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Desktop Image: Moersfelder, Matthew E.
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Matthew E. Moersfelder

He/Him

Partner

T 206.757.8014 Seattle
I believe that branding means more than the size of a trademark portfolio.
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Matthew Moersfelder helps clients develop branding strategies that focus on fulfilling business goals rather than on portfolio size. He believes that it is not possible to effectively advise clients without deeply understanding their business, and he actively seeks relationships where he is expected to be an active member of clients' in-house legal teams. His advising philosophy is informed by business-oriented decision-makers who require practical advice based on a deep understanding of law that can be directly implemented by the business.

While Matthew spends much of his time advising clients on trademark matters, he understands that protecting a client's brand goes beyond trademarks. He therefore also has experience in a full spectrum of branding-related legal areas, including advertising; licensing; IP acquisition and due diligence; domain-name registration and application strategies; combatting cybersquatting; effective online branding; and preventing unauthorized online use. He also has successfully represented numerous clients in branding-related conflicts, including in federal and state courts, before the Trademark Trial and Appeal Board (TTAB), and in domain-name arbitrations.


Practice Highlights

Portfolio management

Helped clients optimize trademark portfolios to reduce unnecessary filings and expand in critical areas to maximize benefit and protection in line with client budgets.

Clearance

Cleared thousands of trademarks for use and registration for clients in diverse practice areas, including consumer goods and services, media and entertainment, games and gaming, chemical distribution, fashion and apparel, travel, healthcare, and financial services.

Enforcement

Invalidated trademark HEAT ON THE FLY registration on grounds of genericness as part of lawsuit involving heating water for hydraulic fracturing operations.
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Admitted to Practice

  • Washington, 2012
  • New York, 2006
  • U.S. Patent and Trademark Office
  • U.S. District Court Southern District of New York
  • U.S. District Court Eastern District of New York

Education

  • J.D., The George Washington University Law School, 2006, with honors
    • Student Advocate, Law Students in Court
    • Mock Trial
  • B.S.E., Chemical Engineering, University of Michigan, 2002, magna cum laude
    • Quality Function Deployment (QFD) Institute
    • Research Assistant, Virtual Reality Computer Programming Development

Memberships & Affiliations

    • Executive Committee Board for Intellectual Property, Washington State Bar Association, 2017-present
    • Nonprofit Committee, International Trademark Association, 2012-2015

Background

    • Associate, Kenyon & Kenyon LLP, New York, N.Y., 2006-2012
    • Summer Associate, Kenyon & Kenyon LLP, New York, N.Y., 2005
    • Judicial Clerk, Hon. Richard Linn, United States Court of Appeals for the Federal Circuit, Washington, D.C., 2004
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