Linda M. Merritt

Partner
Norton Rose Fulbright US LLP

Linda M. Merritt

Linda M. Merritt

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Biography

Linda Merritt is a partner in the Intellectual Property Practice Group of Norton Rose Fulbright US LLP. She focuses her practice on trademark, trade dress, copyright and technology matters. 

  • She represents clients in a variety of industries, including the software, financial, food products, pharmaceutical, energy and retail industries. Her practice includes counseling clients on selecting and clearing trademarks to evaluate a potential trademark's viability, strength and availability for use without conflict with a third-party mark. She assists clients in protecting trademarks through prosecution of applications for and maintenance of trademark registrations in the United States and around the world. She helps clients develop proactive trademark enforcement and policing strategies and manage their trademark portfolios. 

She was among the first to speak and write on the 2002 legislation implementing U.S. adherence to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Protocol"). She now has extensive experience in Madrid Protocol practice for the international protection of trademarks. She regularly advices clients on use of the Madrid Protocol to achieve cost savings.

Ms. Merritt represents clients in trademark controversies, including pre-litigation disputes, inter partes proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO) and court proceedings (typically in federal court). She regularly counsels clients on matters concerning trademarks and the Internet, including key word advertising issues and domain name recovery through the U.S. Anti-Cybersquatting Act and the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP).

Another aspect of Ms. Merritt's practice is in the area of intellectual property transactions. Her intellectual property transactional work includes: (i) negotiating and drafting intellectual property agreements, including licenses of trademarks, copyrights and technology; (ii) due diligence review in connection with the acquisition of intellectual property assets; and (iii) negotiating and drafting intellectual property-related provisions of merger agreements, asset purchase agreements and financing agreements.

Finally, she regularly counsels clients on copyright issues, including helping clients protect works of authorship, such as computer software, through prosecution of applications for copyright registrations and representing clients in copyright-related disputes.

Ms. Merritt serves on the firm's Women in the Firm and Profession Committee. Since 2010, she has served as co-chair of the Dallas Office Women's Initiative, fostering business development opportunities and mentorship for women.

Prior to attending law school, Ms. Merritt worked as a certified public accountant for PriceWaterhouseCoopers and as a financial planning manager for Hallmark Cards, Inc. in Kansas City, Missouri.


Professional experience

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JD, University of Kansas, 1994
MBA, Marketing, Rockhurst College, 1995
BBA., Accounting, Washburn University, 1980

Ms. Merritt was admitted to practice law in Kansas in 1994, in Missouri in 1995 and in Texas in 1996.

  • Texas State Bar

Representative trademark and copyright counseling, prosecution and enforcement matters include the following:

  • Representation of exclusive licensee of post-mortem rights of publicity of famous person in enforcement matters
  • Trademark prosecution, enforcement and counseling for publicly traded apparel design, manufacturing and marketing company with international portfolio of luxury and famous brands
  • Trademark prosecution, clearance, counseling and enforcement for privately owned U.S. prestige cosmetics brand 
  • Co-counsel in federal court litigation to enforce package trade dress rights for a major producer of fresh fruits and vegetables, resulting in a settlement whereby the defendant changed its package design
  • Co-counsel in federal court litigation to enforce plaintiff's trade dress rights in bread package design, resulting in a settlement following a preliminary injunction hearing
  • Represented major producer of fresh fruits and vegetables as petitioner in a cancellation action before the USPTO resulting in a settlement following discovery
  • Lead counsel in opposition proceedings before the Trademark Trial and Appeal Board of the USPTO to enforce the trademark rights of a major provider of managed health care software and services
  • Successfully prosecuted applications and obtained federal registrations for package designs for a major producer of fresh fruits and vegetables, including one on the basis of inherent distinctiveness following response to initial refusal
  • Co-counsel representing Internet postage vendor involving domain name and related trademark claims asserting client's mark was generic, which concluded with successful bench trial in federal court finding client had protectable trademark rights and ordering transfer of domain name to client
  • Trademark clearance, prosecution, and counseling for a leading provider of rent-to-own services
  • Managed the international trademark portfolio of and provided trademark advice and counsel to a world leader in voice automation solutions
  • Handled over 20 trademark controversies for a world leader in voice automation solutions, both in the U.S. and abroad through local counsel
  • Successfully enforced the house mark of a world leader in voice automation solutions in a Swiss court action against a major Swiss telecom provider
  • Trademark clearance and counseling for an international pharmaceutical manufacturer
  • Trademark and trade name counseling and clearance for a company name change following spin-off from a leading transportation, cash handling, and security services company
  • Trademark clearance, prosecution, and counseling for a national provider of financial products and services
  • Trademark clearance, prosecution, and counseling for a major international restaurant chain
  • Trademark counsel to a Texas-based independent oil and gas exploration and production company
  • Conducted an intellectual property audit of a portfolio company on behalf of a multi-billion dollar private equity fund
  • Counsel to famous singer-songwriter to terminate copyright grants pursuant to Sections 304(c) and 203 of the Copyright Act


Representative transactional matters include the following:

  • Representation of a celebrity in the launch of a new lifestyle brand through a joint venture, including in intellectual property licensing matters
  • Intellectual property counsel to a leading designer, manufacturer and marketer of branded apparel and accessories in its December 2016 acquisition of a prominent fashion brand portfolio, with an enterprise value of $650 million
  • Intellectual property counsel to a leading designer, manufacturer and marketer of branded apparel and accessories in connection with its acquisition in June 2015 of a 49% interest in a joint venture to develop and market product in North America under a prominent fashion industry brand, including representation with respect to trademark licensing matters
  • Drafted trademark license agreement pursuant to a Master Shared Fleet Operations Agreement between the owner of a famous automobile brand and a joint venture
  • Drafted and negotiated intellectual property agreements for technology developed for a Presidential library, including technology comprising computer software and wireless devices to enhance visitor experience
  • Intellectual property counsel representing a worldwide provider of on-site and on-line plant and pipeline maintenance in its purchase of a division of a competitor
  • Drafted and negotiated television production and program participant work product ownership agreements for the launch of a television network by a major Texas medical college to secure ownership rights in the college
  • Intellectual property counsel representing a leading provider of residential and commercial security in a cash and stock transaction valued at approximately $2 billion resulting in its acquisition by a competitor
  • Drafted and negotiated an exclusive trademark and copyright license on behalf of purchase discount incentives provider
  • Drafted and negotiated agreements pertaining to the authorship and distribution of a book on behalf of a Texas based financial services provider to secure ownership rights in the financial services provider
  • Intellectual property counsel representing a leading provider of voice automation solutions in its acquisition by a provider of related products and services
  • Intellectual property counsel representing a national provider of rent-to-own services in connection with its acquisition of a competitor for approximately $100 million
  • Negotiated technology licensing agreements between U.S. steel manufacturer and a Japanese company relating to the production of specialty steel
  • Intellectual property counsel representing major U.S. food products manufacturer in the sale of its dip division, involving drafting and negotiating intellectual property provisions of the asset purchase agreement and a complex intellectual property license agreement to allow the buyer to continue to use the client's house mark and copyrighted works following the sale
  • Intellectual property counsel representing Netherlands-based company in its first acquisition of a U.S. business
  • Managed intellectual property due diligence in connection with a Spain-based company's acquisition of a U.S. food products company, with trademark portfolio of over 250 trademark registrations in the U.S. and elsewhere around the world
  • Best Lawyer in Dallas, D Magazine, 2018
  • IP Star, Managing Intellectual Property, 2013 - 2018
  • Top 250 Women in IP, Managing Intellectual Property, 2013 - 2014
  • Trade Mark Law Practitioner, Expert Guides, 2014 - 2018
  • Women in Business Law, Expert Guides, 2014 - 2018
  • Texas Super Lawyer, intellectual property, Thomson Reuters, 2012 - 2018
  • Who's Who Legal: trademarks, Law Business Research Ltd, 2007- 2008, 2016 - 2018
  • World Trademark Review 1000, Texas: trademarks, Globe Business Publishing Ltd, 2011 - 2019
  • Co-author, "2003: A Legal Perspective - Intellectual Property," Texas Bar Journal, January 2004
  • "The Madrid Protocol-Special Issues for U.S. Practitioners," Texas Intellectual Property Law Journal, Fall 2003
  • Co-author, "Domain Name Update: .biz and .info TLDs," Fulbright & Jaworski L.L.P. Legal Update, June 2001
  • Co-author, "New Top-Level Domains are Coming," Dallas-Ft. Worth TechBiz, July - August 2001
  • "Decisions you need to know: Key Trademark Cases from 2016," Moderator, International Trademark Association Roundtable, Dallas, Texas, January 2017
  • "#HashtagHassles: The blessing and the curse of social media," Norton Rose Fulbright US LLP CLE Seminar, Dallas, Texas, November 2016
  • "Decisions you need to know: Key Trademark Cases from 2015," Moderator, International Trademark Association Roundtable, Dallas, Texas, January 2016
  • "Decisions you need to know: Key Trademark Cases from 2014," Moderator, International Trademark Association Roundtable, Dallas, Texas, January 2015
  • "Trademark Litigation A-Z," Moderator, International Trademark Association Roundtable, Dallas, Texas, March 2014
  • "Social Media and Intellectual Property - the Good, Bad and Ugly," Moderator, International Trademark Association Roundtable, Dallas, Texas, January 2013
  • "Current IP Issues," Association of Corporate Counsel, Houston Chapter, IP Practice Group CLE Presentation, Houston, Texas, October 2012
  • "Fraud:  Ethical Issues in Trademark Investigations," Fulbright & Jaworski L.L.P. Exploring Recent Trends in Fraud, Compliance and Enforcement CLE Seminar, Dallas, Texas, September 2010
  • "Utilizing Technology, Streamlining Processes, and Leveraging Past Work Product to Drive Efficiency, Monitor Costs, and Increase Savings," Panelist, American Conference Institute 4th National Forum on Reducing Legal Costs, Dallas, Texas, March 2010
  • "Trademark Investigations - An Overview of Practices and Ethical Issues," 2010 Internet and Intellectual Property Law Conference for the Non-Lawyer Professional, The Center for American and International Law, Plano, Texas, January 2010
  • "Trademark Investigations," Moderator, International Trademark Association Roundtable, Dallas, Texas, September, 2009
  • "Trademark Fair Use - Is It or Isn't It?" Dallas Area Paralegal Association 2009 Intellectual Property Conference, Dallas, Texas, January 2009
  • "Trademark Enforcement in 2009 - Trademark Enforcement Post-MedImunne and Pre-suit Investigations," Institute for Law and Technology 46th Annual Conference on Intellectual Property Law, The Center for American and International Law, Plano, Texas, November 2008
  • "Fair or Foul - Navigating the Waters of Fair Use," Moderator, International Trademark Association Roundtable, Dallas, Texas, July 2006
  • "Fundamentals of Trademarks and Copyrights," Metroplex Association for Corporate Paralegals CLE Seminar, Dallas, Texas, April 2006
  • "Trademark Searching Considerations, Including New Madrid Concerns," Moderator, International Trademark Association Roundtable, Dallas, Texas, July 2004
  • "The Madrid Protocol-Special Issues for U.S. Practitioners," 2003 Madrid Protocol Seminar, American Intellectual Property Law Association, Dallas, Texas, April 2003
  • "Trademarks 101: Fundamentals," Moderator and Co-Speaker, International Trademark Association, Dallas, Texas, October 2002
  • "Trademark Dilution Law," 2002 State Bar of Texas Annual Meeting, Intellectual Property Section, Dallas, Texas, June 2002
  • "Trademark and Copyright 101," 2002 North Dallas Chamber of Commerce Intellectual Property Conference, Dallas, Texas, April 2002
  • "Alternative Dispute Resolution," Moderator, International Trademark Association Roundtable, Dallas, Texas, January 2002
  • "Trademark and Copyright 101," 2001 North Dallas Chamber of Commerce Intellectual Property Conference, Dallas, Texas, June 2001
  • "Addressing the Tension Between Non-Generic Trademarks and Generic Domain Names," Co-Speaker, Fulbright & Jaworski L.L.P. Legal Issues Forum, Dallas, Texas, May 2001
  • "An Overview of the Fundamentals of Trademarks," 14th Annual Intellectual Property Law Course sponsored by the State Bar of Texas and the Intellectual Property Section of the State Bar of Texas, Dallas, Texas, March 2001
  • International Trademark Association (INTA)
    • Emerging Issues Committee - Limitations on Rights Subcommittee (2012 - 2013)
    • Enforcement Committee - Courts and Tribunals Subcommittee (2010 - 2011)
    • Enforcement Committee - Legal Certainty of Disclaimers Subcommittee (2008 - 2009)
    • Information Resource Committee - Trademark Proper Use Subcommittee (2007)
    • The Trademark Reporter Editorial Board (1999 - 2003)
  • American Intellectual Property Law Association (AIPLA)
    • Madrid Protocol Seminar, Program Vice-Chair, Dallas, Texas (2003)
  • American Bar Association
    • Assistant Editor, IPL Newsletter, published by the Intellectual Property Law Section (2007 - 2008)
    • Intellectual Property Law Section
  • State Bar of Texas - Intellectual Property Section, Trademark Committee, Chairman (2002 - 2004)
  • Dallas Bar Association - Intellectual Property and Computer Use and Technology Sections
  • GC Netweavers - Dallas-based networking group for sitting and transitioning general counsel