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 cosmetics, financial services, food and beverage, agribusiness, search engine optimization management, outdoor sports and hunting, logistics, direct marketing, online retail marketplaces, entertainment, healthcare, apparel, 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, 2007-2007


Representative Experience

  • Advice 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.
  • 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

Events & Speaking Engagements

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 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


Ranked in Chambers USA 2019 Leading Individual  Chambers USA 2018 Leading Individual
  • State Farm 2020/2021 Rising Star Academy
  • 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