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Kimberly A. Berger

Principal

Office

T:
+1.313.496.7912
O:
+1.313.963.6420
F:
+1.313.496.7500
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Education

Wayne State University Law School, J.D., 1999

University of Detroit-Mercy, B.A., 1996

Bar Admissions

Court Admissions

U.S. District Court

  • Eastern District of Michigan
  • Western District of Michigan

Kimberly A. Berger specializes in domestic and international trademark prosecution and intellectual property litigation, including domain name disputes, trade secrets, unfair competition, false advertising, and trademark and copyright infringement. 

She assists a variety of clients, from large, international companies to small businesses and individuals with protection of their intellectual property rights, including selection, clearance and prosecution of trademarks, e-commerce issues, domain name registration and disputes and brand name protection. 

Kim is experienced in developing and managing domestic and international trademark portfolios; trademark selection, clearance and prosecution; negotiating use agreements; brand protection; U.S. Patent and Trademark Office proceedings, including opposition and cancellation actions; and intellectual property litigation in both state and federal courts.

Representative Matters

  • Represents automotive Original Equipment Manufacturer (OEM) in trademark enforcement matters across all of its brands, including trademark oppositions and cancellations.
  • Manages international trademark portfolio for international aftermarket automobile services company with over 340 trademarks in 77 countries.
  • Manages international trademark portfolio for game company with over 155 trademarks in 30 countries.
  • Represented tattoo supply manufacturer in patent infringement action filed by German company in California District Court and successfully negotiated terms of patent license agreement.
  • Coordinated and managed multiple lawsuits in Brazil on behalf of franchisor against former master franchisee and sub-franchisees.
  • Coordinated and filed worldwide trademark registrations for nutritional supplement company.

Honors

DBusiness Top Lawyers, Intellectual Property Litigation, 2013, 2018, 2020; Copyright Law, 2020

Michigan Super Lawyers, Intellectual Property, 2016, 2017

Michigan Super Lawyers, Rising Star, Intellectual Property, 2010, 2013-2014

Corporate Insider Legal Awards, Excellence in International Trademark Prosecution, 2017

Corporate Live Wire Awards, Excellence in International Trademark Prosecution, 2015, 2016

Corporate America Legal Elite, Best for Trademark Prosecution, 2015

Wayne State University Law School, cum laude; Moot Court

University of Detroit-Mercy, magna cum laude; Insignis Scholar

Professional Activities

State Bar of Michigan, Member of the Intellectual Property Law Council

International Trademark Association, Enforcement Committee 2016-2017, Internet Committee 2018-2019

Michigan IP Inn of Court

American Bar Association, Intellectual Property Law Section; Litigation Section

American Intellectual Property Law Association

Federal Bar Association

Detroit Metropolitan Bar Association Inns of Court, 2013-2014

Detroit Regional Chamber's Leadership Detroit, Class XXXVIII

Women of Miller Canfield, Co-Chair, 2019-present

Speeches

"Choosing, Building and Protecting Your Brand," Financial Poise webinar, March 7, 2019

"IP Boot Camp 2019: Introduction to Key Concepts," Financial Poise webinar, February 7, 2019

"IP Issues," Small Business Legal Academy, 2016

"Fresh Perspectives on International Law," Panelist, Alumni Speaker Series, Wayne State University, Detroit, Michigan, February 17, 2015

"Retaining Female Litigators," Panelist, MDTC Winter Conference 2008 

Publications

Chapter author, “Trademarks and Brand Protection”, Social Media and the Law, Practising Law Institute, 2014-present 

"Internet control moves towards private sector with U.S. handover" (Quoted),  E-Commerce Law and Policy, April 2014

Articles