Tiffany Shimada
PEOPLE

Tiffany Shimada

Partner
shimada.tiffany@dorsey.com

Overview

Tiffany helps clients protect brands through strategic intellectual property portfolio management and enforcement. 

She advises clients with trademark, copyright, advertising, social media, and complex brand protection and management issues. With a background in intellectual property valuation, Tiffany deeply understands and respects the worth of intangible assets and enjoys helping clients maximize their value. As a trademark and copyright lawyer, Tiffany works with brand owners and managers nationally and globally to protect their intellectual property across a wide array of industries, including medical devices, financial services, food and beverage, outdoor sports and hunting, logistics, direct marketing, online retail marketplaces, entertainment, health care, apparel, cosmetics, renewable energy, and artificial intelligence. She counsels clients through all aspects of brand selection, protection, and risk management issues, such as claim substantiation, comparative advertising, influencer marketing, and promotions.

Education & Admissions

DePaul University College of Law (J.D., 2009)

Indiana University (B.S., Finance, 2001)

Admissions

  • Illinois
  • Utah
  • U.S. District Courts for the District of Utah and Northern District of Illinois

Languages

  • Spanish

Clerkships

  • U.S. District Court for the Northern District of Illinois, Honorable Ronald Guzmán

Experience

Representative Experience

  • Advertising review and clearance of product packaging, promotional materials, and commercials for global electronics device manufacturer.
  • Advice regarding social media advertising and influencer marketing issues, and related agreements.
  • Global trademark prosecution and enforcement for large international online marketplace, industrial consumer products, and educational services provider.
  • U.S. trademark portfolio management for large international food and beverage company.
  • Global brand protection and enforcement for leading healthcare technology services provider.
  • Clearance of brand names for global cosmetics, apparel, and consumer products companies.
  • Initiation and successful settlement of TTAB opposition and cancellation proceedings.
  • Defense and successful settlement of trademark infringement claims asserted against clients' products and brand extensions.
  • Successful takedown of counterfeit website with Internet protocol hosting company.
  • Successful transfer of infringing domain names to clients through Uniform Domain-Name Dispute-Resolution Policy (UDRP) actions.
  • Extensive experience in alcohol beverage brand name clearance, including TTB COLA label reviews.
  • Advice on trademark enforcement strategy for global healthcare provider and educational services provider.
  • Successful enforcement of client copyright rights through notice and take-down procedure under the Digital Millennium Copyright Act (DMCA).
  • IP diligence and acquisition support related to acquisition of large outdoor retailer brand.
  • Assist global hunting goods company with recordation and maintenance of trademarks with US Customs and Border Protection to prevent entry of counterfeit goods.

Other Experience

  • Significant trademark prosecution experience, including advising clients on trademark filing strategy, responding to Office Actions issued by the US Patent and Trademark Office, defending against third-party oppositions, seeing applications through to registration, and registration maintenance and renewal filings.
  • Review and advise regarding product packaging claims and online advertising, including social media and user generated content.
  • Prepare terms and conditions for marketing promotions involving sweepstakes, contests, and giveaways on social media.
  • Review trademark watch notices for potential oppositions, investigate and strategize with international counsel, advise clients of enforcement options, and prepare and respond to demand letters.
  • Analyze domain name acquisition and cybersquatting issues, and prepare and file UDRP complaints.
  • Prepare and file U.S. copyright applications. Advise regarding copyright infringement claims.
  • Perform preliminary and comprehensive clearance searching for proposed marks in the U.S. and internationally. Advise clients on risks of conflict and infringement, and chance of registration.
  • Extensive experience with investigating and filing trademark opposition proceedings with international counsel, collecting evidence to support opposition proceedings in numerous countries, and advising clients on global enforcement strategy.

News & Resources

Articles

How Far Can Injunctions Go? Part II: The Extraterritorial Reach of Trademark Injunctions from U.S. to Europe
How Far Can Injunctions Go? Part I: The Extraterritorial Reach of Trademark Injunctions from Hong Kong to China
How to mitigate the risk of marketing-related lawsuits
Shifting Gears: A Quick Tour of Genericide
#AdLaw – A Quick Wrap-Up From The 2020 ANA/BAA Marketing Law Conference
You Snooze, You Lose! Inadequate Disclosures in Native Advertising
Protecting Famous Names in China – Michael Jordan and His Eight-Year Trademark Battle in China
This Could Change Everything: Nike Appeals Fleet Feet Injunction on Basis of Free Speech
Series 89: A Secret Menu of Protected Non-Registered Marks
INTA Boston: Highlights from Bean Town
Mission Accomplished: Supreme Court Rules Licensees May Use Licensed Marks Following Rejection in Bankruptcy
Epic Games Battles for Victory Dances in Fortnite Copyright Lawsuits
Chemical Industry Update - December 2018
Hey, Batter Batter! – Lizard Skins Goes to Bat over its Grip Tape Designs

News & Press Mentions

Trademark Partner Tiffany Shimada Joins Dorsey in Salt Lake City
Tiffany Shimada Comments on Use of Olympics Branding
Twenty-three Dorsey Attorneys Named to Utah Legal Elite
Dorsey Represents Studio McGee in Growth Investment
Super Lawyers Recognizes 21 Dorsey Attorneys in Salt Lake City
Dorsey & Whitney Names New Partners
Chambers USA 2019 Recognizes Dorsey Lawyers and Practices
Tiffany Shimada and Clark Yeh Selected for 2019 LCLD Pathfinders Program
Chambers USA 2018 Recognizes Dorsey Lawyers and Practices in Salt Lake City
IP Hires: BakerHostetler, Dickinson Wright, Dorsey
Dorsey Salt Lake City Office Continues to Add Key Talent
Personnel Changes at IP Law Firms, Organizations
Utah Business: People on the Move

Events & Speaking Engagements

BYU Copyright and Trademark Symposium
Webinar Playback: Marketing Communication in Uncertain Times: Social Media and Influencer Guidance
Brand Activation Legal Committee Meeting
Brand Activation Legal Committee Meeting
Dorsey Corporate Counsel Symposium

Industries & Practices

  • Banking & Financial Institutions
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Healthcare & Life Sciences
  • Intellectual Property
  • Mining
  • Public-Private Partnerships
  • Technology
  • Trademark, Copyright + Advertising

Professional & Civic

Professional Achievements

  • Fellow, American Bar Foundation
  • Board Member, Utah Black Chamber
  • Board of Directors, Utah Black Lawyers Association
  • Council Member, American Bar Association Section of Litigation
  • Member, David K. Winder IP Inn of Court
  • Member, Women Lawyers of Utah
  • Member, International Trademark Association (INTA)
  • Member, Copyright Society of the USA
  • Member, National Bar Association
  • Member, Utah Bar Association
  • Representative, ABA House of Delegates for the Utah State Bar

Accolades

  • Best Lawyers in America®, 2024-2026
  • Best Lawyers® Lawyer of the Year, Trademark Law, Salt Lake City, 2025
  • World Trademark Review, Utah, “WTR 1000,” 2023-2025
  • WTR Global Leaders: Private Practice, 2025
  • Utah Business Magazine, "Utah Legal Elite – Intellectual Property," 2021, 2025
  • Chambers USA, Intellectual Property, Utah, 2017-2021, 2023-2025
  • Chambers USA, Notable Practitioners, 2017-2021
  • Mountain States Super Lawyers®, 2025
  • Mountain States Super Lawyers®, "Rising Stars," 2020
  • Utah's “40 Over 40,” 2024
  • World Intellectual Property Review (WIPR), “Shining Light/Influential Women in IP,” 2023
  • The National Black Lawyers, “Top 100 in Utah,” 2022-2023
  • State Farm 2020/2021 Rising Star Academy
Tiffany Shimada