Elizabeth C. Buckingham
PEOPLE

Elizabeth C. Buckingham

Partner
buckingham.elizabeth@dorsey.com

Overview

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

Admissions

  • Minnesota
  • 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

Experience

Representative Work

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. 

Representative Enforcement

  • 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). 

Representative Transactions

  • 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

Articles

Launched July 8, 2017:  New USPTO Rules to Clear “Deadwood” in the Federal Trademark Registry
USPTO Proposes Streamlined Cancellation Procedures
How to Combat the Growing Problem of Cybersquatting, NRECA Legal Reporting Service
The Ex Parte Appeal of a Refusal in the United States, Part Two: Strategies for a Successful Appeal, INTA Bulletin
The Ex Parte Appeal of a Refusal in the United States, Part One: Whether to File an Appeal, INTA Bulletin
TTAB or Federal Court: Where to Litigate a U.S. Trademark Dispute? Part Two: Civil Lawsuits in Federal Court, INTA Bulletin
TTAB or Federal Court: Where to Litigate a U.S. Trademark Dispute? Part One: Board Proceedings, INTA Bulletin
Letters of Protest: An Attractive Alternative to a U.S. Opposition, INTA Bulletin
Eight Tips for Licensing Trademarks in a Web 2.0 World, INTA Bulletin

News & Press Mentions

54 Dorsey Lawyers in Minneapolis Selected for Inclusion in The Best Lawyers in America 2019 and 2019 Lawyers of the Year
Seventeen Dorsey Attorneys Ranked 2018 IP Stars
Women in Business Awards 2018: Elizabeth Buckingham
Chambers USA 2018 Recognizes Dorsey Lawyers and Practices in Minnesota
Dorsey Congratulates Partner Elizabeth Buckingham on Being Named 2018 MSPBJ Women in Business Honoree
Dorsey Recognized in Managing Intellectual Property 2018 Global IP Survey
Business Journal Announces First Round of Women in Business Honorees
Dorsey Receives 2018 Managing IP Americas Award
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
51 Dorsey Lawyers in Minneapolis Selected for Inclusion in The Best Lawyers in America 2018 and 2018 Lawyers of the Year
Chambers USA 2017 Recognizes Dorsey Lawyers and Practices in Minnesota
Chambers USA 2017 Recognizes Dorsey Lawyers and Practices
Twelve Dorsey Attorneys Named 2017 IP Stars
Dorsey’s Trademark Lawyers Honored in World Trademark Review 2017
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
48 Dorsey Lawyers in Minneapolis and Fargo Selected for Inclusion in The Best Lawyers in America 2017 and 2017 Lawyers of the Year
Chambers USA 2016 Recognizes Dorsey Lawyers and Practices in Minnesota
Chambers USA 2016 Ranks Dorsey Lawyers and Practices
Dorsey Partner Elizabeth Buckingham Recognized as a WIPR Leader
Thirteen Dorsey Attorneys Named 2016 IP Stars
Dorsey’s Trademark Lawyers Honored in World Trademark Review
45 Dorsey Lawyers in Minneapolis and Fargo Selected for Inclusion in "The Best Lawyers in America®" 2016 and "Best Lawyers of the Year"
Nine Dorsey Attorneys Named 2015 IP Stars
Chambers USA 2015 Recognizes Dorsey Lawyers and Practices in Minnesota
Eight Dorsey Attorneys Named 2014 IP Stars

Legal Writings

  • Chapter 11, The IP Book, Minnesota CLE, “Key IP Legal Trends 2018-19 in Brief – Food, Beverage and Restaurant Industries,” September 2018

Select Presentations

  • “#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
  • Healthcare
  • Indian & Alaska Native
  • Intellectual Property Litigation
  • Legal Project Management
  • Mergers & Acquisitions
  • Technology Commerce
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • 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 

Community Involvement

  • 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 

Accolades

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 

  • 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

World IP Review Leaders 2016 - USA    World IP Review Leaders 2017

  • 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
Elizabeth C. Buckingham