Overview

Margaret McHugh offers strategic and practical trademark and copyright expertise to a broad range of clients.  With over 30 years of legal experience, including years as a litigator, she now devotes her practice to intellectual property.  Her expertise includes strategic IP counseling, trademark clearance, the prosecution of trademark and copyright applications in the U.S. and internationally, global trademark portfolio management, protecting and defending intellectual property rights, licensing, and other business transactions and contracts pertaining to intellectual property. The depth and breadth of her experience allows Ms. McHugh to provide practical and efficient advice to her clients so that they may reach their business goals, while staying within budget.  

Working with a range of clients, from entrepreneurs to some of the most well-known Fortune 500 companies, in a broad range of industries, including computer hardware and software, financial services, medical devices and biotechnology, and well as other fields such as apparel, household consumer products, e-commerce, food products, life sciences, pharmaceuticals, transportation and wine, Ms. McHugh offers expert counseling and assistance in selecting the best trade names and trademarks and in putting in place practices that will help her clients establish the strongest brands to compete in the marketplace.  Her broad skills include trademark searching and clearance opinions, trademark and copyright prosecution, the protection of trade dress and product configuration, protecting and defending trademarks and copyrights, and the drafting and negotiation of assignments, licenses and other commercial agreements.

Ms. McHugh applies her multi-skill toolkit to manage small and large trademark portfolios, both in the U.S. and internationally.  She helps start-ups choose their company name and their first product names and to work with limited budgets in order to carefully prioritize their trademark filings, and also helps well-established companies with hundreds of trademarks manage their existing portfolio and expand their global footprint.  She takes advantage of her firm's well-established and reliable infrastructure, as well as her close relationships with a dependable network of foreign expert associates, to best position her clients to successfully secure trademark rights and to ensure these rights are maintained in the relevant countries.  Excellent client service, accessibility and responsiveness are of utmost importance to Ms. McHugh, who dedicates herself to helping her clients obtain their business objectives in an efficient and cost effective manner.

Ms. McHugh is experienced in civil litigation in state and federal courts involving trademarks, copyrights, trade secrets and antitrust, as well as related disputes involving commercial transactions. She has been successful in resolving numerous disputes prior to litigation, or at an early stage of litigation, through mediation, arbitration and other less costly alternatives. Mr. McHugh has also handled hundreds of opposition and cancellation proceedings  before the Trademark Trial and Appeal Board.

Ms. McHugh has significant appellate experience and has represented clients in a number of successful appeals, including cases involving antitrust, contract and fraud claims. She was formerly a judicial clerk for the New York Supreme Court, Appellate Division (Third Judicial Department).

 

 

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Experience

Trademark Counseling, Prosecution and Portfolio Management

Global trademark portfolio management and trademark enforcement for leading technology company whose products and services are used worldwide in diversified industries. Portfolio consists of nearly one thousand files. Clear new product names, successfully register marks in dozens of countries, protect and enforce trademark rights in the US and abroad. Manage the periodic intake of new portfolios upon new acquisitions by the client and large global assignment projects.

Trademark enforcement for major consumer electronics company.
Ongoing representation of a California-based Fortune 100 company, including providing strategic enforcement advice, and handling of dozens of Trademark Trial and Appeal Board proceedings and other trademark disputes.

Trademark counsel for prominent developer of audio and imaging technologies.
Provide trademark counseling, global trademark portfolio management and trademark enforcement for San Francisco-based company focused on audio, imaging and voice technologies for cinema, home theaters, computers, mobile phones, and games. Portfolio consists of thousands of pending and registered marks in nearly 100 countries.

p>Trademark clearance project for expanding pharmaceutical company.
Helped client evaluate trademark availability and assess risks associated with more than a dozen proposed alternative names for new products, managing team of attorneys to provide full legal opinions to the client in only a week.

Trademark clearance project for leading San Francisco-based apparel company.
Managed the clearance of more than 150 proposed marks, providing the client with a risk assessment in a matter of days.

Successful prosecution of Uniform Domain Resolution Proceedings (UDRP) complaints:
Filed complaints with WIPO on behalf of various clients whose marks were the subject of cybersquatting and infringement. Managed the prosecution of the complaints to a successful final decision requiring transfer of infringing domain names to our clients.

Representative Litigation matters

Successful prosecution of a federal copyright infringement case:
Represented the law firm of Brayton Purcell LLP in a copyright infringement case brought to protect our client’s proprietary website material. Successfully obtained a preliminary injunction and overcame defendant’s motion to dismiss. Brayton Purcell LLP v. Recordon & Recordon (N.D. Ca. 2004), decision upheld on appeal, 575 F.3d 981 (9th Cir. 2009).

Obtained a preliminary injunction in a trademark infringement case:
Represented Oracle Corporation in a case brought to enforce our client’s rights in the ORACLE trademark. Oracle Corp., et al. v. Light Reading, Inc., No. 02-2519 (N.D. Cal. filed May 23, 2002).

Defended manufacturer of consumer products accused of infringing trade dress of alleged well-known brand:
Dispute successfully settled with dismissal of complaint and without payment of any damages.

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Education

American University, J.D. (1986) cum laude
The American University Law Review, Member

University of Virginia, B.A. (1981) with honors

Admissions

California (1988)

New York (1986)

Court Admissions

U.S. Court of Appeals for the Ninth Circuit

U.S. Court of Appeals for the Federal Circuit

Clerkships

New York Supreme Court, Appellate Division

Professional & Community Activities

International Trademark Association

National Association of Women Lawyers (NAWL), Member

American Bar Association, Section of Intellectual Property Law, Member 

San Francisco Bar Association

Women's Intellectual Property Association (WIPLA), Member

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