with Trademark Clearinghouse (TMCH)
  • Successful enforcement of client copyright rights through notice and take-down procedure under the Digital Millennium Copyright Act (DMCA)
  • Assist large consumer products company on an ongoing basis with asset purchase and merger transactions resulting in transfer of hundreds of intellectual property assets. Assist with post-transaction recordation of title changes and security interest agreement against intellectual property assets in hundreds of countries
  • Assist clients with recordation of license agreements against international trademark assets

News & Resources

Articles

ANDY WARHOL’S PRINCE SERIES PORTRAITS HELD FAIR USE OF PHOTOGRAPH
Practice Update: Amendments to Canada Trademark Law to Take Effect June 17, 2019
Practice Update: Amendments to Mexico IP Law
Beyoncé, Coldplay and Ed Sheeran Skating Debuts – Solid Gold at the Olympics
Bringing Back the Oldies – Legislation for Equal Treatment in the Music Industry
In the Weeds Between Federal and State Law: Brand Name for Legal Marijuana Sales Denied Federal Registration
Practice Update: Publication of Mexican Bill for Trademark Opposition System
National Debate on Digital Privacy Shows No Signs of Slowing
Extreme Makeover Europe – Reforms to European Union Trade Mark Law
Second Chances – USPTO Trademark Pilot Program Allows for Amendments Based on Technology Evolution
Google Class Action Settlement: Are You In or Are You Out?

News & Press Mentions

Super Lawyers Recognizes Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers and Offices Ranked in 2024 World Trademark Review 1000
200 Dorsey Lawyers Selected for Inclusion in 2024 Best Lawyers in America, Lawyers of the Year, and Ones to Watch
Dorsey Attorneys Discuss IP Tips for Companies to Keep in Mind as Generative AI Tools Face Infringement Lawsuits
Dorsey Partner Charlene Krogh on How Employers Can Reduce Risk From Workers' Use of Generative AI
Dorsey Attorneys and Practices Recognized for Intellectual Property Strength by 2023 IP Stars
Chambers USA 2023 Recognizes Dorsey Lawyers and Practice in Denver
Chambers USA 2023 Recognizes Dorsey Lawyers and Practices
Super Lawyers Recognizes Five Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers and Offices Ranked in the 2023 World Trademark Review 1000
Six Dorsey Attorneys Named to Denver’s Top Lawyers 2023 List
Chambers USA 2022 Recognizes Dorsey Lawyers and Practices
Dorsey’s Trademark Lawyers and Offices Ranked in World Trademark Review 1000
Super Lawyers Recognizes Five Dorsey Lawyers in Denver
Six Dorsey Attorneys Named to Denver’s Top Lawyers 2022 List
Seventeen Dorsey Attorneys Ranked as Managing Intellectual Property 2021 IP Stars
Dorsey’s Trademark Practice Receives 2021 Readers’ Choice Awards
Super Lawyers Recognizes Six Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers Ranked in World Trademark Review 1000
Managing Intellectual Property Ranks Sixteen Dorsey Attorneys as 2020 IP Stars
Super Lawyers Recognizes Five Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers Ranked in World Trademark Review 1000
Managing Intellectual Property Ranks Seventeen Dorsey Attorneys as 2019 IP Stars
Chambers USA 2019 Recognizes Dorsey Lawyers and Practices
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review

Select Presentations

  • Speaker, The Best Offense is Defense: TTAB Defenses, 18th Annual Rocky Mountain Intellectual Property & Technology Law Institute, July, 2020
  • Speaker, Office Action Space: Case studies and Winning Strategies, 17th Annual Rocky Mountain Intellectual Property & Technology Law Institute, May 30, 2019
  • Panelist, To Use or Not to Use, 16th Annual Rocky Mountain Intellectual Property & Technology Institute, June 1, 2018
  • Tapped: Avoiding Bar Fights  (typical business disputes), November 2, 2017
  • Seminar Playback: Rock Bands, “Redskins,” & Registrations: The Federal Circuit Strikes Down Statute on “Disparaging” Trademarks, January 28, 2016
  • Presenter, gTLD Launch Update: Protection and Enforcement of Trademarks, 13th Annual Rocky Mountain Intellectual Property & Technology Institute, May 29, 2015
  • Presenter, Review of Recent TTAB Dilution Cases, 11th Annual Rocky Mountain Intellectual Property & Technology Institute, May 30, 2013
  • Presenter, Intellectual Property for Small and Start-up Businesses, Bard Center for Entrepreneurship, January 27, 2010
  • Presenter, Intellectual Property in the Age of Online News, Society of Professional Journalists, November 11, 2009
  • Presenter, Trademark Dilution Revision Act of 2006, Colorado Bar Association, Intellectual Property Section, June 2007
  • Presenter, Copyright in Music: The Basics, Licensing, and Issues in the Digital Age, CLE International Intellectual Property Conference, February 2007
  • Sixth Annual Intellectual Property & Technology Institute, June 4-6, 2008
  • Guest lecturer, Music Law and Licensing, University of Denver Sturm College of Law, Spring 2005 & Fall 2006
  • Presenter, Trademark Basics, Rocky Mountain Intellectual Property and Technology Institute, Colorado Bar Association, 2008
  • Presenter, Copyright Basics, Rocky Mountain Intellectual Property and Technology Institute, Colorado Bar Association, 2009

Industries & Practices

Cybersecurity, Privacy & Social Media
  • Advertising & Marketing
  • Artificial Intelligence
  • Banking & Financial Institutions
  • Cannabis
  • Creative Industries
  • Cybersecurity, Privacy & Social Media
  • Development & Infrastructure
  • Emerging Companies
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Franchise & Distribution Law
  • Healthcare & Life Sciences
  • Hospitality
  • Intellectual Property Litigation
  • Mergers & Acquisitions
  • Private Equity
  • Pro Bono
  • Sustainability
  • Technology
  • Telecommunications
  • Trademark & Copyright
  • Video Games

Professional & Civic

Professional Achievements

  • Author of Chapter 29 of The Practitioner’s Guide to Colorado Business Organizations
  • International Trademark Association
  • Colorado Bar Association
  • Denver Bar Association
  • Women’s Bar Association

Community Involvement

  • Board of Directors, Denver World Affairs Council DBA WorldDenver
  • Denver Bar Association “Wheels of Justice” bike riding team involved in the Courage Classic to benefit and raise money for Denver Children’s Hospital, 2007 – 2011
  • Volunteer instructor at Columbine Elementary School, Denver, 2009
  • Member WomenCook! Committee for Work Options for Women, 2008-2013

Accolades

Chambers USA 2023Chambers 2022Chambers USA 2021  Ranked in Chambers USA 2020  Ranked in Chambers USA 2019 Leading Individual  
Chambers USA 2018 Leading Individual  Ranked in USA Chambers 2017 Leading Individual   Ranked In - USA Chambers and Partners 2016 - Leading Individual 
 Ranked in Chambers USA 2015 - Leading Individual

  • Listed in Best Lawyers in America©, 2021-2024
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2014-2024
  • Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property), 2018-2023
  • Listed as a Top Lawyer in Denver by 5280 The Denver Magazine, Intellectual Property: Trademark, 2023
  • Named a Best Lawyers® Lawyer of the Year, Trademark Law, 2023
  • Recognized as a "Super Lawyer" for Intellectual Property by Colorado Super Lawyers, 2020-2022, 2024
  • Recognized as an “IP Star” by Managing Intellectual Property Handbook, 2018-2023
  • 5280 Top Lawyers Intellectual Property: Trademark, 2016-2020 and 2022
  • Dorsey & Whitney – Scales of Justice Team Award (The World Ventilator Foundation), 2021
  • Named "Up and Coming" by Chambers USA (Intellectual Property), 2015-2018
  • Recognized as a "Rising Star" by Colorado Super Lawyers, 2010-2017
  • Winner, "Up and Coming Stars," Law Week Colorado, 2009
  • Volunteer Lawyer of the Year, Denver Bar Association, 2009
Charlene Krogh