Editorial: Trademarks in Georgia
01 April 2007
An astounding seven lawyers from Kilpatrick Stockton LLP make it onto our Georgia list – the largest contingent from any single firm.
Miles Alexander is described as “a lynchpin of the practice” and a “great trial lawyer”. He frequently acts as lead counsel for Fortune 500 companies, and has served as legal counsel to the International Trademark Association. Managing partner William Brewster was similarly well backed by his peers, one of whom sees him as “a figure of some prominence in the local market”. Chris Bussert’s main strength lies in IP litigation. He is also a prolific writer in the field. Sources were effusive in their praise for Theodore Davis, whose recent credits include KP Permanent Make-Up v Lasting Impression I and Moseley v V Secret Catalogue. He also has experience in large trademark clearance and registration projects. Laurel Lucey was mentioned for her focus on international brand strategy and trademark portfolio management, counselling, licensing, and dispute resolution. The firm’s Jerre Swann is “a seasoned trial lawyer and a frequent speaker” with a “considerable reputation” among his peers. Swann’s contribution to the field has been rewarded with the Ladas Memorial Award and the International Trademark Association’s volunteer service award for the advancement of trademark law. Completing the line-up from the firm is Virginia Taylor, who has handled IP litigation for the likes of Original Appalachian Artworks, Genesco, Anheuser- Busch and Spalding Sports Worldwide. She was praised as “an extremely competent attorney – first rate”.
Three attorneys appear from Alston & Bird LLP. Martin Elgison, co-founder and cocoordinator of the firm’s IP practices – and leader of the Atlanta IP team – was described as an “excellent lawyer”. Interviewees mentioned his flair for transactional matters. As a member of the litigation group, he also counsels on protection and enforcement strategies, and has frequently acted as lead trial counsel. Senior member of the trademarks group Ginabeth Hutchison joins him in our trio of featured Alston & Bird attorneys. She coordinates a network of foreign associates in 100 countries to protect and enforce clients’ interests abroad and in the US. David Stewart, who leads the Atlanta trademark group, was mentioned for several significant cases including, in the federal court for the 11th circuit, Leigh v Warner Bros, in which he obtained a defence verdict in a trademark dispute. His practice focuses on technology and internet matters.
The “legendary” William Needle, founder of Needle & Rosenberg, one of the South- East’s premier IP boutique firms, made swift progress in the research. In a career spanning more than 35 years, he has also served as Georgia’s special assistant attorney general, and as special master in the US district courts. He acts as arbitrator, mediator and expert witness in a variety of IP disputes. Managing partner Larry Nodine (“superb”) ensures that the firm has a solid presence in these pages alongside full-service national and regional firms. Nodine is a domain-name panellist for the World Intellectual Property Organization, and is a past president of the Georgia Bar IP section. Another “fine IP boutique” made a strong impression on researchers, with two nominees attracting support from clients and competitors. Finnegan Henderson Farabow Garrett & Dunner LLP is represented by Virginia Carron, who has tried cases before the district courts, the International Trade Commission and the federal circuit appeals courts. She counsels clients in the IT, telecommunications, tobacco and chemical industries. Christie Baty Heinze is here recognised for “great work” in portfolio management. Recently, domain name disputes have played a large part in her practice.
Top of the chasing group is Joan Dillon, of Joan Dillon Law LLC. In the words of one source, Dillon is a “magnificent lawyer” who learned her trade during consecutive periods at two premier Atlanta law firms, as well as tenures as in-house counsel at three major international corporations. Dillon is “a recognisable name in the market”. From King & Spalding LLP, we include Bruce Baber, who is “very active in trademark protection and litigation” across a number of fora, including the International Trade Commission and the US Patent and Trademark Office. He also devises international trademark protection strategies. Researchers heard that James Johnson of Sutherland Asbill & Brennan “brings a wealth of experience”. Before joining the firm, Johnson held in-house roles at Coca-Cola and Kellogg, and was also examining attorney at the USPTO. He now handles settlement negotiation, opposition and cancellation proceedings before the Trademark Trial and Appeal Board and district court trials. Rodgers Lunsford of Smith Gambrell & Russell LLP was described as “one of the best trademark trial lawyers in the state” and “a leader, without a doubt”. In his career he has litigated in many high-profile IP disputes, and has recently served as a mediator. Finally, we also identify Elizabeth Ann Morgan from Epstein Becker & Green, who handles licensing and protection issues and has argued before the eleventh circuit Court of Appeals and the US Supreme Court. She typically advises clients on trademarks for e-commerce and traditional business.