KATHLEEN COONEY-PORTER, a trademark and copyright lawyer, is a partner in the firm's Trademark and Copyright practice groups where she counsels foreign and domestic clients on a broad range of trademark and copyright issues. These include registrability, unfair competition, trade dress, trade name, and Internet-related and anti-counterfeiting matters in the United States and globally.
Ms. Cooney-Porter advises her clients' marketing and sales staff and company leadership on how to enhance, secure, leverage and enforce their marks and brand portfolio. She asserts her clients' interests at the United States Patent and Trademark Office (USPTO) and argues on their behalf before the Trademark Trial and Appeal Board (TTAB).
Ms. Cooney-Porter represents clients in such diverse industries as publishing, marketing, pharmaceutical, chemical, energy, aviation, apparel, and food and beverages. She also represents the United States government, several non-profit associations and organizations, and companies focused on offering exclusive licensing of name brands to manufacturers and retailers.
Prior to joining the firm, Ms. Cooney-Porter worked at the USPTO in various capacities, including as an Examining Attorney. She also served in the Office of the Assistant Commissioner for Trademarks, where she oversaw resolution of the Commissioner's legal questions and international trademark issues. Ms. Cooney-Porter was awarded a Bronze Medal by the U.S. Department of Commerce for superior federal service. She has served as an appointee to the USPTO's Trademark Public Advisory Committee. In that role, she advised the Undersecretary of Commerce for Intellectual Property and the Director of the USPTO on matters relating to policies, goals, performance, budget, and user fees.
In addition to her domestic work, Ms. Cooney-Porter is adept at navigating her clients through the complexities of international filings, including Madrid applications, European Union filings, and individual country filings. She works collaboratively with overseas counsel to accomplish her clients' goals abroad.
Ms. Cooney-Porter dedicates her time to several local and national non-profit institutions such as The Washington Jesuit Academy, Pediatric Aids/HIV Care, Inc., St. Jude's Hospital, Dolley Madison Preschool, Salvation Army, the National Center for Missing and Exploited Children, and the Organization for Autism Research.
Professional Affiliations
American Bar Association
American Intellectual Property Law Association (AIPLA)
Bar Association of the District of Columbia, Patent, Trademark and Copyright Section; Trademark Chair (2000)
The District of Columbia Bar, Co-Chair, Intellectual Property Law Section (2000 - 2002); Steering Committee (2000 - 2002 and 2008 - 2010)
Intellectual Property Owners Association
International Trademark Association (INTA), Subcommittee Member; Trademark Offices Practices Committee Subcommittee (2002)
Washington Area Lawyers for the Arts
Women's Bar Association of the District of Columbia, Intellectual Property Forum Committee
Experience
Representative Matters
Represented Haribo regarding a pair of related conflicts before the Trademark Trial and Appeal Board pertaining to Haribo's mark BUILD-A-BURGER for candy and Build-a-Bear's mark BUILD-A-BEAR for retail store services featuring children's toys. These disputes also involved Build-a-Bear's sought-after registration of its mark for candy. The parties entered into a co-existence agreement, which resulted in a negotiated withdrawal of all Board proceedings with prejudice. Build-a-Bear Retail Management, Inc. v. Haribo of America, Inc. and Haribo of America, Inc. v. Build-a-Bear Retail Management, Inc., Opp. No. 91/186,208 (TTAB Jan. 9, 2009).
Represented APA in an Opposition before the Trademark Trial and Appeal Board against Plumeus' Application to register the mark PSYCHTESTS.COM as likely to be confused with the client's family of "PSYC ..." marks. The parties settled the Opposition under an agreement prohibiting Plumeus from using or further registering its mark except under circumstances acceptable to APA. American Psychological Association v. Plumeus Inc., Opp. No. 91/188,153 (TTAB Aug. 12, 2009).
Represented Agri Labs in a Cancellation Action before the Trademark Trial and Appeal Board against Manna Pro's Registration for the mark COLOSTRO-FIX as likely to be confused with Agri Labs' mark COLOSTRX. The parties settled the matter under an agreement designed to avoid confusion in the marketplace. Agri Laboratories, Ltd. v. Manna Pro Products, LLC, Opp. No. 92/050,842 (TTAB Nov. 25, 2009).
Represented APA in an Opposition against Cookie Jar's Applications to register the mark MAGI-NATION as likely to be confused with APA's mark MAGINATION PRESS. The parties resolved their differences by entering into a trademark co-existence agreement. American Psychological Association v. Cookie Jar Entertainment, Inc., Opp. No. 91/186,125 (TTAB Nov. 18, 2009).
Represented DHHS before the Trademark Trial and Appeal Board in its Opposition against AHA's multiple applications to register variations of the marks WEAR RED DAY and a RED DRESS Design in connection with charitable services relating to women's heart health issues. The case was settled with AHA abandoning half of its applications and assigning a 50% interest in the other half of the applications to DHHS. U.S. Dept. of Health & Human Svcs. v. American Heart Ass'n, Inc., Opp. No. 91/174, 163 (TTAB Dec. 5, 2007).
After APA received a cease-and-desist letter from ABEBooks, represented APA in a declaratory judgment action for non-infringement, which also included APA's claims of trademark infringement against ABEBooks. The case was settled with ABEBooks withdrawing all claims and any possible future claims of trademark infringement against the APA BOOKS mark, as well as ABEBooks removing its offending infringements of APA's marks from ABEBooks' web site. American Psychological Association v. ABEBooks, Inc., Civil Action No. 1:08cv30 (D.D.C. Mar. 6, 2008).
Accolades
U.S. Department of Commerce Bronze Medal Award (1997)
International Law Program Certificate of Commendation (1989)
International Law Society Certificate of Merit (1989)
Resources
News
D.C. Bar's IP Law Section Receives 2011 "Best Section of the Year" Award
Monday, April 25, 2011
D.C. Bar's IP Law Section Elects Kathleen Cooney-Porter to Three-Year Term
Thursday, June 26, 2008
Kathleen Cooney-Porter and Colette Durst-Barkey Recognized by Legal Assets
Friday, July 8, 2005
Oblon, Spivak Partner Kathleen Cooney-Porter Appointed to USPTO Trademark Public Advisory Committee
Tuesday, December 14, 2004
Oblon, Spivak's Trademark Practice Group Responds To World Intellectual Property Organization's (WIPO) Request For Comments On Internet Domain Names
Monday, March 1, 1999
Publications
IP Protection: Planning in Advance is Not Optional
Tuesday, July 31, 2007
Forum Shopping in Trademark Litigation in the United States
Thursday, October 1, 1998
"Drawings Practice" in the Prosecution of Trademark Applications
Wednesday, July 1, 1998
All Dressed Up ...
Monday, March 23, 1998
Events
26th Annual Intellectual Property Law Conference
Wednesday, April 6, 2011 - Saturday, April 9, 2011
2010 Trademark Boot Camp
Thursday, June 10, 2010
Intellectual Property Training Seminar
Tuesday, June 19, 2007
PTO Day
Monday, December 4, 2006
Intellectual Property Training Seminar
Tuesday, June 28, 2005
Blog
Maker of Generic Products: Alleged Copying of Procter and Gamble's Scope Outlast Mouthwash Packaging
Monday, June 06, 2011
Seeking an injunction, statutory damages, and/or defendant's profits, The Procter & Gamble Company (P & G) sued Vi-Jon, Inc., a generic-products manufacturing and distribution company on May 27, 2011 in the Southern District of Ohio Western Division for patent and trademark infringement as well as unfair competition.. See...
Trademark Trial and Appeal Board Finds Configuration of Pet Food Container Inherently Distinctive
Friday, June 03, 2011
On May 16, 2011, the Trademark Trial and Appeal Board reversed the refusal to register a mark (not precedential), filed by Mars, Inc. (U.S. Trademark Application Serial No. 77/727,119) that "consists of a three-dimensional configuration of packaging for pet food that consists of a round bowl-shaped, inverted and lacquered pet food...