Charlene Krogh
PEOPLE

Charlene Krogh

Partner
krogh.charlene@dorsey.com

Overview

CHARLENE REGULARLY ADVISES CLIENTS ON BRAND STRATEGY AND PROTECTION, ENFORCEMENT, LICENSING, ACQUISITION AND SALE OF INTELLECTUAL PROPERTY ASSETS, AS WELL AS ADVERTISING ISSUES.

Charlene is a Partner in Dorsey’s top-ranked Trademark, Copyright and Brand Management Group. Charlene serves as intellectual property counsel for small and large businesses in a large 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 and assistance with take down requests related to online infringement, as well as prosecution of UDRP proceedings. Charlene regularly 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 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.

Education & Admissions

University of Denver, Sturm College of Law (J.D.), Order of the Coif

University of Wisconsin - Madison (B.S., Political Science and Behavioral Science and Law)

Admissions

  • Colorado
  • U.S. Court of Appeals for the Tenth Circuit
  • U.S. District Court for the District of Colorado

Experience

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
  • Private equity fund in acquisition of golf technology company
  • 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
  • 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)
  • File and prosecute Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints resulting in recovery of domain names for clients. Representative Cases:
      • 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
  • 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

Select Presentations

  • 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
  • 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

News & Resources

Articles

Bringing Back the Oldies – Legislation for Equal Treatment in the Music Industry
In the Weeds Between Federal and State Law: Brand Name for Legal Marijuana Sales Denied Federal Registration
Practice Update: Publication of Mexican Bill for Trademark Opposition System
National Debate on Digital Privacy Shows No Signs of Slowing
Extreme Makeover Europe – Reforms to European Union Trade Mark Law
Second Chances – USPTO Trademark Pilot Program Allows for Amendments Based on Technology Evolution
Google Class Action Settlement: Are You In or Are You Out?

News & Press Mentions

Dorsey's TMCA Blog Named One of ABA's Top 50 Blogs
Dorsey's TMCA Blog Recently Featured as ABA's Blawg of the Week
Chambers USA 2017 Recognizes Dorsey Lawyers and Intellectual Property Practice in Denver
Chambers USA 2017 Recognizes Dorsey Lawyers and Practices
Super Lawyers Recognizes Seven Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers Honored in World Trademark Review 2017
Dorsey Partners Charlene Krogh, Greg Tamkin, Paul Thompson, Lee and Lisa Osman Named to 5280 Magazine's 2017 Top Lawyers
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by U.S. News – Best Lawyers Best Law Firms
Partners Hensley and Krogh Help Daniels MBA Students Setup B Corporations
Chambers USA 2016 Recognizes Multiple Dorsey Lawyers and Practice Groups in Denver
Chambers USA 2016 Ranks Dorsey Lawyers and Practices
Super Lawyers Recognizes Eleven Dorsey Lawyers in Denver
Dorsey Partners Charlene Krogh, Lee and Lisa Osman Named to 5280 Magazine's 2016 Top Lawyers for Intellectual Property
Dorsey Partners Keyes and Krogh Reflect on Tam Victor Trademark Case
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey & Whitney Announces New IP Blog: The TMCA
Chambers USA 2015 Recognizes Multiple Dorsey Lawyers and Practice Groups in Denver
Super Lawyers Recognizes 10 Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey Named One of Top Trademark Firms
Super Lawyers Recognizes 10 Dorsey Lawyers in Denver
Dorsey’s Trademark Lawyers Honored by World Trademark Review
Dorsey Names Nine New Partners

Industries & Practices

Trademark, Copyright, Advertising & Brand Management
Cybersecurity, Privacy & Social Media
  • Banking
  • Clean Technology
  • Cybersecurity, Privacy & Social Media
  • Emerging Companies
  • Energy
  • Food, Beverage & Agribusiness
  • Franchise & Distribution Law
  • Health Care
  • Hospitality
  • Intellectual Property Litigation
  • Mergers & Acquisitions
  • Private Equity
  • Pro Bono
  • Telecommunications
  • Trademark, Copyright, Advertising & Brand Management

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

  • 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 – present.
  • Volunteer instructor at Columbine Elementary School, Denver, 2009
  • Member WomenCook! Committee for Work Options for Women, 2008-2013

Accolades

Ranked in USA Chambers 2017 Leading Individual   Ranked In - USA Chambers and Partners 2016 - Leading Individual 
 
Ranked in Chambers USA 2015 - Leading Individual

  • 5280 Top Lawyers Intellectual Property: Trademark, 2016-2017 
  • Named "Up and Coming" by Chambers USA (Intellectual Property), 2015-2017
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2014-2017
  • Recognized as a "Rising Star" by Colorado Super Lawyers, 2010-2017      
  • Winner, "Up and Coming Stars," Law Week Colorado, 2009
  • Volunteer Lawyer of the Year, Denver Bar Association, 2009
Charlene Krogh