Danielle I. Mattessich

612.336.4725  |  Email  |  vCard  |  Biography

Minneapolis Office
3200 IDS Center
80 South Eighth Street
Minneapolis, MN
55402 USA

ph: 612.332.5300
fax: 612.332.9081

Assistant:

Amanda Avery
aavery@merchantgould.com
612.336.4712

Education

Bar Admissions

Professional Affiliations

Speaking Engagements

Notable Cases

Danielle is an intellectual property lawyer with a focus on trademark law. She has experience in all areas of trademark prosecution, such as preparing trademark clearance and availability opinions, preparing and prosecuting domestic and international trademark applications, and handling appeals before the Trademark Trial and Appeal Board. Danielle also has experience in trademark litigation matters where she prosecutes and defends clients in oppositions and cancellation proceedings. She handles trademark matters for clients conducting business in a wide variety of industries, including foods and beverages, hardware, cosmetics, lubricants and fuels, recreational vehicles, insurance and financial services, and telecommunications.

Prior to joining Merchant & Gould in 2005, Danielle served as a Trademark Examining Attorney with the United States Patent and Trademark Office for over five years. During that time Danielle examined over 6,000 trademark applications ranging from food products to computer software and Internet-based services. She represented the Trademark Office in several ex parte appeals before the Trademark Trial and Appeal Board. Danielle has co-authored reports presented to the former Commissioner of Trademarks and has given lectures on examination procedures for the continuing legal education of examiners.

Education

Mount Holyoke College
M.A., B.A., Italian, magna cum laude, 1994

American University, Washington College of Law
J.D., 1997

Bar Admissions

Connecticut State Bar, 1998
District of Columbia Bar, 1999
Minnesota, 2007

Professional Affiliations

International Trademark Association (INTA)
Minnesota State Bar Association
District of Columbia Bar Association, Intellectual Property Section

Speaking Engagements

GETTING INTO THE GAZETTE: Tips For ®esponding To ®efusals, ®equests and ®equirements, The 2009 Intellectual Property Institute, Faculty, September 24, 2009

Inside the USPTO'S Closet, September 22, 2009

It's In the Way That You Use It (Specimen Basics and Avoiding Functionality Refusals), January 26, 2009.

Niche Practice Areas: One Might Be Right for You, The New Lawyer Experience, MN CLE January 9, 2009.

Specimens of Use and Filing Bases: An Overview, May 9, 2008.

Behind the Scenes at the USPTO - The Examiner's Prospective Webinar, September 26-27, 2007.

The Basics of Trademark Prosecution, July 18, 2007.

Working with Trademark Examining Attorneys: Two Insiders Tell All Midwest Intellectual Property Institute, Faculty, September 2006.

An Introduction to Specimens of Use, February 2006.

Pendency Task Force, USPTO, July 2004 - August 2005.

Intellectual Property Law and Pirating Music, Renbrook School, Connecticut, February 2004.

Descriptive Designs Under 2(e)(1) of the Trademark Act - A Case Review of In Re Nonu, Inc.,
USPTO, May 2001.

The Relationship Between Service Mark Specimens & The Recitation of Services
USPTO, January 2001.

Notable Cases

In re Schwan's IP LLC (TTAB 2007) - Successfully reversed the USPTO's decision that the mark FRESCH is primarily merely a surname.

In re CC's Bakeries, Inc. (TTAB 2005) - Successfully defended the USPTO in an appeal involving a likelihood of confusion refusal between the marks C&C BAKERY for bakery products and CC'S BAKERIES for bakery goods.

In re Phoenix Intangibles Holding Company (TTAB 2005) - Successfully defended the USPTO in an appeal involving a likelihood of confusion refusal between the marks "GET IN. GET OUT. GET GOING." for retail convenience store services featuring convenience store items and fuel and "GET IN GET IT GET GOING" for retail convenience store services featuring gasoline and convenience store items.

In re Northrop Grumman Corporation (TTAB 2003) - Successfully defended the USPTO in an appeal involving a disclaimer requirement that the applicant enter a disclaimer of VIRGINIA ADVANCED SHIPBUILDING AND CARRIER INTEGRATION CENTER apart from the mark as a whole.

In re Simple.com (TTAB 2002) - Successfully defended the USPTO in an appeal involving a descriptiveness refusal of the mark SITE ENGINE intended for use in connection with computer services, namely, providing online content retrieval services for obtaining data on a global network.

In re Vitaplex, Inc. (TTAB 2002) - Successfully defended the USPTO in an appeal involving a likelihood of confusion refusal between the marks VERITAS for nutritional supplements and VERITAS for drinking water.

In re Anheuser-Busch, Inc. (TTAB 2001) - Successfully defended the USPTO in an appeal involving a surname refusal issued against the mark HARRINGTON'S for intended use on beer.

In re Nonu, Inc. (TTAB 2001) - Successfully defended the USPTO in an appeal involving a descriptiveness refusal that was issued in connection with a DESIGN MARK, consisting of the term "nonu" in stylized letters, a pictorial representation of leaves and a background design, intended for use in connection with herbal tea for medicinal purposes and herbal supplements.

In re Ginger Strong d/b/a Rubicon Orchards (TTAB 2001) - Successfully defended the USPTO in an appeal involving a likelihood of confusion refusal between the marks RUBICON for wholesale fresh market tree grown fruit and live fruit trees and RUBICON for non-alcoholic fruit juice beverages, fruit-flavored beverages, and coconut water.