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REPRESENTATIVE EXPERIENCE

Alexis Crawford Douglas

Represented plaintiff Nerdio, Inc. in its successful cancellation of NERDIO registration based on priority and likelihood of confusion at the Trademark Trial and Appeal Board. The registration was blocking the client's application for NERDIO, and the Board found the evidence showed the client had been providing services under the mark first, giving the client priority over the earlier-filed application
Obtained successful transfer of a domain name in arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy at the Forum. The Forum panelist ruled that the domain name was confusingly similar to the client's trademark, the registrant had no legitimate interest in the domain name and was using it to give the impression it was maintained by the client, and the domain name had been registered and used in bad faith
Successfully negotiated an amendment to a Japan energy company in Trademark Consent and Coexistence Agreement with software developer. The company uses its company name in various marks in connection with the provision of a wide range of energy-related services
Negotiated global trademark coexistence agreement between an established transfusion medicine trademark and new genetic mapping trademarks, resolving numerous contentious proceedings related to the marks around the world and charting a path for mutual cooperation and fields of use in the future, creating business certainty and clear spaces for the marks
Manage numerous trademark applications and Office Action responses to the US Patent and Trademark Office involving a range of products and services
Global trademark counsel to brands in a range of industries, particularly focused on diagnostics and pharmaceuticals; counsel clients on clearance searches and risk assessments for new trademarks, brands, logos and company names
Handles intellectual property due diligence and agreement review in corporate transactions
Represented plaintiff in trademark infringement, unfair competition and cybersquatting case in the Northern District of Illinois and obtained favorable judgment, novel damages award, and injunction
Obtained successful transfer of domain names for car care client from cybersquatter offering competitive services
Obtained successful transfer of .com domain name for online health insurance marketplace
Represented plaintiff in trademark infringement and unfair competition action in the Southern District of New York, drafted pleadings, briefed and appeared in preliminary injunction hearings, engaged in motion practice, conducted depositions and advised on discovery strategy
Obtained successful transfer of .com domain name based on extensive common law rights
Routinely assist clients with removing infringing content from third-party websites
Successful transfer of domain name for financial services firm from cybersquatter
Obtained successful transfer of domain name for financial services firm from cybersquatter
Represented defendant as trademark counsel in Northern District of Illinois case involving trade dress infringement allegations for unique bottle design
Prevented transfer of rightfully registered domain names for medical device company
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