Cathy Dahl
PEOPLE

Cathy Dahl

Senior Attorney
dahl.cathy@dorsey.com

Overview

CATHY’S CLIENTS SEEK HER GUIDANCE IN THE SELECTION, REGISTRATION, PROTECTION AND BROADENING OF RIGHTS IN THEIR TRADEMARKS.

Cathy’s practice is multidimensional with a strong focus on trademarks, including:

  • Domestic and international trademark clearance and availability opinions.
  • Trademark prosecution and maintenance, both domestic and international.
  • Policing and enforcing trademark rights, including domestic and international trademark opposition and cancellation proceedings. 
  • Strategic advise  for protecting and enforcing clients’  trademark rights on an international basis.
  • Trademark licensing.
  • Utilizing a broad range of experience in counseling clients in a wide variety of industries, including banking, medical products, retail, hotels, health care services, and consumer products. 
  • Applying her significant experience in due diligence investigation in mergers & acquisitions to ensure that Dorsey’s clients’ rights and interests are protected.

Cathy’s clients appreciate her business acumen and her practicality. Cathy particularly enjoys helping clients by giving advice that moves them forward efficiently and effectively to their business objectives.

Cathy is a contributor to Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com was named one of the “Top 50” law blogs by the ABA Journal in 2017.

Education & Admissions

The George Washington University Law School (J.D., 2006)

St. Olaf College (B.A., 1993)

Admissions

  • Minnesota

Experience

Representative Experience

Cathy works on a number of different matters in a given day, and particularly enjoys:

  • Overcoming difficult Office Actions issued by the United States Patent and Trademark Office.
  • Guiding clients on selecting and registering trademarks.
  • Working on transactional matters, researching the intellectual property in the transaction and perfecting the transfer of ownership.
  • Working with clients to develop a brand strategy and particularly expanding trademark rights outside of the United States.

News & Resources

Articles

Journey’s Trademark Squabble – Who’s Crying Now?
Coca-Cola – “Thums Down” on Evidence of Damages in Misrepresentation of Source in Cancellation Proceeding with Unresolved Territoriality Tension
“Dark Horse” Copyright Claim Against Katy Perry – Hoofing it on a Stairway to Heaven?
Coca-Cola Successfully Petitions to Cancel Trademark Registrations Based on Misrepresentation of Source
Highlights Part III of the Trademark Modernization Act of 2020: Letters of Protest and Shortened Office Action Response Times
Beyoncé Trademark Case Provides Evidentiary Lessons Before the TTAB
Supreme Court Upholds Registrability of BOOKING.COM Trademark and Rejects Per Se Rule for Generic.Com Trademarks
Are Color Trademarks on Product Packaging Inherently Distinctive?
Slap A Logo On It – The Future of Winning a Design Patent Infringement Claim?
Defending Lack of Reasonable Opportunity of Access in Copyright Infringement Claims – Inference is Insufficient
DuPont Factors of Likely Confusion – Long Term Co-Existence Without Confusion Deserves Consideration by TTAB
Trademark Abandonment – Round Up Your Trademark Use Intentions
Will TTAB’s First Precedential Decision of 2018 Lead to Better Quality Examination of Statements of Use?
TTAB Appeal Fees – Winner Does Not Take All
Booking it to the District Court
Improper Assignment of THE EMERALD CITY Mark – Registration Cancelled in Toto
Supplemental Registrations – Actually Worth a Hill of (Coffee) Beans
Hulk-Sized Damages in Sex Tape Privacy and Publicity Case

News & Press Mentions

Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms

Legal Writings

  • “Searching to Avoid Disaster,” – Trademark World Magazine, April 2010

Professional & Civic

Professional Achievements

  • International Trademark Association

Accolades

Contributed 50+ Pro Bono Hours in 2021 Contributed 50+ Pro Bono Hours in 2020

  • Contributed more than 50 Challenge pro bono hours, 2020-2021

North Star Lawyer logo 

  • MSBA North Star Lawyer, 2016-2020
Cathy Dahl