Tiffany D.W. Shimada
PEOPLE

Tiffany D.W. Shimada

Partner
shimada.tiffany@dorsey.com

Overview

TIFFANY HELPS CLIENTS PROTECT BRANDS THROUGH STRATEGIC INTELLECTUAL PROPERTY PORTFOLIO MANAGEMENT AND ENFORCEMENT. SHE ADVISES CLIENTS ON COMPLEX BRAND PROTECTION, COPYRIGHT, ADVERTISING, AND SOCIAL MEDIA ISSUES.

With a background in IP valuation, Tiffany deeply understands and respects the worth of intangible assets and enjoys helping clients maximize their value. As a trademark lawyer, Tiffany works with brand owners and managers from around the world to enforce and protect their IP in these industries: cosmetics, financial services, biotechnology, geophysics, food and beverage, outdoor sports and hunting, logistics, direct marketing, online marketplaces, entertainment, software as a service (SAAS), social media, healthcare, apparel, renewable energy, retail, hospitality, and aviation.

Tiffany 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 and a “Top 35” law blog in 2018.

As Chair of Dorsey’s Lawyers of Color Committee, Tiffany is committed to helping Dorsey achieve its goal of being an inclusive organization that values diverse backgrounds, perspectives, and contributions. 

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, 2007-2007

Experience

Representative Experience

  • Advise regarding social media advertising and influencer marketing issues.
  • Global trademark prosecution and enforcement for large international online marketplace.
  • U.S. trademark portfolio management for large international food and beverage company.
  • Global brand protection and enforcement for leading healthcare provider.
  • Availability review of hundreds of brand names for global cosmetics and apparel 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.
  • Extensive experience in alcohol beverage brand name clearance, including TTB COLA label reviews.
  • Advice on trademark enforcement strategy for global healthcare 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 large firearms manufacturer 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, particularly about social media and user generated content.
  • 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

Events & Speaking Engagements

Brand Activation Legal Committee Meeting
Brand Activation Legal Committee Meeting
Dorsey Corporate Counsel Symposium

Professional & Civic

Professional Achievements

  • Advisory Board Member and Chair of Diversity & Inclusion Committee, KUER
  • Co-Chair of Minority Trial Lawyer Committee, American Bar Association
  • Member of David K. Winder IP Inn of Court
  • Member of Women Lawyers of Utah

Accolades

Ranked in Chambers USA 2019 Leading Individual  Chambers USA 2018 Leading Individual
  • Utah Legal Elite, Up and Coming Attorney 2017 & 2018
  • Chambers and Partners, Notable Practitioner 2017-2020
  • Leadership Council on Legal Diversity Pathfinder Alumna, Pathfinder Program 2019
Tiffany D.W. Shimada