Patrick J. Gallagher

Partner

Fulbright & Jaworski LLP

Patrick J. Gallagher

Minneapolis

T:+1 612 321 2812

F:+1 612 321 2288

Patrick is a partner in the IP Brands Practice Group. Patrick concentrates on trademark and copyright issues, as well as other intellectual property matters.

He has extensive experience in trademark clearance, investigation, prosecution, client counseling and management of domestic and international trademark portfolios on behalf of clients of all sizes in a wide variety of industries. Patrick's practice also focuses on trademark enforcement; trademark opposition and cancellation proceedings; trademark, unfair competition and false advertising disputes and litigation; internet domain name disputes and proceedings; and trademark licensing. His practice also includes providing advice and handling disputes involving social media; IP due diligence; IP licensing; copyright counseling, protection and registration; copyright litigation; Digital Millennium Copyright Act (DMCA) notice and take down procedures; and domain name acquisition.

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  • Education

    1999 - J.D., cum laude, William Mitchell College of Law
    1991 - B.A., English and Political Science, Hamline University

    While attending law school, Patrick served as Editor-in-Chief of the William Mitchell Law Review. He was the recipient of the Alumni Association's Student Award of Merit for his graduating class (the award recognizes scholastic achievement, involvement in student organizations, community service and individual perseverance). He is admitted to the U.S. District Court for the District of Minnesota.

  • Representative experience

    Strategic Portfolio Management, Advice and Counseling:

    • Co-manages a 1000+ IP portfolio of an industry leading transportation company
    • Manages a 500+ trademark portfolio of an industry leading solar technology company
    • Advice and counseling to Fortune 100 discount retailer concerning trademarks, copyrights, social media and idea management
    • Co-counseled and co-managed two different industry leading companies with legal analysis and implementation regarding rebranding of corporate identity and house mark
    • Handled and coordinated domestic prosecution and managed international prosecution of over 1,000 trademark applications, including registration of several non-traditional trademarks
    • Negotiate and draft trademark license agreements, coexistence agreements, and license agreements involving copyrights, trade secrets, social media, patented-technology and know-how
    • Conducted and managed due diligence on several trademark/IP portfolio acquisitions in conjunction with corporate mergers/acquisitions, as well as advising on IP divestitures
    • Developed and implemented global trademark portfolio strategy for several large and medium-sized companies
    • Advise clients concerning copyright registration and protection, including copyright registration of computer software, web sites, artwork, books, instruction manuals and other publications

    Brand Protection and Disputes:

    • Served as co-counsel and assisted in handling over 50 federal intellectual property cases involving trademarks, trade dress, copyrights, false advertising, unfair competition, trade secrets and patents
    • Represented clients and directed representation of clients in 200+ domestic and international trademark opposition and cancellation proceedings
    • Assisted in development and implementation of global policing strategies for famous marks of Fortune 500 companies in the consumer products, health care and software/business analytics industries
    • Managed and handled thousands of trademark enforcement matters
    • Handled hundreds of domain name disputes and disputes involving use of social media, including UDRP proceedings, domain name acquisitions, and DMCA notice and take down procedures
    • Negotiated and drafted several worldwide coexistence agreements involving well-known brands
    • Obtained a favorable settlement for an industry-leading company in the clothing industry and its national retail customer in defense of a trademark case in the District of Minnesota
    • Represented a well-known Minnesota charter school pro bono in a trademark infringement action and prevented a West Coast charter school company from entering Minnesota and starting a new charter school under a confusingly similar name
    • Obtained a favorable settlement for Minnesota home builder concerning copyright dispute over use of architectural plans by former employee
  • Professional activities
    • International Trademark Association
      • INTA Adjunct Professor Special Interest Group (2006 - present)
      • INTA Bulletin Editorial Board, Features - Policy & Practice Subcommittee (2011 - 2012)
      • INTA Project Team, 2011 Leadership Meeting (2010 - 2011)
      • INTA Information Resources Committee, Project Team Pool (2008 - 2009)
      • INTA Bulletin Editorial Board, Features - Members, Benefits & Services Subcommittee (2002 - 2007), Chair (2005 - 2007)
    • William Mitchell College of Law, Adjunct Professor, Trademark Litigation (2005 - 2010); Guest Lecturer, Advanced Trademarks (2013 - present)
    • University of St. Thomas School of Law, Guest Lecturer, Intellectual Property (2012-2013)
    • Minnesota Intellectual Property Law Association
    • Minnesota State Bar Association
  • Professional honors
    • World Trademark Review 1000 - Minnesota: prosecution and strategy, Globe Business Publishing Ltd (2014)
    • Legal 500 USA - recommended lawyer, intellectual property: trademarks: non-contentious - full coverage, The Legal 500 (2014)
    • Who's Who Legal - trademarks, Law Business Research Ltd. (2014)
    • The International Who's Who of Trademark Lawyers, Who's Who Legal (2011, 2012 & 2013)
    • "Who's Who in American Law," 2011-2012, 2012-2013, 2013-2014, Marquis Who's Who (2012, 2013 & 2014)
    • Minnesota Rising Star 2006, 2007, 2008 & 2009 (Minnesota Law & Politics, 2006, 2007, 2008 & 2009)
    • "Who's Who of Emerging Leaders," Marquis Who's Who (2007)
  • Speaking engagements
    • "Trademark Bullying:  Where is the Line and When is it Crossed," West LegalEdcenter (Thomson Reuters) Webcast, Minneapolis, MN, Apr. 25, 2014
    • "International Brand Management - How to Protect Your Company's Most Important Asset Worldwide," Midwest Intellectual Property Institute, Minnesota CLE, Minneapolis, MN, Sept. 26, 2013
    • "Hey, Somebody is Using My Trademark as a Twitter Handle!! -- Strategies and Tactics for Safeguarding Intellectual Property Across Social Media Networks," Minnesota State Bar Assoc., Computer & Technology Law Section, Minneapolis, MN, Apr. 9, 2013
    • "International Brand Management - How to Protect Your Company's Most Important Asset Worldwide," Fulbright & Jaworski L.L.P. Web Seminar Series, Minneapolis, MN, Apr. 2, 2013
    • Intellectual Property Series:  "Upload, Download and All Points in Between: Strategies and Tactics for Safeguarding Company IP Across Social Media Networks," Minnesota CLE Webcast, Minneapolis, MN, Dec. 5, 2012
    • Co-host, "Trademark Management:  Trademarks in Business Transactions," INTA Roundtable, Minneapolis, MN, Sept. 18, 2012
    • "The Fundamentals and Best Practices in Protecting Intellectual Property Asset in the Employment and Independent Contractor Arenas," Fulbright & Jaworski L.L.P. Web Seminar Series, Minneapolis, MN, Mar. 6, 2012
    • "This is JEOPARDY!  Latest Developments and Techniques for Enforcing Trademarks on the Internet," 2011 INTA Leadership Meeting, Miami, FL, Nov. 12, 2011
    • "Comparison and Contrast of Different Types of Intellectual Property," "Trademarks 101," and "Copyrights 101"; Client In-House Training Seminar, Minneapolis, MN, Aug. 2, 2011
    • "Primer on Trademarks and Copyrights for Advertising Agencies and Strategic Design Firms," In-House Training Seminar for Design Agency, Sept. 14, 2010
    • "What is Intellectual Property?" Client In-House Training Seminar, September 10, 2009
    • "Trademark Clearance in Five Easy Steps," Midwest Intellectual Property Institute, Minnesota CLE, Minneapolis, MN, Sept. 26, 2008
    • "Trademark Law Developments: Changes That Impact Registration and Enforcement," Minnesota Intellectual Property Association CLE, February 14, 2008
    • "Critical Developments in the US and UK," Fulbright & Jaworski L.L.P. Web Seminar Series, December 4, 2007
    • Co-host, "Developments in Fraud Upon the U.S. Patent and Trademark Office," INTA Roundtable, Minneapolis, MN April 11, 2006
    • Co-host, "A Comparison of CTM and Madrid Protocol Trademark Applications," INTA Roundtable, Minneapolis, MN January 27, 2004
  • Publications
    • Co-author, "More Than an Ocean Apart:  Differences in EU and U.S. Treatment of Broad and General Terms in Identifications of Goods and Services," INTA Bulletin, Vol. 67,  Issue 17 (Oct. 1, 2012)
    • Co-author, "Fundamentals and Best Practices in Protecting Intellectual Property in the Employment Context," Corporate Counsel Section Newsletter, Summer 2012
    • Co-author, "Judge Posner Cuts Through the 'Semantic Jungle' in an Effort to Establish a Unified Standard for Awarding Attorneys' Fees," Fulbright & Jaworski L.L.P. Briefing, December 16, 2010
    • Co-author, "A Healthy Approach to Brand Management," World Trademark Review, Issue 28, December/January 2011
    • Co-author, "Federal Circuit Addresses Steps for Proving Intent to Resume Use of Alleged Abandoned Trademark," Fulbright & Jaworski L.L.P. Briefing, April 21, 2010
    • Co-author, "ICANN Announces Opportunity for Comment on Proposed Trademark Rights Protection Mechanisms for New Generic Top-Level Domain Names," Fulbright & Jaworski L.L.P. Briefing, October 2009
    • Co-author, "Federal Circuit Clarifies Standard for Fraud on the U.S. Patent and Trademark Office," Fulbright & Jaworski L.L.P. Briefing, September 2009
    • Contributor, Annual Review of Intellectual Property Law Developments 2006-2008, American Bar Association, January 2009
    • Contributor, "Recent Developments in Intellectual Property Law," ABA-Intellectual Property Law Newsletter, Quarterly, 1999 - 2008
    • Co-author, "Protecting Intellectual Property Abroad," Minnesota Lawyer, In-House Counsel Quarterly Special Focus, June 2007
    • "International Registration Strategies Forum Highlights Protection of Global Brands," INTA Bulletin, April 15, 2006
    • "Association President Paul Reidl Discusses 2006 Goals," INTA Bulletin, February 1, 2006
    • "Member Spotlight: Michael Barritt," INTA Bulletin, November 1, 2005
    • "Mark of the Month: GUINNESS WORLD RECORDS," INTA Bulletin, April 15, 2005
    • Co-author, "Trade Dress and Other Non-Patent Protection of Products," Patents and Product Protection, Minnesota CLE, March 2005
    • "Mark of the Month: ABSOLUT VODKA," INTA Bulletin, March 15, 2005
    • "Mark of the Month: SAMSUNG,"  INTA Bulletin, August 15, 2004
    • "Committee Comment:  Academic Institutions Recruitment Subcommittee - Spearheading the Academic Membership Initiative,"  INTA Bulletin, August 15, 2004
    • "Mark of the Month: IKEA,"  INTA Bulletin, July 15, 2004
    • "Mark of the Month: M&M's,"  INTA Bulletin, June 15, 2004
    • "Determining Global Availability of Basic Search Options and Strategies," INTA Bulletin, April 15, 2004
    • "Mark of the Month: CRAYOLA," INTA Bulletin, December 15, 2003
    • "Mark of the Month: BETTY CROCKER,"  INTA Bulletin, October 15, 2003
    • Co-author, "Trademark Oppositions: Effective Proceedings or Procedural Warfare?," INTA Bulletin, September 1, 2003
    • "Mark of the Month: TAKURA," INTA Bulletin, July 1, 2003
    • "Mark of the Month: SONY," INTA Bulletin, April 1, 2003
    • "Mark of the Month: LEGO," INTA Bulletin, February 15, 2003
    • "Mark of the Month: NIKE and the Swoosh," INTA Bulletin, January 15, 2003
    • "Mark of the Month: TRIVIAL PURSUIT," INTA Bulletin, November 15, 2002
    • Co-author, "U.S. Accession to the Madrid Protocol Should Streamline International Protection for Trademarks Owned by American Businesses and Citizens," Intellectual Property Update, Fulbright & Jaworski L.L.P., October, 2002
    • "Mark of the Month: VOLVO," INTA Bulletin, October 15, 2002
    • "Mark of the Month: COCA-COLA," INTA Bulletin, September 15, 2002
    • "Mark of the Month: KODAK," INTA Bulletin, August 15, 2002
    • "Mark of the Month: OREO Celebrates its 90th Birthday," INTA Bulletin, July 15, 2002
    • "Committee Comment - Survey Subcommittee: Corporate Benchmark Survey Completed," INTA Bulletin, May 15, 2002
    • "In the News: WWF Slammed by Wildlife Fund," INTA Bulletin, April 1, 2002
    • "International Basics Forum," INTA Bulletin, March 15, 2002
    • "In the News: No Bonding with Austin Powers - 007 Rejects Gold Membership," INTA Bulletin, March 15, 2002
    • "Trademark Practice Strategy: Trademark Trial and Appeal Board," Minnesota State Bar Association CLE, January 24, 2001
  • Civic involvement
    • St. Paul Youth Lacrosse Club, President (2003 - 2011)
    • Youth sports coach for hockey, lacrosse, soccer and baseball
  • Licenses
    • Minnesota State Bar License