Editorial: Trademarks in Texas
01 May 2007
Trademarks have become an increasingly important consideration for global business and companies are looking to protect their IP portfolios. As befits a large industrial state, trademarks are big business in Texas, and this is reflected in the quality of lawyers dedicated to this area.
Fulbright & Jaworski LLP enjoys a signifi- cant national presence in the marketplace and boasts “a glittering array of talented lawyers”, offering a full range of services, from prosecution and licensing to advisory services. The firm’s representative clients have included ExxonMobil and PepsiCo as well as manufacturing and biotech corporations. Shannon Timothy Vale, was praised as “a big name, without question” and “a safe pair of hands when it comes to obtaining and maintaining trademarks”. He is joined in the Austin office by Richard Groos, a “real all rounder” with “a flair for creative problem solving”. Michael Metteauer has an “enviable reputation” for trademark clearance, prosecution and licensing. Paul Krieger is the fourth representative from the Austin of- fice, and he serves as head of the intellectual property and technology department. Respondents particularly praised his work in the medical products, and oil and gas sectors, and his experience in the field of counterfeiting and enforcement. Linda Merritt is the final lawyer to be listed from the firm. A “very big name in the area”, she works in the Dallas office. Merritt offers a range of trademark services in industries such as the software, food and retail sectors.
The second firm to be featured was founded by two ex-Fulbright lawyers. Austin firm Pirkey Barber LLP is a “phenomenon – a practice marked by integrity and civility”, according to one impressed respondent. The firm is dedicated entirely to trademark and unfair competition law and possesses a client roster that ranges from Fortune 500 companies to universities and small businesses. Louis Pirkey – “one of the pre-eminent trademark lawyers in Texas” – is “in a category of his own” and especially revered for his IT trademark work. William Barber’s practice focuses primarily on trademark policing and disputes as well as unfair competition litigation. For trademark litigation, competitors avowed that he was “the cream of the crop”. Barber also extends to advisory and domain name work. The firm’s other nominee, Steve Meleen, was dubbed a “great choice” for his “excellent record” in trademark litigation and is chair of the trademark internet/cyberspace committee of the American Intellectual Property Law Association, which is actively involved in internet developments and policies affecting trademark owners.
“Outstanding Texas IP boutique” Wong Cabello Lutsch Rutherford & Brucculeri LLP fields two practitioners on the following pages. Considered “excellent for both litigation and enforcement”, this firm, with offices in Austin and Houston, is further proof of the success of boutique firms in the trademarks field. Based in Austin, William Raman is “one of the top in disputes”, and his prosecution and litigation practice drew praise from competitors. He has worked for the likes of Advantage Rent-A-Car. His colleague in Houston, John Cain, focuses on trademark portfolio management and trademark clearance, procurement, licensing and enforcement in industries such as semiconductors, telecommunications and oilfield tools; he was praised for his trademark litigation practice.
Baker & McKenzie LLP also boasts a wellregarded trademark law contingent. Margaret Boulware, based in the Houston office, received a great deal of praise, with particular mention made of her focus on international portfolios. She is also “very well known” for her advice on international market strategies. Lisa Meyerhoff has a leading reputation for client counselling and litigation and has handled trademark matters before the US Trademark Trial and Appeals Board of the US Patent and Trademark Office.
Hitchcock Evert is a Dallas-based IP boutique that “punches well above its weight in every area” and combines local and international expertise. John Cone’s transatlantic knowledge is much admired – he has practised in London and Texas over his 30-year career, and has represented clients in areas such as health care, software, sports equipment and clothing. His colleague Elisabeth Evert is a co-founder of the firm and represents US and multinational companies – especially in the electronics, financial and investment, recreational, food and beverage and entertainment industries.
Howrey LLP has one of the largest IP practices in the world and offers a full range of trademark services combined with an international presence and a “great reputation for trademark litigation”, as well as notable expertise in internet-related trademark matters. The firm’s client roster is graced by entities such as Coca-Cola and Caterpillar. Thomas Casagrande’s work in trademark projects licensing matters received particular acclaim and he has represented clients such as Villa d’Este, Fila USA and Healthwise. Rodney Caldwell “really knows his stuff ” when it comes to trademark licensing advice, and trademark validity and infringement analyses. He is also “highly proficient” in trademark litigation.
Molly Buck Richard, founder of Richard Law Group, is “dedicated to providing highlevel yet cost-efficient services”. The firm is entirely dedicated to trademark law and Richard’s high profile from her days at large law firms means that she is “well known and loved” in the state. Her clients include brands such as Fossil and Greyhound Lines.
Vinson & Elkins LLP possesses an “outstanding trademark practice” and Peter Mims in the Houston office is “top-notch”, with experience in traditional trademark matters as well as M&A trademark issues and false advertising. Mims handled the trademark issues surrounding Pinnacle Foods’ private acquisition of the Armour brand canned meat business.
Baker Botts LLP’s trademark capability is “truly impressive”, forming part of one of the largest IP teams in the US and covering the entire gamut of trademark issues. The trademark department is well known for its proficiency in high-stakes litigation. Paul Morico’s “vast experience across the board”, especially in technological disputes, has impressed his peers and gained clients such as Alcatel and Esterline Tech. He recently represented Dell in a trademark case against The Old Store.
Locke Liddell & Sapp LLP’s Texas trademark capability operates from three offices across the state. In Houston, Paul Van Slyke’s “depth and breadth of experience” earned him plaudits. With “a great reputation for anti-counterfeiting work”, Van Slyke has prosecuted a series of cases involving counterfeit computer software for a Fortune 100 software seller. He is also experienced in anticounterfeiting work for luxury goods and is known for his internet expertise in areas such as domain name litigation.
Akin Gump Strauss Hauer & Feld LLP’s Lester Hewitt is “rated very highly” by his peers. “Calm and authoritiative”, he leads the firm’s intellectual property and technology practice groups in Houston. His practice centres on litigation and he has also acted as a mediator. In Dallas, Charles Cotropia flies the flag for Sidley Austin LLP. Another litigation- orientated lawyer, he has represented Justin Brands for over 12 years, handling all litigation and registration of trademarks for the company’s product line. He has also worked for TGI Friday’s and Holiday Retirement Corporation, to name but a few.
Julie McWhirter at King & Spalding LLP – a firm with a fast-expanding IP practice – “really stands out” in Houston, with attention drawn to her experience in trademark protection rights and expertise in the technology, internet and software spheres. At Cox Smith Matthew Incorporated, Gale Peterson commands respect. Peterson is division head for the American Bar Association’s intellectual property law section and highly experienced in defending trademarks in sectors such as entertainment and software as well as university and technology licensing. Morgan Lewis & Bockius LLP’s trademark practice combines a boutique-style concentrated service with large law firm resources and offers a full range of trademark services, with a particular concentration on managing and protecting international brand portfolios. The firm has “great market knowledge” in the technology and mechanical arts sectors as well as the pharmaceuticals, consumer products, agriculture and financial services industries, among others. Trademark litigation specialist Jerry Selinger represents Morgan Lewis in this chapter.
The firm has represented clients from the consumer products, pharmaceuticals, toys and games, motion pictures and online retailing industries. Respondents praised Selinger’s “courtroom nous” and “ability to creatively approach complex cases”. The final practitioner to make the chapter is Craig Weinlein from Carrington Coleman Sloman & Blumenthal LLP where, based in Dallas, he is leader of the firm’s IP practice group. His complex litigation practice drew admiring comments and his competence in high-stakes lawsuits between business competitors involving unique IP issues was noted. His clients come from a variety of sectors including technology, computers, consumer products, publishing and entertainment. Weinlein is also active in obtaining registrations and negotiating contracts.
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