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Our People: Ernest W. Grumbles III

   Ernest W. Grumbles III,  Attorney

612.336.4601  |  Email  |  vCard

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

ph: 612.332.5300
fax: 612.332.9081

Education

Boston College
B.A., Political Science, magna cum laude, 1989

University of Wisconsin-Madison
J.D., with honors, 1995

Judicial Clerk, Honorable Reynaldo G. Garza, U.S. Court of Appeals for the Fifth Circuit, 1995-1996

Bar Admissions

Texas, 1995
Wisconsin, 1995
Minnesota, 1997
U.S. District Courts - D. Minn.; W.D. Wis.; E.D. Wis.; E.D. Texas; S.D. Texas; N.D. Fla.
U.S. Courts of Appeals - Federal; 8th; 5th

Professional Affiliations

Minnesota State Bar Association
International Trademark Association
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
American Bar Association - Intellectual Property Law Section

Ernest is a trial attorney and has handled numerous intellectual property disputes in federal courts around the United States, including patent litigation related to semiconductor wafer inspection tools, medical devices and electronic gaming equipment, and trademark enforcement for national consumer brand companies. Ernest was co-lead counsel in a copyright infringement lawsuit related to the Baltimore Ravens Super Bowl ring, a matter which settled favorably on the eve of trial. While practicing on the Texas-Mexico border, Ernest was first-chair defense counsel in a federal narcotics conspiracy trial and also argued before the Texas Court of Appeals.

IP counseling and portfolio development are also important parts of Ernest's practice. He assists established and emerging companies in recognizing their IP assets and developing a pragmatic approach to protect and enforce those assets. Current technology focuses include internet technologies, organic electronics and IC/wafer inspection.

Ernest is a co-host of BP/G Radio, a intellectual property podcast found at www.bpgradio.com . He also regularly speaks and writes on patent and trademark issues, including recent presentations on trademark surveys and changes to PTO rules on examination of claims and continuation practice and recent articles on internet-based trademark disputes.

Ernest has achieved an AV peer review rating by Martindale-Hubbell.

Recent Articles

Co-author of The Inventor Who Died and Other Mysteries - Resolved
Intellectual Property Today - January 2008

Co-author, with William D. Schultz, of Issues in Keyword Advertising
IP Law360 - December 2006

Co-author of Trademarks on the Internet: An Update on Metatags, Sponsored Links, and Pop-up Advertisements
The IP Book - October 2006

Co-author of Protective Orders: An Evolving Balancing Act
The Patent Lawyer - Spring 2006

Meta Tags, Banner Ads, and Pop-Ups: An Update on the Clash Between Trademark Rights and Internet Marketing Practices
The IP Book - October 2004

Recent Presentations

"Trademark Surveys: How to Use Them . . . Wisely" September 28, 2007, with David Prange

"PTO Final Rules Continuations/Claims" Merchant & Gould Boardroom, September 14, 2007, with Mark Skoog

"Understanding the Miscellaneous Changes to Trademark Trial and Appeal Board Rules" Merchant & Gould Boardroom, August 17, 2007, with Scott Johnston

"Trademark Damages Update" Midwest Intellectual Property Institute, September 25, 2006, with Laura J. Hein and Lora Esch Mitchell

"Proposed PTO Rule Changes: Continuations and Claim Examination" Merchant & Gould Boardroom, April 25, 2006, with Mark Skoog

"Proposed Changes to TTAB Practice" Merchant & Gould Webinar (national), March 15, 2006, with Scott Johnston

"Trademark Infringement Damages - Recent Developments," FBA-Minnesota (IP Litigation Section), February 9, 2006, with Lora Esch Mitchell and Laura Hein