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.
Liz 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
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.
- Created and implemented strategy for client’s new Chinese character mark involving applying for several variations of mark and filing strategic non-use cancellations against potentially blocking registrations.
- 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.
- 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.
- Arabica Funding v. Blue Caribou Café (W.D. Mich.) (obtained consent judgment requiring defendant to change name and logo).
- Mayo Foundation for Medical Education and Research v. Mark Taheri (C.D. Calif.) (obtained consent judgment requiring defendant to change its MAYO DENTAL name).
- 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 summary judgment).
- 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.
- Negotiated multi-media publishing agreement on behalf of medical subspecialty association.
- Represented leading U.S. private schools in licensing of IP rights to schools in China and Malaysia.
News & Resources
News & Press Mentions
- Chapter 11, The IP Book, Minnesota CLE, “Key IP Legal Trends 2018-19 in Brief – Food, Beverage and Restaurant Industries,” September 2018
- “#Onlinemarketing: Legal Compliance in a Viral World,” Dorsey & Whitney Corporate Counsel Symposium, October 2018
- “IP Trends in the Food, Beverage, and Restaurant Industries,” The Midwest Intellectual Property Institute, September 2018
- “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
- Indian & Alaska Native
- Intellectual Property Litigation
- Legal Project Management
- Mergers & Acquisitions
- Technology Commerce
- Trademark, Copyright, Advertising & Brand Management
Professional & Civic
- International Trademark Association – INTA Bulletins Committee, Features Subcommittee, Member, 2010 to 2013; Chair, 2014 to 2015; Member, 2018
- International Trademark Association – INTA Bulletins Committee Project Team, Member, 2018
- 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
- Hennepin Avenue United Methodist Church -- Intentional Leadership Development Task Force, Chair; Board Member, Hennepin Foundation; Chair, Administrative Council and Executive Committee
- WomenVenture – Board of Directors; Member, Executive Committee
- Selected as a Women in Business Honoree 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
- Listed in Best Lawyers in America©, 2010-2019