Careers

At M&G, we dedicate ourselves to finding the best solutions to our clients’ challenges, no matter where it takes us.

Case Studies

Industries

Offices

About Merchant & Gould

Pages

People

News Room

Practices

Staff

Home - Merchant & Gould P.C.

Working at the forefront of intellectual property issues, Katherine Mares uses her scientific background along with her ability to traverse the nuances of the legal landscape to better serve clients.

core/paragraph

Working at the forefront of intellectual property issues, Katherine Mares uses her scientific background along with her ability to traverse the nuances of the legal landscape to better serve clients.

core/heading

<h2 class="wp-block-heading">A Strong Scientific Background</h2>

IP law treads the delicate intersection of technology, innovation and regulation. Katherine's academic journey speaks volumes about her commitment to being on the leading edge of this field. As an undergraduate, she sharpened her multidimensional focus by working in a functional metagenomics laboratory while double majoring in Spanish and Biochemistry. She further demonstrated her commitment to learning across disciplines by completing a Master of Biological Sciences while attending law school.&nbsp;

IP law treads the delicate intersection of technology, innovation and regulation. Katherine's academic journey speaks volumes about her commitment to being on the leading edge of this field. As an undergraduate, she sharpened her multidimensional focus by working in a functional metagenomics laboratory while double majoring in Spanish and Biochemistry. She further demonstrated her commitment to learning across disciplines by completing a Master of Biological Sciences while attending law school.&nbsp;

Her diverse background in the scientific and legal fields gives her a unique lens to approach IP law. Her knowledge and understanding prove indispensable when working with clients on their IP needs.

Her diverse background in the scientific and legal fields gives her a unique lens to approach IP law. Her knowledge and understanding prove indispensable when working with clients on their IP needs.

<h2 class="wp-block-heading">Driven to Learn&nbsp;</h2>

Katherine has a passion for learning. No stranger to working through failures at the laboratory bench, she loves tackling problems no one else can solve and approaching them with her unique skill set. Whenever confronted with a hurdle, she painstakingly researches every angle of the case until she’s overcome it.

Katherine has a passion for learning. No stranger to working through failures at the laboratory bench, she loves tackling problems no one else can solve and approaching them with her unique skill set. Whenever confronted with a hurdle, she painstakingly researches every angle of the case until she’s overcome it.

IP law is much more than solving problems as they come. It’s about staying ahead of the curve. From an early age, Katherine has believed in the value of viewing things from a variety of perspectives. She can seamlessly provide valuable IP protection to her clients while keeping an eye on the future.

IP law is much more than solving problems as they come. It’s about staying ahead of the curve. From an early age, Katherine has believed in the value of viewing things from a variety of perspectives. She can seamlessly provide valuable IP protection to her clients while keeping an eye on the future.

<h2 class="wp-block-heading">Beyond the Office&nbsp;</h2>

When not in the office, she enjoys hiking with her two dogs. She is also an avid reader who revels in exploring various literary genres, continually feeding her ever-curious mind.

When not in the office, she enjoys hiking with her two dogs. She is also an avid reader who revels in exploring various literary genres, continually feeding her ever-curious mind.

University of Minnesota Law School, J.D., 2023, 

University of Minnesota - Twin Cities, Master of Biological Sciences (MBS), 2023

University of St. Thomas, B.S. Biochemistry, B.A. Spanish, 2016

Minneapolis

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in  <a href="https://cafc.uscourts.gov/opinions-orders/22-1843.OPINION.2-13-2024_2269139.pdf">In Re: CHESTEK PLLC,  No. 2022-1843 (Feb. 13, 2024)</a>, affirming the Trademark Trial and Appeal Board’s refusal of register Chestek’s mark.



In 2019, the United States Patent and Trademark Office sought to prevent foreign entities from failing to comply with U.S. law when filing trademark applications by creating a rule requiring that foreign entities be represented by U.S. licensed counsel. A portion of the adopted 37 C.F.R. § 2.32 final rule required that the application must include “[t]he name and domicile address of each applicant” that needed to be kept current under 37 C.F.R. § 2.189.



In 2020, Chestek applied for the mark “CHESTEK LEGAL”, listing a P.O. Box rather than its actual domicile address. An examiner refused the application on that basis. Chestek refused to provide its actual domicile address and challenged the rule promulgation process as failing to comply with the Administrative Procedures Act. The refusal was finalized, and Chestek appealed to the Trademark Trial and Appeal Board. The Board affirmed the examiner’s refusal and Chestek appealed to the Federal Circuit. Chestek argued lack of compliance with the APA because the proposed rule that underwent the notice-and-comment process did not contain the domicile requirement set forth in the final rule. Chestek also argued that the domicile requirement was arbitrary and capricious because the final rule was not sufficiently explained and created privacy issues.



The Federal Circuit affirmed. Citing 5 U.S.C. § 553(b)(A), the Court noted the exception to the notice-and-comment requirement for “interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.” The Court explained that the domicile requirement is an interpretative rule because it alters the manner of the application rather than affecting substantive standards. The Court also rejected Chestek’s argument about insufficient explanation, noting the rule is part of a larger regulatory effort to reduce the influx of foreign applications that fail to comply with U.S. law and that the domicile address requirement is necessary to permit the determination of whether representation by U.S. licensed counsel is required. The Court also rejected Chestek’s privacy argument noting that an agency does not need to consider all policy alternatives and that the agency decision was reasonable on the record at the time.

CAFC Affirms TTAB Decision on Domicile Requirement

Merchant & Gould’s Pro Bono Committee is pleased to announce the recipients of the firm’s 2024 Pro Bono Awards, celebrating the exceptional commitment of our attorneys to providing vital legal services to those in need.



Katherine Mares has been awarded the firm’s 2024 Pro Bono Award for her outstanding dedication, recording over 65 pro bono hours this year. Kate’s work primarily focused on pro bono patent cases, and she has also remained deeply involved in a long-running asylum matter, contributing her expertise to make a meaningful difference in her clients’ lives.



Additionally, Bill Hughet deserves special recognition for his remarkable contribution of nearly 230 pro bono hours, reflecting his continued legacy of service and unwavering dedication to supporting underserved communities.



Several other dedicated professionals surpassed 40 pro bono hours in 2024, including Greg Golla, Scott Johnston, Joe Guess, and John Winemiller. Each of these individuals has demonstrated a strong commitment to the firm’s pro bono mission, embodying Merchant & Gould’s values through their impactful work.



In total, Merchant & Gould professionals recorded more than 950 pro bono hours across several states this year, furthering the firm’s mission to make a positive impact on our communities.



Congratulations to Kate, Bill, and all our attorneys who go above and beyond, using their talents to strengthen and support those around us!

Merchant & Gould Honors 2024 Pro Bono Award Recipients

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-1155.OPINION.4-9-2025_2495686.pdf">Heritage All. v. Am. Pol’y Roundtable, No. 2024-1155 (Apr. 9, 2025)</a>. 



Heritage uses the marks “iVoterGuide” and “iVoterGuide.com” in connection with online voter guides. In 2019, the American Policy Roundtable (APR) sought to register the marks “iVoters” and “iVoters.com” related to websites that offer information on public policy and political issues. Heritage had prior use of its marks and opposed the marks’ registration pursuant to 15 U.S.C. § 1052(d) stating that APR’s proposed marks would likely be confused with Heritage’s marks.



The Trademark Trial and Appeal Board found that Heritage’s marks were not protectable because they were highly descriptive. The Board also determined that the marks had not acquired distinctiveness. The Board dismissed the opposition. Heritage appealed.



The Federal Circuit affirmed, rejecting Heritage’s argument that the Board erred in finding its marks to be highly descriptive and in rejecting its evidence of acquired distinctiveness. Specifically, Heritage asserted that the Board erred by only analyzing the components of the marks individually instead of as a whole. The Court noted that considering the entirety of a mark does not prohibit considering its components. It held that the combination of the components of Heritage’s marks directly conveyed its product, which was providing a voter guide on the Internet.



The Court also affirmed the Board’s finding that Heritage failed to provide sufficient evidence of acquired distinctiveness. The Court explained that acquired distinctiveness determinations are fact specific and can be guided by the factors outlined in Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018). It held that, under 15 U.S.C. § 1052(f), continuous use of a mark for over five years gives the Board the discretion, but does not require it, to accept the use as prima facie evidence of acquired distinctiveness. The Court held the Board had reasonable evidentiary grounds for declining to rely on Heritage’s five-year prior-use evidence due to the marks’ highly descriptive nature. The Court also determined that the declarations provided by Heritage were of little weight, as they were conclusory and came from volunteers associated with Heritage.

CAFC Affirms TTAB Dismissal of Opposition

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-1577.OPINION.2-11-2026_2646300.pdf">Ingevity Corporation v. BASF Corporation, No. 2024-1577 (Feb. 11, 2026)</a>, affirming a jury’s finding of antitrust liability and a damages award against a patent holder who tied patent licenses to the purchase of its unpatented products.



Ingevity sued BASF in the District of Delaware for infringement of U.S. Patent RE38,844 (“the ’844 patent”), directed to a dual-stage fuel-vapor canister system for reducing automobile emissions. Both parties manufacture carbon honeycombs used in automotive systems, including fuel vapor canisters covered by the patent and air-intake systems that are not covered. BASF counterclaimed for antitrust violations, alleging that Ingevity unlawfully tied licenses to the ’844 patent to customers’ agreements to exclusively purchase Ingevity’s unpatented honeycomb products.



The key issue was whether Ingevity’s unpatented honeycomb products were “nonstaple goods,”  goods that lack substantial non-infringing uses. Under 35 U.S.C. §§ 271(c), (d) a patentee can control nonstaple goods that are only capable of infringing use. To succeed on its unlawful tying claim BASF needed to show that Ingevity’s unpatented honeycomb products had actual and substantial non-infringing uses.



At trial, BASF presented Ingevity’s own sales records showing over 18,000 units sold for non-infringing air-intake applications, technical expert testimony, and internal Ingevity documents corroborating those uses. Ingevity argued the records contained errors and that such uses were impossible, relying on testimony from its executives. The jury found that Ingevity had engaged in unlawful tying and awarded $28,285,714 in damages. Ingevity moved for JMOL, the district court denied the motion, and Ingevity timely appealed.



The Federal Circuit affirmed. The Court held that substantial evidence supported the jury’s finding that Ingevity’s honeycombs were staple goods. The jury was entitled to credit Ingevity’s contemporaneous business records and BASF’s expert testimony over contradictory testimony from interested Ingevity executives. The Court rejected Ingevity’s immunity arguments, finding them forfeited because Ingevity materially changed its theory on appeal, now claiming that actual tying conduct itself was immune regardless of whether the honeycomb products were staple goods. The Court explained that Ingevity had previously agreed that tying conduct exceeding mere patent enforcement communications was not immune, and it could not advance this new theory for the first time on appeal. The Court also upheld the damages award, explaining that BASF only needed to show that Ingevity’s conduct was a material cause of injury.

CAFC Affirms Jury Verdict of Unlawful Tying

Litigation

Chemical & Life Sciences

Mechanical

Sarah E. Fritzler

Associate

Katherine F. K. Mares

Teaching the Intellectual Property Moot Court Competition Team (Giles Sutherland Rich American I.P. Law Association Moot Court Competition) at the University of Minnesota Law School

Leadership & Teaching

Fischer, Taylor L., Robert J. White, Katherine FK Mares, Devin E. Molnau, and Justin J. Donato. “ucFabV requires functional reductase activity to confer reduced Triclosan susceptibility in Escherichia coli.” Journal of Molecular Microbiology and Biotechnology 25, no. 6 (2016): 394-402.
Featured in <a href="https://ccaps.umn.edu/story/doubling-law-and-science">Doubling Up on Law and Science</a>, University of Minnesota College of Continuing & Professional Studies, October 2023

Katherine F. K. Mares

A Strong Scientific Background

Driven to Learn

Beyond the Office

Practices

Education

Admissions

Leadership & Teaching

Publications & Speaking