Home >> Professionals >> Danielle I. Mattessich

Danielle I. Mattessich

Partner

Minneapolis

3200 IDS Center, 80 South Eighth Street

Minneapolis, MN 55402

dmattessich@merchantgould.com

D: 612.336.4725

Contact My Assistant

Amanda Avery

aavery@merchantgould.com

D: 612.336.4712

Practices

Trademark Licensing Post Grant Proceedings Appellate

Industries

Food & Beverage Internet Sports & Fitness Shooting Sports Automotive & Powersports

Education

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

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

Bar and Court Admissions

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

Professional Affiliations

International Trademark Association
Minnesota State Bar Association
District of Columbia Bar Association
Intellectual Property Section

Publications & Speaking

Mastering Requests for Reconsideration and Ex Parte Appeals: Seasoned Practitioners and Former Trademark Office Examining Attorneys Discuss Strategies, Panelist, Minnesota CLE Mastering U.S. Trademark Registration Practice, Feb. 16, 2016

The Top Five Mistakes Businesses Make When Creating a Brand, Charming Keepsakes Newsletter, April 2012

Specimen Basics, January 15, 2011

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

Helping her clients secure and protect one of their most important assets—their brand names—is what Danielle does every day. She particularly enjoys the challenge of unusual problems, digging in to find the essential facts that make the case and solve the issue for her clients.

Danielle is an intellectual property lawyer with a focus on trademark law. She has experience in all areas of trademark prosecution, including 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, pet care, 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, examining more than 6,000 trademark applications ranging from food products to computer software and Internet-based services. Her experience in the Office taught her to understand exactly what examiners are looking for in an application, and to avoid weaknesses that might result in a refusal. 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.

Danielle handles several trademark matters pro bono for nonprofit clients. She enjoys spending time with her three rescue dogs, fishing, skiing, riding snowmobiles, and doing a bad job of crossword puzzles.

Representative Cases

True Value Company v. Premierco/Robert Aronin, 2012 NAFDD LEXIS 163 (2012) –Initiated Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings against cybersquatter and successfully acquired truevaluetools.com domain name for client.

True Value Company v. Tackle Tamer, 2012 NAFDD LEXIS 126 (2012) - Initiated Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings against cybersquatter and successfully acquired greenthumbstuff.com domain name for client.

True Value Company v. David Wetters, 2012 NAFDD LEXIS 83 (2012) - Initiated Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings against cybersquatter and successfully acquired truevalueservices.net domain name for client.

True Value Company v. True Value Services Inc., 2011 NAFDD LEXIS 1309 (2011) - Initiated Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings against cybersquatter and successfully acquired truevalueservices.com domain name for client.

In re True Value Company (TTAB 2008) - Successfully reversed the USPTO's decision that the mark MASTER ELECTRICIAN was merely descriptive of lighting fixtures and cord reels.

In re True Value Company (TTAB 2008) - Successfully reversed the USPTO's decision that the mark MASTER MECHANIC was merely descriptive of hand tools and power tools.

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.