LIZ DEVELOPS EFFECTIVE BRANDING AND POLICING STRATEGIES FOR CLIENTS AND HANDLES CLIENTS’ IP MATTERS IN TRANSACTIONS.
Liz Buckingham is recognized both globally and nationally as a leading trademark attorney. As the head of Dorsey's Trademark, Copyright, Advertising and Brand Management practice group, Liz has been recognized by Chambers which writes that she “is highly esteemed,” “excels in trademark and copyright enforcement matters and is also noted for her counsel on the trademark aspects of corporate transactions.”
Clients come to Liz for her no-nonsense, common sense approach to intellectual property matters. With over twenty-five years of experience, she understands how to develop branding, policing, and licensing strategies that maximize results through cost-effective means.
Liz and Dorsey client Heather Redmond have written a treatise entitled Trademark Trial and Appeal Board Practice: A Comprehensive Review, which was published by ALM Media.
Education & Admissions
Harvard Law School (J.D., 1988), Articles Editor, Harvard Journal on Legislation, 1987-88
Smith College (B.A., Government, 1985), magna cum laude, Phi Beta Kappa
- U.S. Courts of Appeal for the Seventh, Eighth and D.C. Circuits
- U.S. District Courts for the District of Columbia and the District of Minnesota
Representative Brand Management
- Developed branding strategy for global rollout of new design and slogan for leading health care association.
- Analyzed complex settlement agreement binding on subsidiary acquired by client in deal and advised on ways to stay within the coexistence provisions and avoid triggering the onerous license provisions of the agreement.
- Counseled client on strategies to re-acquire ownership of trademark registrations based on inconsistent trademark filings and assignment recordals and a convoluted underlying settlement agreement.
- Obtained takedowns of numerous mobile apps, websites, and social media and email accounts that infringed copyright or trademark rights of food and beverage, health care, hospitality and retail store clients.
- Southeast Clinical Nutrition Centers, Inc. v. Mayo Clinic (N.D. Ga.) (obtained dismissal of trademark infringement complaint including court’s denial of any chance by plaintiff to file an amended complaint).
- Radisson Hotels International, Inc. v. Radisson Travels (obtained domain name 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).
- Represented Hillerich & Bradsby in connection with the sale to Wilson Sporting Goods of global brand, sales, and innovation rights relating to the LOUISVILLE SLUGGER mark, and related manufacturing and licensing arrangements.
- Handled trademark aspects of Premium Waters, Inc. acquisition of "Nicolet" and "Water Joe" brands previously owned by Artesian Investments, Inc.
- Represented Caribou Coffee Company, Inc. in the trademark aspects of its $340 million sale to a privately held German holding company.
- Handles trademark aspects of acquisitions and financings for Gander Mountain Company and represents company in negotiation of trademark, software and sponsorship licenses.
News & Resources
News & Press Mentions
- “IP Due Diligence in Transactions,” The Midwest Intellectual Property Institute, September 2017
- “IP in Construction and Engineering Deals,” Growing Construction & Engineering Companies Through Merger, Acquisition or Combination, May 2017
- “Don’t Be a Lame Duck in Enforcing and Protecting Your IP,” Dorsey & Whitney Corporate Counsel Symposium, November 2016
- “IP Due Diligence and Drafting in M&A Transactions, Dorsey & Whitney Client Presentation, March 2016
- “IP Due Diligence in Corporate Transactions,” Legal Issues in Contracts, December 2015
- “Top Tips for Responding to Cease and Desist Letters,” The Midwest Intellectual Property Institute, September 2015
- “Top Tips for Writing Cease and Desist Letters,” The Midwest Intellectual Property Institute, September 2014
- "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
Industries & Practices
- Cooperative Law
- Food, Beverage & Agribusiness
- Health Care
- Indian & Alaska Native
- Intellectual Property Litigation
- Legal Project Management
- Mergers & Acquisitions
- Technology Commerce
- Trademark, Copyright, Advertising & Brand Management
Professional & Civic
- International Trademark Association – INTA Bulletin Committee, Features Subcommittee, Member, 2010 to 2013; Chair, 2014 to 2015
- Twin Cities Business Magazine, Intellectual Property Advisory Committee, 2012
- 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
- Intentional Leadership Development Task Force, Chair
- WomenVenture – Board of Directors; Member, Executive Committee
- Selected as a Women in Business Honorees by Minneapolis/St. Paul Business Journal, 2018
- Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property), 2014-2018
- Selected for Who's Who Legal: Trademarks, 2018
- Named as an "All Star-IP Attorney" for providing exceptional client service by the BTI Consulting Group, Inc., 2011 and 2013
- Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013-2018
- Recognized as a World IP Review Leader (USA), 2016-2017
- Listed in "Top 250 Women in IP" by Managing Intellectual Property, 2013
- Recognized as an “IP Star” by Managing Intellectual Property Handbook, 2013-2018
- Selected for the International Who's Who of Trademark Lawyers, 2013-2015
- Listed in Best Lawyers in America©, 2010-2019