What she does
- Intellectual property law, specifically, trademarks and copyrights, and related agreements
- TTAB opposition and cancellation proceedings
- Advertising law
Awards and Recognitions
- Super Lawyer® 2023, 2022, 2021, 2020
- Ranked among 250 Most Powerful Women in IP, World IP Forum, August 2021
- Recognized by Top 100 Magazine as Top Lawyer, 2020
- Primary responsibility for managing trademark portfolios in excess of 4000 applied-for and registered marks in more than 120 different countries worldwide.
- Liaised with foreign counsel on the management of global trademark portfolio in 150 countries.
- Drafted complaint in Uniform Domain Name Dispute Resolution Proceeding (UDRP) for one of the world’s largest financial institutions resulting in a successful transfer of an infringing domain name from a cyber squatter to the bank.
- Defended telecommunications company in trademark cancellation at Trademark Trial and Appeal Board (TTAB) proceeding and settled matter without running up substantial legal bill and most importantly, protecting the telecom company’s registered trademark.
- Successfully drafted Motion for Summary Judgment before the TTAB resulting in successful opposition for railway client.
- Led due diligence review for intellectual property portfolio acquisition worth $350 million.
- Experience in diverse industries: food and beverage, financial services, beer and spirits, dietary supplements, automotive supplies and equipment, small appliances/tools, clothing, golfing equipment, retail services, telecommunications, and hospitality.
Presentations, Publications, Activities
- Author, "Local Minneapolis Startup in a Jam with Smucker's Over its Crustless Sandwich Launch," The Trademark Lawyer Magazine Newsletter, January 2023
- Presenter, "IP Considerations for Corporate and Start Up Lawyers," Chicago Bar Association, September 2022
- Co-Presenter, "Weeding Out Imposters: When Cannabis Brands Name Themselves After Well-Known Children's Brands," Orange County Bar Association, July 2022
- Table Topic Moderator, "Rebranding in Times of Social Justice," INTA Annual Meeting, May 2022
- Co-Author, "Weeding Out Imposters: When Cannabis Brands Name Themselves After Well-Known Children's Brands," The Trademark Lawyer Magazine, April 2022
- Presenter, "Trademark and Brand Protection Essentials for In-House Counsel," In-House Connect, April 2022
- Presenter, “Five Key Trademark Decisions of 2021,” Chicago Bar Association, February 2022
- Author, Intellectual Property 2020 Expert Guide, “The New Trademark Modernization Act: It’s Impact on Foreign Owners,” January 2022
- Co-Presenter, “Effective Strategies to Successfully Resolve U.S. Trademark Disputes,” Lawline, October 2021
- Panelist, "Protecting Trademarks Abroad: Madrid System v National Filing in Foreign Jurisdictions," Strafford, July 2021
- Presenter, "How Small Businesses Can Legally Protect Their Brands," Small Business University, July 2021
- Panelist, "Trademarks as a Living Organism," ASIPI webinar, May 2021
- Presenter, "Trademarks and Rights of Publicity Law," Chicago Bar Association, May 2021
- Author, The Trademark Lawyer Magazine Newsletter editorial: "Nike Sues MSCHF over its unauthorized Satan Shoes," April 2021
- Presenter, "IP Considerations in the Rebranding Process," Iowa State Bar Association, April 2021
- Panelist, "How to Innovate Intellectual Property Education," Chicago Bar Association, April 2021
- Author, The Trademark Lawyer Magazine, "Valentino Rocks Three New U.S. Trade Dress Registrations for Luxury Footwear," January 2021
- Presenter, "Responding to Trademark Office Actions: Strategies to Overcome Refusals and Successfully Persuade the Examiner," Lawline, December 2020
- Author, The Trademark Lawyer Magazine Newsletter editorial: "Hermès Battles Former Employees as Sophisticated Counterfeit Ring is Busted," October 2020
- Presenter, "IP Considerations in the Rebranding Process," Iowa Intellectual Property Law Association Conference, October 2020
- Co-Presenter, "SCOTUS: IP Year in Review," Lawline, September 2020
- Co-Author, The Intellectual Property Strategist, "What’s your Trademark Worth? Determining the Value of Trademarks for Collateral, Sale or Licensing" September 2020
- Presenter, "5 Tips for Trademark Success at the USPTO," Trademarkabilities, April-June 2020
- Author, Intellectual Property 2020 Expert Guide, "International Trademark Filing Considerations to Protect Global Brands,” February 2020
- Presenter, "How to Be an Effective Trademark Practitioner Before the USPTO," Lawline, October 2019
- Author, The Intellectual Property Strategist, "The Madrid System Turns 30: The Pros and Cons of Using the Madrid Protocol in the United States and for U.S. Based Companies," October 2019
- Presenter, "How to Be an Effective Trademark Practitioner Before the USPTO," Iowa Intellectual Property Law Association Conference, October 2019
- Panelist, "How to Effectively Respond to Third-Party IP Infringement Through Online Platforms," ABA, September 2019
- Co-presenter, “Everything You Need to Know About Intellectual Property," Chicagoland Chamber of Commerce, May 2019
- Co-presenter, "How to Name Your Brand and Make it Trademarkable," Chicagoland Chamber of Commerce, May 2019
- Presenter, "Intellectual Property Tips for Entrepreneurs," Barrington Public Library, April 2019
- Co-Presenter, “Everything You Need to Know About Intellectual Property," Small Business Administration, April 2019
- Co-Presenter, "How to Name Your Brand and Make it Trademarkable," Small Business Administration, March 2019
- Presenter, "IP Primer for Corporate Attorneys," Chicago area law firm, February 2019
- Presenter, "IP Primer: Understanding Trademarks, Copyrights, and Rights of Publicity," NW Suburban Bar Assn, November 2018
- Presenter, "IP Primer for Corporate Attorneys," Chicago area law firm, November 2019
- Co-Presenter, “Protecting Your Brand Against Counterfeiters," Lawline, October 2018
- Presenter, "How to Structure a Trademark Opinion Letter and Assess Risk," Lawline, October 2018
- Co-Presenter, “Protecting Your Brand Against Counterfeiters," ASIPI webinar, October 2018
- Presenter, “5 Tips Every Small Business Owner Should Know About IP Law,” Small Business Advocacy Council, June 2018
- Presenter, “Counterfeit Goods: The World’s Largest Illegitimate Industry,” Small Business Advocacy Council, April 2018
- Presenter, “IP Tips for Success,” DePaul University Coleman Center for Entrepreneurship, March 2018
- Author, The Intellectual Property Strategist, "Federal Circuit Holds Scandalous or Immoral Marks Entitled to Registration," Feb 2018
- Panelist, “Advising Emerging International Clients,” Chicago Bar Association, November 2005
- Member, Editorial Board, The Trademark Lawyer Magazine, January 2021 – Present
- Member, Small Business Advocacy Council, 2018
- Member and Group Leader, ProVisors, 2018 – 2019
- Member, International Trademark Association
- Member, American Bar Association
- Member, Editorial Board, The Trademark Reporter, INTA, January 2008 – December 2009
Where she went to school
- Juris Doctor, cum laude, The John Marshall Law School, Chicago, Illinois
- Masters in Business Administration, Marketing, DePaul University, Chicago, Illinois
- Bachelor of Arts, University of Vermont, Burlington, Vermont
Where she’s admitted to practice law
- District of Columbia
Other interesting factoids
- Stacey may not be a regular at Fashion Week, but she can advise you on the latest trademark decisions involving Christian Louboutin®, Louis Vuitton®, and other luxury brands.
- Despite Stacey’s severe sensitivity to caffeine, that does not stop her from knowing the ins and outs of the Trademark Office’s recent decision holding coffee goods to be related to restaurant and hotel services.
- Fallen sports heros are in the news every week it seems. Although Stacey’s 1980s best girls’ water skier trophy does not necessarily qualify her to counsel you on your sports rights and intellectual property question, her substantive knowledge of the interplay of rights of publicity, trademarks and copyrights, and the first amendment probably do.