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KatieMarkert

She | Her | Hers

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.
  • Represented a purchaser in its $2.4 million acquisition of the business assets of a Georgia rifle and rifle accessory designer and manufacturer.

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

  • Monroe County Bar Association, Business Law Section, “The Nuts and Bolts of an IP Licensing Agreement”
  • American Advertising Federation, Buffalo Chapter, “Crafting Trademarks: The Key to Developing a Strong Brand Name”

Selected Publications & Media

  • USLAW Magazine, "Failure to Satisfy Three New Requirements Could Put Your Trademark at Risk"

Selected Alerts & Blog Posts

Featured Media

Alerts

Second Circuit Court of Appeals Certifies Questions Regarding Damages for Improper Judgment Enforcement to New York Court of Appeals

Alerts

NYS Governor Cuomo Signs Bill to Fully Repeal Immunity for Certain Health Care Providers and Facilities

Alerts

Gridlock and Middleman Lobbying Cause NYS Pharmacy Benefit Manager Reforms to Fail Again in NYS Budget

Alerts

IRS Issues Additional Guidance on the Employee Retention Credit for First Two Quarters of 2021

Alerts

More Good News for Local Restaurants and Entertainment Establishments

Alerts

New York State Announces Deal to Legalize Marijuana

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