Heather J. Kliebenstein

Partner
Minneapolis
150 South Fifth Street, Suite 2200
Minneapolis, MN 55402
D: 612.371.5213
Contact My Assistant
Abigail Krueger
D: 612.371.5228

Heather is the chair of Merchant’s litigation group and specializes in intellectual property litigation. This work includes strategy development, discovery, depositions, expert selection and strategy, summary judgment motions, pre-trial submissions, and first chair trial experience. Intellectual property litigation has become even more complex in recent years, often involving more than just a single patent but other forms of intellectual property as well. Heather specializes in these types of cases that intertwine multiple intellectual properties, contracts and other federal or state law claims.

With a technical background, Heather has prosecuted patents. Heather has also worked in house at a large company. These experiences allow Heather to offer something unique in the IP and technology litigation field – an understanding of the litigation experience from the client’s or the inventor’s perspective.

As an IP litigator, Heather has secured several victories in court and settlement negotiations (see some Representative Cases below). She is the trusted advocate you can turn to when you need representation in or before federal court, appellate court, the Trademark Trial and Appeal Board, the Federal Trade

A strong IP strategy does not stem only from handling litigation well. It also comes from smart counseling regarding your business’s assets. To that end, a significant part of Heather’s practice is counseling clients to strengthen their intellectual property portfolios and to manage their risks.  Heather works with a number of clients to help identify and secure their intellectual and property technology needs, including through building and managing trademark and copyright portfolios worldwide, and reviewing agreements such as technology licensing and vendor agreements. Heather also counsels clients regarding advertising claims and online advertising issues under the Lanham Act and state false advertising laws.

She offers these services to companies of all sizes, from solo startups to Fortune 500s. She knows that what most business owners need is a reliable counselor they can turn to when they need help in the intellectual property and technology space.

Representative Cases

Represented tens of plaintiffs and defendants in Trademark Trial and Appeal Board cancellation and opposition proceedings, securing denial of registration of trademarks and preventing denial of trademark registrations.

Successfully represented defendant in copyright and trade secret litigation relating to software code, defeating a preliminary injunction motion and settling favorably with payment to the client.

Successfully represented a plaintiff business services company in trademark and false advertising litigation, securing pretrial settlement of significant monetary payment and complete injunction after only 3 months of litigation.

Represent HVAC control manufacturer in multiple lawsuits against a competitor in the industry; won dismissal of trade dress and false advertising claims relating to “Made in the USA” and invalidated competitor patents on summary judgment.  

Obtain summary judgment of no patent infringement for manufacturer of school equipment, prior to discovery and claim construction; entire case dismissed against client.

Lead counsel for architect defendant, obtaining settlement on the eve of trial of freedom to continue to use architectural designs without copyright infringement claim and payment to defendant from plaintiff.

Represented mobile home manufacturer defendant in trade dress infringement litigation relating to awning caps for recreational vehicles; secure favorable settlement after filing motion to dismiss.

Represent plaintiff relating to famous champagne mark and secured permanent injunction against use of an infringing brand on sparkling wine; assist in other international lawsuits and proceedings regarding the sale of the same infringing sparkling wine.

Responsible for pretrial motions in patent infringement case, including bifurcation of inequitable conduct claim, that resulted in victory after a jury trial regarding wafer inspection machines.

Briefed, argued and won 11th Circuit appeal in copyright case regarding implied license to use of architectural designs by utility company.

Prosecuted trademark infringement action in federal court involving trademarks owned by livestock trailer company. Resulted in settlement whereby defendant phased out use and paid plaintiff's attorney fees.

Represented plaintiff owner of financial services brand for investment-related services. Secured immediate and complete preliminary injunction against defendant preventing use of client’s trademark.

Education

University of Texas School of Law
J.D., cum laude, 2004

Iowa State University
B.S. Environmental Sciences, magna cum laude, 2000
Phi Beta Kappa

Admissions

Wisconsin State Bar, 2008
8th Circuit, 2008
11th Circuit, 2007
Minnesota State Bar, 2004
U.S. District Court, District of Minnesota, 2004

Professional Affiliations

The Honorable Jimmie V. Reyna Intellectual Property American Inn of Court
    Founding Member
Twin Cities Diversity in Practice, Marketing Committee Chair
International Trademark Association (INTA)
American Bar Association
Federal Bar Association
Minnesota Mother Attorney Association
    Board Member, 2013-2018
Minnesota State Bar Association
    Chair, Women in the Legal Profession Committee, 2011-2013
    Minority Bar Summit

Awards & Recognition

Best Lawyers in America by The Best Lawyers in America, 2021
Selected for inclusion in Minnesota Super Lawyers, 2013-2021
Selected for inclusion in The Top Women Attorneys in Minnesota, 2013-2014
Selected as one of Minnesota Lawyer’s Up & Coming Attorneys award recipients, 2013
Selected for inclusion in Minnesota Rising Stars, 2011-2012

Publications & Speaking

INSIGHT: How Covid-19 Changed the Future of Litigation, Co-Authored with James Beard, Bloomberg Law (May 7, 2020)

Best Practices For Managing Litigation During Pandemic, Co-Authored with James Beard, Law360 (April 23, 2020)

On the Cutting Edge: Updates on Patent Law, Data Privacy, and E-Commerce CLE (July 11, 2019)

Hot Topics, Trends, & Updates: Cybersecurity, Patent Litigation Decisions, and the Implications CLE (July 11, 2018)

Ethical Issues with Emerging Technology, speaker at ABA-IP Conference (April 2018)

The Extraterritorial Reach of the Lanham Act, speaker at Midwest IP Institute Conference (September 2017)

Trademark Trial and Appeal Board Oral Argument, speaker at ABA-IP Conference (April 2016)

Social Media & Web 2.0: Striking the Right Balance, speaker at IP Strategy Summit – Trademark & Copyright: Silicon Valley (November 2015)

Effective Use of Surveys in Trademark Litigation, The Knowledge Congress Live Webcast Series (2013)

Author of Update to Counseling Strategies for Successful Protection of Intellectual Property, Defensive Measures Against Counterfeiting, Matthew Bender (2012)

Use of Non-Patent Literature in the Intellectual Property Practice, speaker at the MIPLA Stampede (May 2012)

Not sure you know what type of law you want to practice?, speaker, William Mitchell College of Law (April 2012)

Trademark Enforcement, speaker at Advanced Trademark Law Minnesota CLE (2011)

Minnesota CLE Trademark Law: Why Should You Enforce Trademarks? (March 2011)

Hosted International Trademark Association Roundtable, Anticounterfeiting Issues (February 2010)

Co-author of update to Intellectual Property Counseling and Litigation, Ch. 59, Copyright Causes of Action, Matthew Bender (2009)

Prioritizing resources and organization for Intellectual Property Act of 2008, by Chris Schulte and Heather Kliebenstein, 361 ITMA Review 22 (December 2008)

Beyond the Blue Box: Landlord, Franchisor, and Manufacturer Post-Tiffany Liability for Contributory Trademark Infringement, Intellectual Property Today (November 2008)

Post-Tiffany Liability For Contributory Infringement, IP Law360 (August 15, 2008)

Fighting Counterfeiting and Piracy, IP Law360 (July 23, 2007)

Counterfeiting and Piracy: Federal Statutory, Criminal and Regulatory Tools, The M&G Edge (June 2007)

MedImmune: More Leverage, co-author, Law Week Colorado (May 14, 2007)

Does Phillips v. AWH Mean the Life is Out of the "Life and Meaning" Test for Whether Claim Preambles are Limitations?, American Intellectual Property Law Association (summer 2007)

Recent Federal Circuit SanDisk Decision Affirms MedImmune, Giving Licensees More Leverage, Merchant & Gould White Paper (2007)

What's in the Toolbox, Protecting and Collecting: Advising Business Clients Victimized by Pirates and Counterfeiters, Washington State Bar Association (2007)

Supreme Court Decision Gives Licensees Leverage, IP LAW 260 (2007)

Parody Brand Leaves Louis Vuitton Licking its Wounds, The Journal of the Institute of Trade Mark Attorneys (2007)

Transacting the Information Marketplace: Infringement is Easy, and Easily Avoided, Minnesota Bench & Bar (2005)

Representative Transactions

  • Assist clients in clearing, registering and policing thousands of trademarks on a worldwide basis
  • Draft agreements, including settlement agreements, licenses, assignments, SAAS agreements, vendor agreements, VAR agreements, product development and manufacturing agreements
  • Draft Facebook Page terms of use and privacy policies for several clients
  • Draft browse wrap and click wrap agreements in connection with clients’ websites
  • Draft social media agency agreement
  • Manage trademark portfolio and enforce trademarks for medical device company
  • Manage trademark portfolio for Fortune 500 financial services company with hundreds of marks worldwide
  • Manage international trademark portfolio and enforcement and provide intellectual property advice to well-known handheld electronic device case manufacturer
  • Manage enforcement portfolio for famous champagne house in the United States
  • Manage international trademark portfolio and enforcement, and intellectual property counseling for Fortune 500 food manufacturing and distribution company
  • Manage international trademark portfolio and enforcement for packaging and materials handling company
  • Manage international trademark portfolio and enforcement for beauty products company
  • Manage international trademark portfolio and enforcement for Fortune 500 business services company
  • Manage trademark portfolio for well-known entertainment personalities
  • Manage international trademark portfolio and enforcement for food manufacturing and food distribution company
  • Advise clients on complex copyright issues
  • Draft terms of use for dozens of clients' websites
  • Counsel clients on developing social networking and blogging best practices plans, policies for employees, and website disclaimers
  • Counsel clients and assist with drafting rules for sweepstakes and contests on Facebook
  • Negotiate music licensing agreements for use in commercials and other marketing materials.
  • Negotiate publishing agreement and ancillary agreements
  • Managed trademark portfolio, enforced trademarks and developed licensing strategy for livestock feed company
  • Manage trademark portfolio and domain name portfolio and enforce trademarks for medical services company
  • Successfully obtained transfer of infringing domain names to clients in over 40 different matters
  • Conducted due diligence on intellectual property-related issues
  • Help clients remove infringements from social media, including Facebook, Twitter, Pinterest and Instagram
  • Help various clients in the food, beauty, consumer product, and manufacturing industries understand rules and regulations regarding FTC endorsement guidelines, designation of origin rules, compostability claims, recycling claims, other green claims and food and health claims
  • Handling multiple trademark oppositions at the U.S. Trademark Trial of Appeal Board (TTAB) and international opposition and cancellation proceedings
  • Register toy company's trademarks with U.S. Customs and Border Protection
  • Negotiate purchases and transfers of domain names

Teaching

Instructor, University of Minnesota Moot Court and Legal Writing course, 2007-2008

Coach, University of Minnesota Giles Rich Moot Court Competition team, 2007-2008 and 2008-2009


MEDIA CENTER

All Media
Events
9/29/20
Courts, Corporations and Law Firms: A Discussion of Diversity Initiative Successes and Failures
Join us for virtual CLE for an engaging panel discussion regarding diversity initiatives within courts, corporations, and law firms to determine what is working, what is not, and creating the path forward. The ...
Events
9/17/20
Stories of Innovation: The Impacts of COVID-19 on Intellectual Property
Please join LCLD Alumni and current program participants from Merchant & Gould in a panel discussion about how businesses can be prepared for sudden changes in the market and capitalize on their innovations.Topics of discussion include:1. How Covid-19 ...
Press Releases
8/25/20
MERCHANT & GOULD ATTORNEYS NAMED BEST LAWYERS© 2021
Merchant & Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America© 2021.Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially ...
Press Releases
7/21/20
Heather Kliebenstein and Luciano Ricondo named to Leadership Council on Legal Diversity
Merchant & Gould is pleased to announce that attorneys Heather Kliebenstein, and Luciano Ricondo have been selected as members of the Leadership Council on Legal Diversity (LCLD) 2018 Class of Fellows and Pathfinders, respectively.“It’s a well-deserved ...
Press Releases
7/20/20
Merchant & Gould Announces 2020 Super Lawyers and Rising Stars in Minnesota
Congratulations to nine Merchant & Gould attorneys in the Minneapolis office who have been named 2020 Minnesota Super Lawyers, distinguishing themselves in their legal practice.  Only the lawyers in the top 5 percent of the total lawyers in the state ...
Articles
5/7/20
INSIGHT: How Covid-19 Changed the Future of Litigation
Covid-19 is proving to be the impetus the legal industry needed to embrace remote technologies, Merchant & Gould attorneys write. They look at how law firms are adjusting to new technologies now and how courts may adopt new technologies going forward. In ...
News Alerts
9/26/19
Heather Kliebenstein and other panel members, discuss “Ethics: Litigation Funding”
Ethics: Litigation Finance Thursday, September 26, 2019 | 4:30 pm - 5:30 pm Intellectual Property Owners Association (IPO) Marriot Marquis | 901 Massachusetts Ave | Washington D.C.  The Panel Discussion will Include:  The intersection ...
Events
7/11/19
On the Cutting Edge: Updates on Patent Law, Data Privacy, and E-Commerce
3-Minute Case Summaries: A fast-paced and energetic update on recent case law developments important to patent litigation from ten select cases. Brand Protection Update: Hear an update on trends and cases related to online brand protection, including ...
Press Releases
2/20/19
Merchant & Gould Is Recognized by World Trademark Review for Its “Outstanding and Reliable” Work and IP Leaders in Minnesota
Merchant & Gould is proud to be recognized in the “United States: Minnesota” category in World Trademark Review’s 2019 research directory, WTR 1000, a peer-feedback-based resource which spotlights firms and attorneys that are deemed “outstanding” ...
Events
7/11/18
Hot Topics, Trends, & Updates: Cybersecurity, Patent Litigation Decisions, and the Implications
  Merchant & Gould Presents Hot ...
Events
6/14/18
Ethics & Elimination of Bias for IP Lawyers Series – Part II
Merchant & Gould presents Ethics & Elimination of Bias for IP Lawyers Series – Part II  “Emerging Technology: Ethically Counseling Your ...
Events
9/28/17
Merchant & Gould Attorneys Speak at Midwest IP Institute
Three Merchant & Gould attorneys will be featured speakers at the 2017 Midwest IP Institute on September 28 in Minneapolis. Partners Andrew Lagatta, Heather Kliebenstein, and Rachel Hughey will give presentations on the first day of the conference.2017 ...
Events
9/14/17
Managing IP Litigation: A Workshop for In-House Counsel
In-house counsel have a unique role in litigation and play an important part in executing overall litigation strategy. Certain litigation tasks are ill-suited to delegation to outside counsel and are better managed in-house.You're invited to a complimentary ...
Press Releases
1/26/17
Heather Kliebenstein Named "40 Under 40" Honoree by Minneapolis/St. Paul Business Journal
Merchant & Gould is pleased to announce that partner Heather J. Kliebenstein has been selected as a “40 Under 40” honoree by the Minneapolis/St. Paul Business Journal.This annual award goes to 40 business and community leaders in the Twin Cities ...
Events
11/19/15
Heather Kliebenstein to speak at Trademark & Copyright Summit
Heather Kliebenstein, an intellectual property attorney and partner at Merchant & Gould, will be a featured speaker at a trademark and copyright conference in Silicon Valley on November 19, 2015.The IP Strategy Summit – Trademark & Copyright: ...
Events
9/17/15
Merchant & Gould Lawyers Speak at 2015 Midwest IP Institute
Two attorneys from Merchant and Gould's Minneapolis office will be seminar panelists at the 2015 Midwest Intellectual Property Institute taking place September 17 and 18 at the Minnesota CLE Conference Center in Minneapolis. The event is attracting renowned ...
Press Releases
7/22/13
Merchant & Gould Partner Heather J. Kliebenstein Named “Up and Coming Lawyer” by Minnesota Lawyer
Merchant & Gould, a leading intellectual property law firm, is pleased to announce that partner Heather J. Kliebenstein has been named a 2013 “Up and Coming Lawyer” by Minnesota Lawyer magazine.Kliebenstein is an experienced intellectual property ...
Press Releases
1/4/13
Merchant & Gould Announces Three New Partners
Intellectual property law firm Merchant & Gould is pleased to announce the appointment of three new partners. Heather J. Kliebenstein has been promoted to equity partner, and R. Bradford Brittian and John T. Winemiller have been promoted to income partner.“These ...
Articles
1/4/13
Judge Sticks It To Notepaper Rival In 3M's Post-It IP Suit
Please click here to read article. 3M is represented by Heather J. Kliebenstein of M&G along with Wendy Larson and William G. Barber of Pirkey Barber LLP.
Press Releases
7/18/12
Merchant & Gould Announces 2012 Super Lawyers in Minnesota
Anthony R. Zeuli Named Among Top 100 Super Lawyers in Minnesota Merchant & Gould, an intellectual property law firm, today announced that the following attorneys in its Minneapolis office have been named 2012 Super Lawyers. Recognized excellence in ...
Press Releases
4/2/12
Merchant & Gould Client Rudolph Technologies Awarded $1.29 Million After Judge Finds Camtek in Violation of Injunction Sanctions Include Double Damages Plus Attorney Fees
Merchant & Gould, an intellectual property law firm, today announced that its client Rudolph Technologies has been awarded $1.29 million, plus attorney’s fees, as a result of a contempt finding against its adversary, Camtek Ltd. Minnesota U.S. District ...
Press Releases
5/24/11
Merchant & Gould Client: For Your Ease Only is Paid $4.3 Million Under Settlement, Concluding 9-Year Patent Litigation Battle
Calgon Carbon Corporation Pays Settlement, Exits the Anti-Tarnish Jewelry Organizer Business, and Sends a Letter of Apology to QVC; Settlement Benefits Lori Greiner ® Jewelry Organizers Merchant & Gould, an intellectual property law ...
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
4/23/10
Merchant & Gould Succeeds in Establishing Copyrightable Subject Matter within Software Used for Controlling Surface Mining Machines
Firm Establishes Copyrightability of Software Used With Programmable Logic Controllers on Behalf of Its Client Merchant & Gould, an intellectual property law firm, today announced that it successfully established copyright protection over the software ...
Articles
7/23/07
Fighting Counterfeiting And Piracy
White Papers
6/1/07
Counterfeiting and Piracy: Federal Statutory, Criminal and Regulatory Tools
It is a common saying in the IP protection business that counterfeiting affects any business that owns a successful product. In fact, sales lost to counterfeiting are estimated to exceed six (6) percent of global trade. The United States economy alone loses ...
White Papers
5/1/07
Recent Federal Circuit Sandisk Decision Broadly Applies Medimmune, Giving Potential Licensees New Leverage
The Supreme Court’s MedImmune decision, and the Federal Circuit’s interpretation of it in SanDisk, changed the landscape of the relationship among patent owners, licensees, and potential licensees. In the wake of these decisions, the ...