Making her mark- Area attorney focuses on trademark specialty

By Sheila Pursglove

Legal News

Attorney Beth Coakley has a signed thank-you note from Martha Stewart, for trademark work done two decades ago, before the business magnate and TV personality reached celebrity status.

"I like to think the trademark licensing work I did helped us both launch a career that's still thriving today," says Coakley, a principal at the global intellectual property firm of Harness Dickey & Pierce in Troy, where she focuses on trademarks, copyrights, domain name disputes, licensing, and anti-counterfeiting.

According to Coakley, while a company's brand is often its most valuable asset, trade names and trademarks are not typically valued or treated as a tangible asset from a shareholder or tax standpoint.

"In practice however, if the name of a business or the name of a newspaper is removed or covered up, there would be considerably less interest in them because there would be no goodwill associated with these 'brand-less' resources."

Coakley enjoys taking care of what often starts as nothing, and turning it into a valuable asset.

"I also enjoy working with some of the most famous marks in the world and enforcing those rights and making sure they are well protected."

The "real fun," she notes, is developing comprehensive global strategies that meet or exceed the client's business objectives by maximizing the benefits of trademark laws and then enforcing those trademarks (when need be) against third parties who use the same mark or something confusingly similar to it.

"I also like working on licensing or transactional matter that allow the trademark owner to take something to the next level and engage in product extensions so that someone who was selling pizzas one day under a certain mark can enjoy the benefits of that same mark by selling toys under the same mark the next day," she says.

Thanks to the success of Harness Dickey for close to a century, Coakley has had the privilege of working with very highly regarded businesses around the world, including working with the largest Opposer in the United States. As a result, she has had front-line responsibility for hundreds of contested matters (Oppositions and Cancellations) before the Trademark Trial and Appeal Board (TTAB), the U.S. Court of Appeals, and with the help of her litigation partners, the U.S. District Court.

"Knowing TTAB procedural rules and handling contested trademark matters every day has also improved my procurement or prosecution skills," she says.

In one challenging case, Coakley took a call from Chief Judge Gerald Rosen of the U.S. District Court in Detroit, telling her a motion seeking a temporary retraining order had been filed. Rosen knew from past dealings with Coakley that she probably wanted to defend the case.

The client was being sued for importing--and starting to sell--thousands of counterfeit children's tennis shoes. Coakley was successful in establishing the counterfeit goods were innocently imported, obtained a credit for substitute merchandise from the Chinese vendor, and then voluntarily agreed with the court to remove the goods from store shelves and have all the counterfeit labels removed from the shoes.

"I then suggested my client donate the shoes to underprivileged children which resulted in favorable publicity and a charitable tax deduction," she says. "What started out as a very bad situation for my client turned into not only a complete 'fix' but also a real benefit to others. This shows a creative, yet professional bulldog approach--that is, never give up that bone--can and does work!"

Coakley joined Harness Dickey in 1993, and her many kudos include Best Lawyers in America, Best Lawyer of the Year Trademark Law, Michigan Super Lawyers Intellectual Property, and dbusiness Magazine Top Lawyer Intellectual Property. The career move has been a great match-up. "Our firm is one of very few places where clients will find that their lawyers truly care about them, their business and business objectives, and developing and protecting their intellectual property," she says.

She brought to the firm eight years' previous experience as Chief IP Counsel for Kmart Corp. and Vice President of Kmart Holdings, in charge of maintaining and enforcing one of the largest trademark portfolios for the world's largest retailer at the time.

"I had tremendous front-line opportunity and negotiated trademark disputes that involved huge volumes and complex worldwide transactions that included everything from dog food to diapers," she says. "As a result, my mantra was to become a 'deal maker' and not a 'deal breaker' and this has served our firm's clients well over the years. I left Kmart over 20 years ago, long before it fell into its various troubles or before it lost its footing among competitors and feel very lucky to have I left on such a 'high note' and while my stock options had value."

A certified neutral commercial arbitrator for the American Arbitration Association, Coakley was appointed to the Panel of Neutrals for the INTA Alternative Dispute Resolution Program, and is a certified mediator.

After graduating from DCL, Coakley worked at the Michigan Supreme Court for Chief Justice G. Mennen "Soapy" Williams, the 41st governor of Michigan and under whose tenure the Mackinac Bridge was constructed.

Published: Mon, Jul 15, 2013

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