Gregory C. Golla

Partner
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.371.5395
Contact My Assistant
Donna Mericle
D: 612.371.5250

Education

University of Minnesota Law School
J.D., magna cum laude, Order of the Coif, 1996

Northwestern University
B.A. Economics, 1993

Bar and Court Admissions

Minnesota Federal Bar, 1998
Minnesota State Bar, 1996

Professional Affiliations

International Trademark Association
American Bar Association
American Intellectual Property Law Association
Hennepin County Bar Association
Minnesota Intellectual Property Law Association
Minnesota State Bar Association

Awards & Recognition

Selected for inclusion in Minnesota Rising Stars, 2004-2005, 2011

Publications & Speaking

Understanding the Scope and Impact of the TTAB Rule Changes, co-presented a CLE with Scott Johnston, December 8, 2016

Cyberworld: Protecting Your Brand in Cyberspace, co-presented a CLE with Will Schultz, September 24, 2015

FTC Updated Green Guides Released, October 2012

Internet Enforcement - Who, What, and Where are we to Search?, October 2008

Greg co-authored A Legal Guide to the Internet, Editions 1-6; published by Merchant & Gould and the Minnesota Department of Trade and Economics.

Upsize Magazine: Watch out for shifting rules on wild, wild Web; November 2003

The Hennepin Lawyer: Search Engines and Banner Ads May Result in Newfound Liability; December 2002

The Hennepin Lawyer: New Top-Level Domain Names (.Biz, .Info, .Pro, .Name, .Coop, .Museum, .Aero); December 2001

Saint Thomas Mini Masters November 2006 Presentation - Internet Law

Saint Thomas Mini Masters March 2006 Presentation - Internet Law

Saint Thomas University 2005 Trademark and Internet Law Presentation

Saint Thomas Mini Masters May 2005 Presentation - Internet Law

Saint Thomas Mini Masters March 2005 Presentation - Internet Law

Saint Thomas Mini Masters December 2004 Presentation - Internet Law

Saint Thomas MBA November 2004 Presentation - Internet Law

Saint Thomas Law School 2004 Presentation - Internet Law

Saint Thomas Mini Masters May 2004 Presentation - Internet Law

Association of Women in Communication April 2004 Presentation - Internet Law

McNally Smith College of Music December 2003 Trademark Law Presentation

Saint Thomas Mini Masters November 2003 Presentation - Internet Law

Saint Thomas MBA November 2003 Presentation - Internet Law

McNally Smith College of Music April 2003 Trademark Law Presentation

McNally Smith College of Music February 2003 Trademark Law Presentation

Saint Thomas MBA September 2002 Presentation - Internet Law

Computer Law Institute MSBA 2001 CLE Presentation Internet Enforcement

Greg became a lawyer because he enjoys helping others solve their problems. He loves to see his clients' advertising and branding when he's out and about, knowing that he worked on protecting those brands so his clients can flourish in the marketplace.

Greg practices general Intellectual Property law with an emphasis on trademark, Internet, copyright, licensing agreements, and litigation. He has successfully represented clients involved in domestic and foreign trademark oppositions and cancellation proceedings and litigated trademark infringement, unfair competition, and trademark dilution cases and appeals. Greg has broad experience with Internet law, including domain name disputes and acquisitions.

He is also experienced in all phases of trademark prosecution, including the preparation of trademark clearance and availability opinions, preparation and prosecution of trademark applications, and conducting appeals before the Trademark Trial and Appeal Board. Greg has published articles and given frequent presentations on Internet law issues.

At Merchant & Gould, Greg is co-chair of the technology committee and chair of the library resources committee. He does pro bono trademark representation for No Time for Poverty and Fraser, a Minnesota nonprofit serving special needs children and adults.

Greg's two small children keep him busy at home. He enjoys scuba diving, waterskiing, and downhill skiing.

Representative Cases

(Numerous Trademark Trial and Appeal Board and ICANN UDRP cases excluded)

New York Times Co. v. Tasini , 533 U.S. 483 (2001) , Prepared amicus Supreme Court brief on behalf of the AIPLA for this landmark copyright case.

Advantus Capital Management et al. v. Aetna, Inc ., Civil Action No. 0:06-cv-02855 (D. Minn. 2006). Represented plaintiff owner of ADVANTUS trademark for investment-related services. Moved for preliminary injunction to stop Aetna from using ADVANTUS for health plan-related services. Secured immediate and complete preliminary injunction. Case subsequently settled.

PrimeVest Financial Services, Inc. (division of ING) v. Partnervest Financial Group, Inc. ; Civil Action No. 0:05-cv-189 (D. Minn. 2006). Represented plaintiff asserting infringement of PRIMEVEST trademark. Following depositions of the executives of defendants, defendants agreed to stop using the PARTNERVEST mark and the case settled.

Jeff Anderson and www.mnschools.com v. Advanced Access, Inc. , et al ., Civil Action No. 03-2908 (D. Minn. 2005). Represented defendant in copyright infringement case involving website framing. Case settled during summary judgment motion hearing.

Schwan's IP, LLC and Schwan's Consumer Brands v. Kraft Pizza Company, Civil Action No. 04-125 (MJD/JGL) (D. Minn. 2004); Appeal to the Eighth Circuit Court of Appeals Appeal No. 05-3463. Represented the plaintiffs in a trademark and unfair competition claim relating to use of the marks BRICK OVEN and BRICK OVEN STYLE in connection with frozen pizza.

PrimeVest Financial Services, Inc. v. PrimeVest, Inc. and Brian Quinn, Case No. '01 CV 0438 W (D.S.D. Cal. 2001). Represented plaintiff asserting infringement of PRIMEVEST trademark. Defendants agreed to stop using the PARTNERVEST mark and the case settled.

Joseph Reiners d/b/a Mother Natures Vitamins v. MotherNature.com, Civil Action No. 99-CV-1531 DSD/JMM (D. Minn. 1999). Represented plaintiff asserting infringement of MOTHER NATURES common law trademark. Defendant agreed to purchase rights to the MOTHER NATURES mark and the case settled.

ZCL Composites, Inc. v. Xerxes Corporation, Civil Action No. 0:98-CV-999 (D. Minn. 1998). Represented defendant in a patent infringement suit related to underground storage tanks. Case settled.

Department 56, Inc. v. William E. Kirchner, Civil Action No. 99-CV-152 JMR/FLN (D. Minn. 1999). Represented defendant in an unfair competition and right of publicity case. Case settled after opening arguments at trial.

CSC Brands LP and Campbell Soup Company v. Herdez Corp. and Hormel Foods Corp, Civil Action No. CIV S-01-1504 FCD/GGG (D. Minn. 2003). Represented defendants in a trademark infringement case involving the V8 mark and trade dress. Case settled prior to trial.

EZ Dock, Inc. v. Schafer Systems, Inc., Civil Action No. 98- 2364 RHK/JMM (D. Minn. 1998). Represented defendant in a trade dress and patent infringement case involving an on sale bar. Case settled during appeal after summary judgment in defendant's favor.

Lundgren Bros. Construction v. Pickens, (D. Minn.). Represented the defendant homeowner in a copyright infringement action involving design of a residential home. Case settled.

SJF Material Handling, Inc. v. American Surplus, Inc ., Civil Action No.: 021899 MJD/JG (D. Minn. 2003). Represented plaintiff in a copyright infringement action related to website design. Case settled with the agreement to cease use and consent judgment.

Bradley Pharmaceuticals, Inc. v. New York Otolaryngology, Group, P.C., Civil Action No. 01-2014 JAG (D. NJ 2001). Represented the plaintiff in a copyright, metatag, trademark and domain name infringement action. Case settled in plaintiff's favor.

Minnesota Mining And Manufacturing Company v. Print-Inform GmbH & Co. and Janel, S.A. de C.V. ; ITC Investigation No. 337-TA-467 (2002). Represented the plaintiff in an ITC trademark infringement action related to the use of the color yellow on repositionable notes. Cases settled with defendants' agreement to cease use.

TCF Financial Corporation v. Derrik Dyka; Civil Action No. (D. Minn. 2003). Represented the plaintiff in a trademark and domain name infringement action related to the mark TCF. Case settled with defendant's transfer of the domain name.

DecoPac, Inc. v. PhotoFrost Decorating Systems and Lew Churnick; Civil Action No. 05-899 JNE/SRN (D. Minn. 2005). Represented plaintiff in a trademark infringement action for use of the mark PHOTOCAKE. Case settled with defendant's agreement to cease use.

Anything.com Ltd. v. Mighty Media, Inc.; Civil Action No. 06-cv-162 ADM/AJB (D. Minn. 2006). Represented the plaintiff in a contract action to enforce the contract to sell the domain name at issue.

BDC Partners, Inc. v. Lebanon Valley College and Dickinson College; Civil Action No. 2:06-cv-1699 (D. Ariz. 2006). Represented domain name holder in an appeal of an UDRP proceeding related to use domain names containing college names and mascot names.

Northern States Power Company v. PECO Energy Company, Civil Action No. 00-302 PAM/JGL (D. Minn. 2001). Represented defendant in a trademark infringement and unfair competition action against Northern States Power Company's new name and mark Xcel Energy asserted by PECO Energy Company based on its Exelon name and mark. Case settled with continued use of the mark by our client.

Northern States Power Company v. Excel Energy, LLC, Civil Action No. 00-302 (PAM/JGL) (D. Minn. 2001). Represented defendant in a trademark infringement and unfair competition action against Northern States Power Company's new name and mark Xcel Energy asserted by Excel Energy LLC. Case settled with continued use of the mark by our client.

Gary W. Polzin d/b/a/ Polzin Glass v. Tom Polzin d/b/a Polzin Auto Glass, Appeal No. 99-2615 (8th Cir. May 18, 2000). Represented defendant in trademark infringement and unfair competition matter. Successfully defeated a motion for a preliminary injunction and obtained summary judgment for the defendant on the basis of claim preclusion. Affirmed on appeal.

U.S. Bancorp and U.S. Bank National Association v. Empire Bancshares, Inc. and United Southwest Bank, Civil Action No. 99-CV-985 MJD/JGL (D. Minn. 2000). Defended trademark infringement action brought by U.S. Bank contending that United Southwest Bank's US BANK mark infringes U.S. Bank's trademark rights. Case settled.

ADC Telecommunications, Inc. v. ADC Information Technologies, Inc., Civil Action NO. C-2--01-868 (S.D. Ohio 2001). Represented plaintiff in a trademark infringement, unfair competition and related claims action relating to use of ADC mark.

Saint Mary's Press of Minnesota v. DeVore & Sons, Inc. d/b/a Fireside Catholic Publishing and Fireside Bible Publishers, Civil Action No. 04-01561-DWF-SRN (D. Minn. 2004). Defended trademark and trade dress infringement action alleging that DeVore & Sons' Catholic Your Bible infringed on Saint Mary's Press' Catholic Youth Bible. Successfully defeated preliminary injunction motion and obtained dismissal of all claims with prejudice. See Saint Mary's Press of Minnesota v. DeVore & Sons, Inc., 2004 U.S. Dist. LEXIS 12255 (D. Minn. 2004).

B&K Industries, Inc. v. Kohler Co., Case No. 04 C 03454 (N.D. Ill. 2004). Represented Kohler in a trademark infringement dispute regarding B&K's use and attempted registration of the mark CALLISTO in view of Kohler's KALLISTA mark.

Judicial Clerkships

Intern for the Honorable Michael Davis, U.S. District Court

Law clerk for the Honorable Roberta Kay Levy, Minnesota District Court, Hennepin County


MEDIA CENTER

All Media
News Alerts
1/6/17
TTAB Rules of Practice Are Changing Significantly
The USPTO Trademark Trial and Appeal Board (TTAB) has adopted new rules.  These rules significantly streamline the TTAB process, including allowing more material to be submitted through a notice of reliance and allowing testimony through declaration.  ...
Events
12/8/16
Lunch & Learn: Understanding the Scope and Impact of the TTAB Rule Changes
Please join us for a complimentary Lunch & Learn CLE covering recent rule changes at the Trademark Trial and Appeal Board.Thursday, December 8, 2016 12:00 - 1:30 p.m.The Minneapolis Club Governor's Room 729 2nd Avenue South  Minneapolis, MN ...
Events
9/24/15
Cyberworld CLE
CYBERWORLD: Protecting Your Brand in Cyberspace Join us for a complimentary CLE focusing on Trademark Law and the ever-evolving Cyberworld Will Schultz – Online Brand Protection and Watching, 2:00-2:30 Greg Golla – Domain Names, Advertising, ...
White Papers
10/1/12
FTC Updated Green Guides Released
FTC Updated Green Guides Released On October 01, 2012, the Federal Trade Commission issued its long-awaited “Guides for the Use of Environmental Marketing Claims” (“Green Guides”). The updated Green Guides provide advertisers and sellers ...
News Alerts
4/16/12
Merchant & Gould Trademark Enforcement Team Alert: Fourth Circuit Revives Rosetta Stone’s Trademark Infringement and Dilution Claims Against Google
Brand owners and Internet advertisers take note: This notice provides an overview of the Rosetta Stone v. Google decision that revives Rosetta Stone’s claim of trademark infringement and dilution against Google based on the use of trademarked ...
Press Releases
8/22/11
16 Merchant & Gould Attorneys Named 2011 Super Lawyers
Firm Also Recognizes Nine Rising Stars Merchant & Gould, an intellectual property law firm, today announced that 16 of the firm's attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and ...
Press Releases
7/29/10
U.S. District Court Protects CRISTAL Trademark
Merchant & Gould, an intellectual property law firm, today announced that its client, Champagne Louis Roederer, producer of Cristal Champagne® won a major trademark litigation victory. United States District Court Judge Joan Ericksen ruled that a permanent ...
Press Releases
1/2/06
Merchant & Gould Promotes Four Partners in Atlanta and Minneapolis
Intellectual property and litigation law firm Merchant & Gould is pleased to announce that it has named George W. Jordan III, Joseph Bennett-Paris, Ph.D., Gregory Golla, and Christopher Sorenson as partners at the firm.At the firm's Atlanta office, ...
Articles
11/3/03
Watch out for shifting rules on wild, wild Web
Click here to read article co-authored by Gregory Golla in Upsizemag.com