Select Section
Overview
CHARLENE PARTNERS WITH CLIENTS TO CREATE AND EXECUTE BRAND MANAGEMENT STRATEGIES THAT ACHIEVE PROTECTION AND ENFORCEMENT GOALS AND RESULT IN ROBUST AND VALUABLE INTELLECTUAL PROPERTY ASSETS. IN ADDITION TO ADVISING ON BRAND STRATEGY AND PROTECTION AND ENFORCEMENT, CHARLENE ALSO COUNSELS CLIENTS ON ADVERTISING ISSUES AND HAS DEEP EXPERIENCE IN THE ACQUISITION AND SALE OF INTELLECTUAL PROPERTY ASSETS.
Charlene is Chair of Dorsey’s top-ranked Trademark, Copyright and Advertising practice group. Charlene serves as intellectual property counsel for small and large businesses in a wide variety of industries, including consumer products, cosmetics, financial services, telecommunications, software, and medical devices. Charlene has extensive experience in all stages of the brand management process, including trademark and copyright selection, clearance, prosecution, maintenance, enforcement, and exploitation. This work includes representation of clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, assistance with demand letters and allegations of infringement, and assistance with take down requests related to online infringement, as well as prosecution of UDRP proceedings.
Charlene advises clients on open source licensing and compliance and provides clients with trainings and seminars on use of open source software. In addition, she works with clients in the development and execution of marketing promotions and counsels clients on substantiation related to advertising. Charlene also has significant experience in transactions involving intellectual property, including due diligence, negotiation of agreements, and assistance with the transfer of intellectual property rights and recordation of security interests related to corporate transactions and asset purchase and sale agreements.
Charlene is the co-manager of Dorsey’s IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com and the Firm’s Trademark Practice Group have been recognized in JD Supra’s 2022 Readers’ Choice Awards.
Charlene is also the Pro Bono Coordinator for the Denver office of Dorsey & Whitney and authors Chapter 29 of The Practitioner’s Guide to Colorado Business Organizations.
Experience
Client Achievements
Representative Transactions
- Represented global provider of digital services and technology solutions for content creation and delivery to major motion-picture groups, television studios, digital content providers and advertising agencies in acquisition of a global, cloud based localization platform and distributed services firm
- Represented world’s largest luggage company in $1.9 billion financing secured by portfolio of over 6000 intellectual property assets, including post-closing recordings
- Leading hospitality company in acquisition of global brands and brand operations of hospitality company priced at $23 million
- Represented oil and gas technology companies in the sale of all intellectual property, including primarily software technology, of both Canadian and United States entities to private equity firm, in a transaction valued at $140 million
- World’s largest travel luggage company in $85 million acquisition of leading designer of protective cases for personal electronic devices
- Leading travel luggage company in multiple acquisitions of international luggage and travel products companies
- Leading consumer products company in multimillion dollar financing secured by portfolio of more than 4000 patent and trademark assets, including recordation of security interests throughout the world
- File and prosecute Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints resulting in recovery of domain names for clients. Representative Cases:
- Goodr LLC v. Michael Rader, Brandroot, WIPO Case. No. D2018-1171 (2018). Represented consumer products company in contested Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding to recover domain related to client’s core brand, GOODR
- Water Pik v. Piao Ying, WIPO Case No. D2014-2262 (2015). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of WATERPIK.ASIA domain name to client
- Water Pik, Inc. v. Omar Motta, WIPO Case No. DAE2014-0003 (2014). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of WATERPIK.AE domain name to client
- Gates Corporation v. Embelle Litumbe, WIPO Case No. D2013-0231 (2013). Successful Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint resulting in transfer of GATESBELTS.ORG domain name to client
- Water Pik, Inc. v. OMNISOURCE D.D.S. L.L.C., WIPO Case no. D2008-1657 (2009). Successful UDRP complaint resulting in transfer of AQUA-PIK.COM and AQUAPIK.COM domain names to client
- Water Pik, Inc. v. Don Bankston, WIPO Case No. D2010-1022 (2010). Successful UDRP complaint resulting in transfer of WATERPIKREVIEWS.COM domain name to client
- Central Garden & Pet Company v. Doskocil Mfg Co., United States Trademark Opposition No. 91188816 (2013). Successful defense of trademark opposition and prosecution (including counterclaim) resulting in cancellation of adverse parties trademark registration. Case resulted in a published precedential decision of the U.S. Trademark Trial and Appeal Board (TTAB)
- Strategy and management of numerous international actions resulting in recovery of country code top level domain names (ccTLD) from cybersquatters. Representative Cases:
- Water Pik, Inc. v. Viviani Sacomori, WIPO Case No. DBR2013-0009 (2013). Strategy and counseling related to recover of WATERPIKDOBRASIL.COM.BR domain name on behalf of client. Management of international counsel in UDRP complaint preparation, filing and strategy
- Water Pik, Inc. v. Omar Quadros Motta, WIPO Case No. DBR2015-0004 (2015). Strategy and counseling related to recover of WATERPIKBR.COM.BR, WATERFLOSS.COM.BR and WATERFLOSSER.Com.BR domain names on behalf of client. Management of international counsel in UDRP complaint preparation, filing and strategy
- Counsel client with portfolio of thousands of trademark assets on global branding strategy including, clearance, registration and enforcement on a worldwide basis
- Strategy and management of trademark portfolios for international companies in the consumer goods, health care, personal care, skin care, and medical device industries
- Counsel and assist large foreign corporation with registration of trademark assets with customs agencies in numerous countries
- Develop and assist with strategy for enforcement of trademark rights worldwide, including demand letter campaigns, negotiation of settlement, consent and coexistence agreements, registration of trademarks with customs agencies throughout the world, assistance with seizure actions and filing and prosecution of opposition and cancellation actions before the United States Trademark Trial and Appeal Board
- Assist clients in strategy and planning related to launch of new generic top level (gTLD) domain name system, including counseling on registration with Trademark Clearinghouse (TMCH)
- Successful enforcement of client copyright rights through notice and take-down procedure under the Digital Millennium Copyright Act (DMCA)
- Assist large consumer products company on an ongoing basis with asset purchase and merger transactions resulting in transfer of hundreds of intellectual property assets. Assist with post-transaction recordation of title changes and security interest agreement against intellectual property assets in hundreds of countries
- Assist clients with recordation of license agreements against international trademark assets
News & Resources
Articles
May 22, 2018
July 25, 2016
March 08, 2016
December 16, 2015
April 23, 2009
News & Press Mentions
March 3, 2023
February 13, 2023
January 13, 2023
March 4, 2022
January 7, 2022
March 9, 2021
February 16, 2021
March 13, 2020
February 18, 2020
April 25, 2019
December 3, 2018
May 23, 2018
May 7, 2018
November 2017
Events & Speaking Engagements
January 27, 2022
September 21, 2021
Select Presentations
- Speaker, The Best Offense is Defense: TTAB Defenses, 18th Annual Rocky Mountain Intellectual Property & Technology Law Institute, July, 2020
- Speaker, Office Action Space: Case studies and Winning Strategies, 17th Annual Rocky Mountain Intellectual Property & Technology Law Institute, May 30, 2019
- Panelist, To Use or Not to Use, 16th Annual Rocky Mountain Intellectual Property & Technology Institute, June 1, 2018
- Tapped: Avoiding Bar Fights (typical business disputes), November 2, 2017
- Seminar Playback: Rock Bands, “Redskins,” & Registrations: The Federal Circuit Strikes Down Statute on “Disparaging” Trademarks, January 28, 2016
- Presenter, gTLD Launch Update: Protection and Enforcement of Trademarks, 13th Annual Rocky Mountain Intellectual Property & Technology Institute, May 29, 2015
- Presenter, Review of Recent TTAB Dilution Cases, 11th Annual Rocky Mountain Intellectual Property & Technology Institute, May 30, 2013
- Presenter, Intellectual Property for Small and Start-up Businesses, Bard Center for Entrepreneurship, January 27, 2010
- Presenter, Intellectual Property in the Age of Online News, Society of Professional Journalists, November 11, 2009
- Presenter, Trademark Dilution Revision Act of 2006, Colorado Bar Association, Intellectual Property Section, June 2007
- Presenter, Copyright in Music: The Basics, Licensing, and Issues in the Digital Age, CLE International Intellectual Property Conference, February 2007
- Sixth Annual Intellectual Property & Technology Institute, June 4-6, 2008
- Guest lecturer, Music Law and Licensing, University of Denver Sturm College of Law, Spring 2005 & Fall 2006
- Presenter, Trademark Basics, Rocky Mountain Intellectual Property and Technology Institute, Colorado Bar Association, 2008
- Presenter, Copyright Basics, Rocky Mountain Intellectual Property and Technology Institute, Colorado Bar Association, 2009
Industries & Practices
Intellectual Property Litigation
Explore This Practice View client achievements related to this practice View resources related to this practiceFood, Beverage & Agribusiness
Explore This Practice View client achievements related to this practice View resources related to this practiceHealthcare & Life Sciences
Explore This Practice View client achievements related to this practice View resources related to this practiceCybersecurity, Privacy & Social Media
Explore This Practice View client achievements related to this practice View resources related to this practiceFranchise & Distribution Law
Explore This Practice View client achievements related to this practice View resources related to this practiceEnergy & Natural Resources
Explore This Practice View client achievements related to this practice View resources related to this practiceBanking & Financial Institutions
Explore This Practice View client achievements related to this practice View resources related to this practiceDevelopment & Infrastructure
Explore This Practice View client achievements related to this practice View resources related to this practice- Advertising & Marketing
- Banking & Financial Institutions
- Cannabis
- Creative Industries
- Cybersecurity, Privacy & Social Media
- Development & Infrastructure
- Emerging Companies
- Energy & Natural Resources
- Food, Beverage & Agribusiness
- Franchise & Distribution Law
- Healthcare & Life Sciences
- Hospitality
- Intellectual Property Litigation
- Mergers & Acquisitions
- Private Equity
- Pro Bono
- Sustainability
- Technology
- Telecommunications
- Trademark & Copyright
- Video Games
Professional & Civic
Professional Achievements
- Author of Chapter 29 of The Practitioner’s Guide to Colorado Business Organizations
- International Trademark Association
- Colorado Bar Association
- Denver Bar Association
- Women’s Bar Association
Community Involvement
- Board of Directors, Denver World Affairs Council DBA WorldDenver
- Denver Bar Association “Wheels of Justice” bike riding team involved in the Courage Classic to benefit and raise money for Denver Children’s Hospital, 2007 – 2011
- Volunteer instructor at Columbine Elementary School, Denver, 2009
- Member WomenCook! Committee for Work Options for Women, 2008-2013
Accolades
- Listed as a Top Lawyer in Denver by 5280 The Denver Magazine, Intellectual Property: Trademark, 2023
- Recognized as Super Lawyer for Intellectual Property by Colorado Super Lawyers, 2020-2022; Recognized as a "Rising Star" by Colorado Super Lawyers, 2010-2017
- Named a Best Lawyers® Lawyer of the Year, Trademark Law, 2023
- Listed in Best Lawyers in America©, 2021-2023
- Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2014-2023
- Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property), 2018-2022
- Recognized as an “IP Star” in 2018-2022 by Managing Intellectual Property Handbook
- Dorsey & Whitney – Scales of Justice Team Award (The World Ventilator Foundation), 2021
- 5280 Top Lawyers Intellectual Property: Trademark, 2016-2020 and 2022
- Named "Up and Coming" by Chambers USA (Intellectual Property), 2015-2018
- Winner, "Up and Coming Stars," Law Week Colorado, 2009
- Volunteer Lawyer of the Year, Denver Bar Association, 2009
