Evan Everist
PEOPLE

Evan Everist

Associate
everist.evan@dorsey.com

Overview

EVAN HELPS CLIENTS PROTECT AND EXPAND THEIR BRANDS THROUGHOUT THE WORLD.

Evan is an associate in Dorsey’s Trademark, Copyright and Advertising Group. He provides counsel to a wide variety of trademark and copyright owners in many industries, including multinational corporations with large international trademark portfolios, local non-profit organizations, and international musical acts.

Evan’s areas of practice include implementing trademark and copyright prosecution and enforcement programs in the United States and internationally, trade dress and product configuration issues, trademark dilution, trademark priority disputes, trademark abandonment issues, trade secret, false advertising, genericness claims, and matters before the Trademark Trial and Appeal Board. His practice also includes matters relating to entertainment law (such as music royalties disputes and film production agreements), cannabis brand protection and enforcement, software and technology licensing, due diligence, social media, Internet domain names, and issues related to emerging technologies such NFTs (non-fungible tokens).

Evan 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.

Before joining Dorsey, Evan was a law clerk for Judge Matthew E. Johnson in the Minnesota Court of Appeals.

Education & Admissions

University of St. Thomas School of Law (J.D., 2013), summa cum laude

University of Minnesota, Twin Cities (M.M., Classical Guitar Performance, 2009)

Gonzaga University (B.A., 2006), cum laude

Admissions

  • Minnesota
  • U.S. District Court for the District of Minnesota

Clerkships

  • Minnesota Court of Appeals, Honorable Matthew E. Johnson, 2013-2014

Experience

Representative Work

Trademark Clearance, Prosecution, and Maintenance

  • Provide counsel on the development, availability, registrability, and strength of proposed trademarks
  • Coordinate international trademark portfolios for market-leading clients
  • Work with foreign associates to prosecute and maintain international trademark portfolios
  • Prepare and negotiate trademark license agreements

Trademark and Intellectual Property Enforcement

  • Protect world-famous brands and develop international trademark enforcement strategies for institutional clients
  • Advise clients on enforcement measures for misappropriation of trademarks, including demand letters, litigation, and trademark coexistence agreements
  • Represent clients before Trademark Trial and Appeal Board in trademark opposition and cancellation proceedings

Copyright Matters

  • Provide counsel on the creation and use of copyrighted works
  • Prepare and maintain copyright applications and registrations
  • Protect copyrighted works and advise clients on defending claims of copyright infringement, including those from well-known copyright “trolls”
  • Prepare copyright assignment agreements and work-made-for-hire agreements

Technology, Internet, and Social Media Matters

  • Advise clients on addressing domain name cybersquatters using trademarks and personal names
  • Prepare pleadings for domain name disputes under Uniform Domain-Name Dispute-Resolution Policy (UDRP)
  • Prepare and negotiate software license agreements and end-user license agreements
  • Advise clients on intellectual property issues relating to emerging technologies, such as NFTs (non-fungible tokens)

Entertainment Law Matters

  • Advise world-famous musicians on various aspects of intellectual property protection, including developing trademark and copyright filing strategies
  • Advise clients on rights-clearance issues
  • Prepare and negotiate publishing, recording, and music licensing contracts
  • Assist clients with navigating performing-rights organizations such as BMI, ASCAP, and SESAC
  • Prepare and negotiate film production agreements
  • Represent musicians in royalties disputes with record labels and former bands

Cannabis Intellectual Property

  • Conduct intellectual property due diligence for cannabis company mergers, acquisitions, and IPOs, including for cross-border matters 
  • Develop and deploy federal, state, and international trademark prosecution strategies for cannabis-related trademarks and successfully argue against refusals based on unlawful use in commerce 
  • Develop alternative protection strategies for cannabis brands and creative collateral, including seeking copyright registrations and design patents
  • Respond to and send cease and desist letters leveraging the nuance of geographic trademark rights in the cannabis context

News & Resources

Articles

It’s a Hard Knock Life for Damon Dash’s Planned NFT Sale
FTC Finalizes Deals with Six CBD Companies
Fair Use Mashup Theory Ga-Fluppted by Ninth Circuit
#AdLaw – A Quick Wrap-Up From The 2020 ANA/BAA Marketing Law Conference
TTAB Weighs in on Registrability of CBD Trademarks
Court Trims Cannabis Company’s Prior Use Defense Based on Preemption by Federal Trademark Law
Dispute Over KIVA Trademark Continues to Smolder
FDA a Buzzkill for 15 CBD Companies
Time to Face the .MUSIC
INTA Boston: Highlights from Bean Town
Some CBD Trademarks Are Now Federally Registrable Based on New Guidance from the USPTO
American Airlines Flying High After Copyright Office Reversal
Hard Times With WHOIS? INTA Wants To Know
INTA SEATTLE – What You May Have Missed in the Emerald City
What’s up with WHOIS? The GDPR May Limit or Prevent Access to Domain Name Registration Information
Master of Your Domain – ACPA Damages Sought by Greg LeMond
KISS That Trademark Application Goodbye
THE DEVIL MADE ME DO IT
Phish Snared in Trademark Office’s Net Due to Phan Products
Ed Sheeran Gears up to “Get it On” in Another Copyright Lawsuit
Sheeran-nuff: Another Copyright Infringement Suit
Down Stream from Aereo: FilmOn Pulled by Different Legal Currents

News & Press Mentions

Dorsey & Whitney Names New Partners
Seventeen Dorsey Attorneys Ranked as Managing Intellectual Property 2021 IP Stars
IP Stars Recognizes Evan Everist as a 2020/2021 Rising Star
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
Jeffrey Cadwell and Evan Everist comment on .law and .legal gTLDs in World Trademark Review

Select Presentations

  • “Top Tips on Writing Trademark Cease-and-Desist Letters,” Midwest IP Institute, September 26, 2019

Industries & Practices

Cybersecurity, Privacy & Social Media
  • Banking & Financial Institutions
  • Cannabis
  • Creative Industries
  • Cybersecurity, Privacy & Social Media
  • Food, Beverage & Agribusiness
  • Healthcare
  • Intellectual Property
  • Technology
  • Technology Commerce
  • Trademark, Copyright & Advertising

Accolades

Contributed 50+ Pro Bono Hours in 2020

  • Contributed more than 50 Challenge pro bono hours, 2020
  • Named "Minneapolis Ones to Watch" in Intellectual Property Law and Banking and Finance Law by Best Lawyers®, 2021-2022
  • Named a Rising Star in Minnesota and Nationally by Managing Intellectual Property IP Stars, 2019-2021

     North Star Lawyer logo

  • MSBA North Star Lawyer, 2014-2020
Evan Everist