Tiffany D.W. Shimada

Tiffany D.W. Shimada




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 from around the world to enforce and protect their intellectual property in a wide array of industries, including financial services, food and beverage, agribusiness, search engine optimization management, outdoor sports and hunting, logistics, direct marketing, online retail marketplaces, entertainment, healthcare, apparel, cosmetics, renewable energy, and mining operations. She assists clients with all aspects of brand selection and protection, including clearance, prosecution, maintenance, due diligence, and enforcement. Tiffany also counsels clients on brand communication and risk management issues, such as claim substantiation, comparative advertising, influencer marketing, and promotions involving sweepstakes and contests.

Tiffany is a contributor to Dorsey’s award-winning intellectual property blog,, which focuses on legal developments in the world of Trade Marks, Copyrights, and Advertising.

As Co-Chair of Dorsey’s Attorneys of Color Resource Group, 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)


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


  • Spanish


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


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


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

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
Personnel Changes at IP Law Firms, Organizations
Utah Business: People on the Move
Dorsey Salt Lake City Office Continues to Add Key Talent

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
  • Intellectual Property
  • Mining
  • Public-Private Partnerships
  • Technology
  • Trademark, Copyright & Advertising

Professional & Civic

Professional Achievements

  • Advisory Board Member and Member 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
  • Member of International Trademark Association (INTA)
  • Member of Copyright Society of the USA
  • Member of National Bar Association


Diversity & Inclusion 50+ Hours 2020
  • Contributed more than 50+ Diversity hours 2020

Chambers USA 2021  Ranked in Chambers USA 2020  Ranked in Chambers USA 2019 Leading Individual  Chambers USA 2018 Leading Individual

  • State Farm 2020/2021 Rising Star Academy
  • Listed in Utah Business Magazine Legal Elite, Intellectual Property 2021
  • Utah Legal Elite, Up and Coming Attorney 2017 & 2018
  • Chambers and Partners, Notable Practitioner 2017-2021
  • Listed as a "Rising Star" by Mountain States Super Lawyers 2020
  • Leadership Council on Legal Diversity Pathfinder Alumna, Pathfinder Program 2019
Tiffany D.W. Shimada