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KatieMarkert

Counsel

"I love combining my experiences working in-house and in private practice to deliver practical, innovative solutions to my clients."

Overview

Biography

Katie concentrates her practice on trademark protection, including selecting, searching, and clearing trademarks; developing brand portfolios; monetizing and licensing intellectual property; and enforcing intellectual property rights. She routinely prosecutes trademark applications before the US Patent and Trademark Office (USPTO) and handles appeals of decisions on the registrability of trademarks as well as trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). Katie also regularly works with international attorneys to secure, maintain, and enforce intellectual property rights on a global basis for her clients.

Katie additionally has extensive experience representing alcoholic beverage companies in connection with matters involving the Alcohol and Tobacco Tax and Trade Bureau (TTB) and New York State Liquor Authority (NYSLA). She regularly assists start-up and established breweries, wineries, cideries, and distilleries with securing licensing, maintaining licenses in compliance with state and federal regulations, trade compliance, state franchise protection, product labeling and registration, advertising and marketing, product recalls, and audits or investigations involving the TTB and NYSLA.

Selected Memberships & Affiliations

  • International Trademark Association
Experience

Representative Experience

  • Managed a worldwide trademark portfolio for a national alcoholic beverage manufacturer.
  • Managed the domestic enforcement of trademark rights for an apparel and headwear company.
  • Managed a global trademark portfolio for a company manufacturing goods for use in, amongst others, the aerospace, industrial, security, defense, and energy industries.
  • Successfully negotiated a settlement agreement on behalf of a global manufacturer of pharmaceutical products.
  • Collaborated in the clearing, filing, and prosecution of trademark applications for the global re-branding of a pharmaceutical company.

Prior Experience

  • Harter Secrest & Emery LLP, Senior Associate
  • North American Breweries, Attorney and Wholesaler Development and Regulatory Compliance Manager
  • North American Breweries, Corporate Secretary
  • Duke, Holzman, Photiadis & Gresens, LLP, Associate

Selected Honors

  • Selected to Super Lawyers Upstate New York Rising Stars: Intellectual Property, 2018
  • Selected to Super Lawyers Upstate New York Rising Stars: Intellectual Property, 2017
Knowledge

Selected Speaking Engagements

  • Black Button Distilling, “Federal and State Alcohol Licensing”
  • Harter Secrest & Emery LLP, “Pouring Pints: A Discussion of the 2014 Craft New York Act”
  • WHAM 1180, “Intellectual Property: Protecting Your Brand”
  • National Conference of State Liquor Administrators Annual Conference, “Why Do You Want to Know Who I Am?: Complex Ownership vs. Licensing Requirements”
  • National Conference of State Liquor Administrators Northern/Southern Regional Conference, “Disclosure Requirements in Reporting Complex Ownership Structures”

Selected Publications & Media

Featured Media

Alerts

NY Green Bank and NY PSC: Energy Storage Updates

Alerts

House Judiciary Committee Advances MORE Act

Alerts

NYS Courts to Implement Early Mandatory Mediation

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