INDUSTRIES & PRACTICES

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Intellectual Property
PROTECTING, MANAGING, AND DEFENDING YOUR INTANGIBLE ASSETS AS THEY BECOME INCREASINGLY VALUABLE IN THE MODERN ECONOMY.

Overview

At Dorsey, we understand the importance that intellectual property and technology plays in the value of your business. Our nationally recognized, diverse group of practitioners are experts in trademarks, copyrights, advertising, patents, and trade secrets. They work together, across offices, to ensure that our clients’ intellectual property and technology is properly protected, enforced and ready to commercialize.

We specialize in:

  • IP portfolio development and management including
    • Patent and design rights
    • Trademark
    • Copyright
    • Trade secrets
    • Domain names
  • IP enforcement
    • Infringer takedowns from online marketplaces (e.g., Amazon, Alibaba)
    • UDRP and URS proceedings for transfer of domains
    • IP litigation, TTAB proceedings, PCT proceedings, demand letters, negotiated settlements and agreements
  • IP evaluation and opinions
  • IP commercialization, technology transfer and licensing
  • M&A and financing intellectual property due diligence and negotiations
  • Advertising review and counseling, claim substantiation review
  • Contests and sweepstakes
  • Social media marketing campaigns and influencer agreements
  • FTC regulatory compliance
  • Advertising disputes and National Advertising Division (NAD) challenges

Our intellectual property team is organized into four groups that collaborate to develop and protect our clients’ intellectual property assets. In addition we coordinate closely with specialists in several other practice areas to ensure the best service for our clients. For more information, view the “Industries & Practices” tab to the left.

Trademark, Copyright, & Advertising + -
Patent Prosecution & Portfolio Management + -
Technology Commerce + -
Intellectual Property Litigation + -

Experience

We represent some of the world’s most well-known brands. Our clients range from small startups to fortune 500 companies and everything in between.

World's Largest Luggage Company. Dorsey has served as global IP counsel to this client, handling the management and growth of the entire domestic and international patent portfolio, IP licensing, acquisition of IP assets, investigative matters, and support of the worldwide enforcement of their patent, trademark, and copyright assets.

Diffuser Design & Manufacturing Company. We represent the company with regard to its international patent prosecution as well as its IP litigation needs, both defending against and enforcing IP rights. Our role has included prosecution work, portfolio counseling, patent enforcement in federal courts, and successfully defending against infringement allegations in federal courts as well as the Patent Trial and Appeal Board.

Multinational Image and Optical Product Manufacturer and Distributor. Since 2015, Dorsey has been representing this client in trademark litigation. Dorsey also handles trademark prosecution and maintenance work for the client.

Hospitality Company. We represent the company with regard to all of its trademark counseling, clearance, filing, prosecution, and enforcement needs. We have also assisted the company with an acquisition. Our role included preliminary trademark and litigation diligence and counseling as well as drafting and advising on transaction documents. Finally, we represented the client in a trademark infringement case and breach of contract against multiple defendants. Dorsey is the client’s primary U.S. law firm to handle trademark enforcement matters before the United States Patent and Trademark Office.

Industry Leader in High Performance Eyewear, Goggles, and Sports Helmets. As counsel for this client for over 20 years, Dorsey has assisted in building its global IP portfolio, which includes hundreds of patents and trademarks registered and pending in over 30 countries around the world. Dorsey currently acts as sole patent counsel of the client, overseeing the entire domestic and foreign patent portfolio. Dorsey assists the client with product clearance, as well as with licensing, enforcement and defense of its intellectual property both domestically and internationally.

Medical Device Company. We assist this client with worldwide intellectual property prosecution, strategy and the IP aspects of acquisition matters. We are lead counsel advising the company on the development, growth and prosecution strategy for their patent portfolio. We are also lead counsel for the trademark portfolio, providing advice on all aspects of trademark protection as the client begins to develop a more global portfolio.

Accolades

Best Lawyers Tier 1 Trademark & IP Litigation 2019

Dorsey Leading IP Practice-Chambers 2020

13 Dorsey Leading IP Lawyers-Chambers 2020

IP Band 1 Lawyers 2 Utah Lawyers Chambers USA 2020

24 Lawyers Named "Ones to Watch" Best Lawyers in America 2021

Dorsey Top US Trademark Firm-WTR 2020

US News Best Lawyers 2021 Tier 1 IP Litigation Firm

US Best Lawyers - Top Copyright Law Firm 2021

US News Best Lawyers 2021 Tier 1 Trademark Law Firm

US News Best Lawyers 2021 Tier 1 Patent Litigation Law Firm

US News Best Lawyers 2020 Top Technology Law Firm

U.S. Regional Award for Trademark Prosecution Midwest Managing IP Americas 2019

TMCA Best Law Blog ABA 2018

16 Dorsey IP Stars- Managing IP Handbook 2020

Leading Patent Practitioners IP Asset Magazine Patent 1000-2019

Top 5% Law Firms - IP Litigation - BTI Consulting Group 2016

Dorsey Top Trademark Firm-IP Today 2014

3 Dorsey Top 250 Women IP Stars- Managing IP Handbook 2014

Dorsey Top Patent Firm-IP Today 2014

Largest Intellectual Property Law Firms in the Twin Cities

Contacts

Charlene Krogh
Trademark, Copyright & Advertising
Kimton Eng
Patent Prosecution, Portfolio Strategy & Management
Bruce Ewing
Intellectual Property Litigation
Geoffrey Godfrey
Intellectual Property Litigation
Michael McCormick
Technology Commerce

Industries & Practices

  • Creative Industries
  • Cybersecurity, Privacy & Social Media
  • Intellectual Property Litigation
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology Commerce
  • Trademark, Copyright & Advertising
  • Video Games
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