Barbara J. Grahn Partner Minneapolis, MN Tel: 612.607.7325 Fax: 612.607.7100 bgrahn@foxrothschild.com Barb assists companies in securing and enforcing their trademark rights both in the United States and internationally. She regularly advises clients in copyright law and licensing and the related areas of advertising compliance, false advertising, unfair competition and rights of publicity and privacy. Barb has extensive experience counseling clients in the areas of U.S. and international trademark clearance, registration and enforcement, brand development and management, trademark registration strategy, trademark and copyright infringement disputes, domain name issues, sweepstakes and contest rules and copyright registrations for software and databases. She has handled numerous trademark oppositions and cancellations before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Barb has particular experience with clients in the medical device, consumer goods, publishing, digital and information security and computer software fields. Representative Matters Responsible for thousands of U.S. and international trademark applications and registrations. Took over pending trademark applications and successfully overcame repeated refusals to register a client s house mark. Assisted a major U.S. software company in successfully defending against trademark infringement claim in the Netherlands (on appeal). Assisted a major U.S. home goods client in successfully recovering infringing domain name and shutting down infringing online sales on multiple websites. Successfully pursued numerous online infringements of client s certification mark. Negotiated and drafted license and co-existence agreements in connection with the proposed divestiture of a product line with a significant U.S. and international trademark portfolio. Before Fox Rothschild Prior to joining Fox, Barb was a partner at Oppenheimer Wolff & Donnelly LLP. Honors & Awards Named to the World Trademark Review 1000 (2017-2018)
Named among the Top Women Attorneys in Minnesota by Super Lawyers Magazine & Mpls/St. Paul Magazine (2014-2015) Named in the International Who s Who of Trademark Lawyers (2013, 2015) Named among the Women Leaders in the Law by ALM and Fortune Magazine (2015) Named a Super Lawyer by Super Lawyers Magazine (2004-2014) Named in Top 40 in Intellectual Property Law and Top 100 Women Super Lawyers by Super Lawyers Magazine Fellow of the American Bar Association Martindale-Hubbell AV Rated Practice Areas Intellectual Property Copyrights Trademarks Bar Admissions Minnesota Court Admissions U.S. Court of Appeals, Eighth Circuit U.S. District Court, District of Minnesota Education University of Minnesota Law School (J.D., 1977) University of Minnesota (B.A.) o Journalism Memberships American Bar Association - Intellectual Property Law Section, Publications Officer (2016-present); Chair, Books Editorial Board (2007-2010); Vice Chair, Content Advisory Board (2016-present), Member (2007- present) International Trademark Association Board of Directors Givens Foundation for African American Literature (2003-2008) Hennepin History Museum (2014-present) Publications 2006 to Present
Trademark Infringement Remedies BNA Books Events Protecting Your IP and Preparing for Financing October 10, 2018 at 12:00pm 1:30pm Fox Rothschild Hosted by: Twin Cities Startup Week MedTech Monitor: Industry Trends 2018 April 26, 2018 at 7:45am 6:00pm Fox Rothschild LLP Hosted by: Fox Rothschild MedTech Monitor: Industry Trends 2018 April 26, 2018 at 7:45am 6:00pm Minneapolis, MN Hosted by: Fox Rothschild LLP and DuVal & Associates, P.A. Options for International Trademark Protection May 9, 2017 Hosted by: Minnesota Intellectual Property Law Association CLE Trademark Series: Breakfast at Pantone #1837: Color Trademarks April 19, 2017 Hosted by: Minnesota CLE Structuring Co-Existence Agreements January 11, 2017 Hosted by: Strafford Publications Teleconference Trademark Settlement Agreements: Tools for Drafting, Negotiating and Coexisting August 25, 2016 at 1:00pm 2:30pm Webinar Hosted by: American Bar Association Mastering Requests for Reconsideration and Ex Parte Appeals February 16, 2016 Hosted by: Mastering U. S. Trademark Registration Practice, Minnesota CLE Key Considerations for Trademark Licensing January 15, 2015 Hosted by: Midwest IP Institute, Minnesota CLE Resolving Ethical Dilemmas in Trademark Practice January 14, 2013
Hosted by: Midwest IP Institute, Minnesota CLE Protecting Trademark Rights Outside the U.S. Best Practices for Registering Marks Abroad, Understanding the Madrid System and Enforcing IP Rights January 13, 2013 Strafford Publications Teleconference Trademark Due Diligence in Mergers and Acquisitions January 15, 2011 Hosted by: Advanced Trademark Law, Minnesota CLE An Introduction to Trademark Clearance January 14, 2011 Hosted by: Introduction to Trademark Law, Minnesota CLE Protecting Intellectual Property in Europe January 15, 2010 Hosted by: Doing Business in Europe French American & German American Chambers of Commerce Trademark Co-Existence Agreements January 14, 2010 Hosted by: National Constitutional Center Webinar News October 18, 2018 Barbara Grahn Named a 2018 Minnesota Icon October 11, 2018 Finance & Commerce Announces Inaugural Icons Class Finance & Commerce March 8, 2018 2018 WTR 1000 July 21, 2017 Largest Intellectual Property Law Firms in the Twin Cities Minneapolis/St. Paul Business Journal January 17, 2017 2017 WTR 1000 WTR 1000 October 17, 2016 Offensive Trademark Ban Going Down? It Probably Should Not Law360 February 17, 2016
People on the Move Minneapolis/St. Paul Business Journal