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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

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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;

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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.

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.

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

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

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

Minneapolis

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in &nbsp;<a href="https://cafc.uscourts.gov/opinions-orders/22-1843.OPINION.2-13-2024_2269139.pdf">In Re: CHESTEK PLLC,&nbsp; 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. §&nbsp;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

Litigation

Chemical & Life Sciences

Mechanical

Yeng Yang

Alice M. Anderson

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. &#8220;ucFabV requires functional reductase activity to confer reduced Triclosan susceptibility in Escherichia coli.&#8221; 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 &amp; Professional Studies, October 2023

Katherine F. K. Mares

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