Michelle L. Zimmermann

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Michelle L. Zimmermann

Overview

Ms. Zimmermann counsels clients of all sizes in a variety of industries on trademark, trade dress, copyright, unfair competition, and internet law matters providing practical, timely, and thorough real-world advice to her clients.  Experienced before the Trademark Trial and Appeal Board and in U.S. District Courts, she prosecutes and defends oppositions, cancellations, and lawsuits.   Ms. Zimmermann also counsels in areas of non-judicial enforcement and defense, domestic and international trademark clearance and prosecution, and licensing arrangements.  She also spent six months as a secondee at a large international client, working as a member of their in-house trademark department.

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Ms. Zimmermann represents clients in a variety of industries, including consumer goods, Internet and technology, insurance and financial services, and industrial and commercial products.  Her experience includes a six month secondment, where she operated as a member of her large international client’s in-house trademark department directing outside counsel and providing direct counseling and guidance to business units in the areas of trademark prosecution, enforcement, and search and clearance, providing her a unique insight into the demands and responsibilities of her in-house clients.

Ms. Zimmermann provides clients advice with respect to searching and clearance for new marks both in the U.S. and internationally.  She is experienced in both U.S. and international trademark prosecution, including appeals of Final decisions before the T.T.A.B.

Active in both judicial and non-judicial enforcement and defense, Ms. Zimmermann handles domain name, app, and social media policing matters, in addition to more traditional trademark policing efforts.  She has both prosecuted and defended oppositions and cancellations before the Trademark Trial and Appeal Board (T.T.A.B.), represented plaintiffs and defendants in U.S. Federal Courts, and supervised and coordinated trademark litigation, cancellations, and oppositions in many foreign jurisdictions.  She is also experienced in negotiating practical and favorable settlements, licensing arrangements, and co-existence agreements to resolve disputes.

Experience

  • Successfully represented non-U.S. client opposer in opposition before the Trademark Trial and Appeal Board, including coordinating and handling all aspects of discovery and trial testimony periods, as well as the taking of testimony by written questions as the client was located outside the U.S.
  • Successfully represented client opposer in opposition before the Trademark Trial and Appeal Board, including taking testimony deposition and preparing trial briefs and associated documents.
  • Successfully obtained Summary Judgment for client defendants in U.S. District Court, including assisting with preparation of briefs and associated documents.
  • Successfully represented client opposer in opposition, including assisting with preparation of trial briefs and associated documents. After trial, the Board issued a final decision declaring the client’s mark famous as a matter of law and granting the opposition.
  • Represented plaintiff in an appeal of a Trademark Trial and Appeal Board decision at the U.S. District Court, assisting with discovery and trial preparation before the matter ultimately settled.
  • Successfully represented various trademark owners in Domain Name Uniform Dispute Resolution Policy complaints at the National Arbitration Forum
  • Regularly conduct international clearance searches for large multi-national clients, including clearance for both use and registration
  • Manage trademark portfolio of over 7,000 marks for a large multi-national client

Education

  • University of Illinois College of Law, J.D., magna cum laude, 2007
    • Managing Editor for Journal of Law, Technology and Policy
  • Miami University, B.A. in Physics and Political Science, magna cum laude, 2004
    • Phi Beta Kappa, inducted 2004
    • Sigma Pi Sigma, inducted 2003
    • National Society of Collegiate Scholars, inducted 2001

Admissions

  • Illinois, 2007
  • S. District Court for the Northern District of Illinois
  • S. District Court for the Western District of Wisconsin

Courts

  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin

Honors

  • Emerging Lawyer, Leading Lawyers Network, 2016-2020

Professional Affiliations

  • Chicago Women in IP (ChiWIP)
  • International Trademark Association (INTA)
  • Intellectual Property Owners Association (IPO)
  • Intellectual Property Law Association of Chicago (IPLAC)
  • Chicago Bar Association
  • Phi Alpha Delta Law Fraternity, International

Community Involvement

  • Chicago Women in IP, Board member 2018-present, Various Committees 2016-present
  • International Trademark Association, Internet Committee 2018-present
  • Intellectual Property Owners Association, Trademark Committee (formerly Domain Names and Social Media Committee), 2014-present
  • Kappa Delta Sorority, National Leadership Team 2008-present

Articles, Publications & Lectures

  • “Cloudy skies forecast for trademark licensees in the wake of Tempnology”, Issue 75 of World Trademark Review, October/November 2018
  • “Don’t be a (trademark) bully: Tips and considerations for protecting marks,” co-authored by Anne E. Naffziger, Chicago Daily Law Bulletin, September 9, 2015
  • “Deluge of new top-level domains flood Web with opportunities, risks,” co-authored by Anne E. Naffziger, Chicago Daily Law Bulletin, December 4, 2014
  • “Sunbeam marks the start of a new day for trademark licenses in bankruptcy,” co-authored with Lynn A. Sullivan, Issue 41 of World Trademark Review, February/March 2013

Insights

Education

  • University of Illinois College of Law, J.D., magna cum laude, 2007
  • Managing Editor for Journal of Law, Technology and Policy
  • Miami University, B.A. in Physics and Political Science, magna cum laude, 2004
  • Phi Beta Kappa, inducted 2004
  • Sigma Pi Sigma, inducted 2003
  • National Society of Collegiate Scholars, inducted 2001

Admissions

  • Illinois, 2007
  • S. District Court for the Northern District of Illinois
  • S. District Court for the Western District of Wisconsin

Courts

  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin