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Timothy D. Sitzmann

Excellence and efficiency aren’t mutually exclusive - they just require experience and effort.

Contact: P /612.604.6689E /[email protected]

Education

University of Iowa College of Law, J.D., with distinction, 2011

• Dean’s Award for Academic Excellence in Trademarks and Unfair Competition; Constitutional Law II
• Senior Associate Editor, Journal of Corporation Law
• Member of the 2010 Iowa National Moot Court Team
• Top Oral Advocate, Van Oosterhout-Baskerville Moot Court Competition

 

University of Iowa, B.A., with distinction, International Studies (with honors), Spanish, 2007

Bar Admissions

Minnesota, 2011

U.S. District Court, D. Minn., 2017

My Approach

We collaborate with clients to create and implement strategies to enhance the value of their businesses. I have had the good fortune to focus on intellectual property issues for my entire career, developing a deep understanding of both the legal and business implications, and how today’s decisions affect our client’s future.

I utilize my expertise and experience to assist clients to manage and their existing intellectual property portfolio, and plan and develop expanded offerings. Whether I’m managing a global trademark portfolio for a publicly traded company, or helping an early stage startup to prioritize its needs for launching a new product, my goal is to protect those assets that add value to your business. Every action an attorney makes should have a specific business justification. If a new application or a proposed enforcement action doesn’t add value, it only adds cost.

Each business has a different strategy, so the first discussion always focuses on identifying the intellectual property assets of the business, not just today, but also ten years down the road. Some businesses rely heavily on brands and trademarks, others on copyrights, and others on patents or trade secrets. More often than not, each business has assets that fall into multiple buckets. I work with my clients to develop and efficiently execute a strategy tailored to their specific business goals for each brand. This can include effective clearance for new trademarks, streamlined management of portfolios of all sizes, and purposeful enforcement efforts, both when defending against claims from others and preventing others from unfairly profiting off of your business’s assets.

My interest in intellectual property stems from seeking a creative outlet as part of my career. Whether playing bass in garage bands or acting in college, I always found myself not just creating art, but managing the business: booking shows, managing the finances, and handling merchandise orders. I guess I was even my own first client, registering the copyright in our band’s first album as a senior in high school.

Outside of work, I spend time with my wife, our two children, and our golden retriever, Hank, and I love watching the Minnesota Twins and my Iowa Hawkeyes. My guitars are still in tune for the times when a creative urge hits me.

 

Practice Areas

Practicing Trademark & Brand Protection

My Experience

I work with clients across the spectrum of trademark issues, including clearance and selection advice, prosecution and maintenance of applications and registrations, drafting and negotiating licenses, due diligence and advice related to mergers and acquisitions, protection of trade dress, and management of national and international trademark portfolios. I work closely with clients to develop customized protection strategies that reflect their business goals. These efforts include demand letters, opposition and cancellation proceedings at the Trademark Trial and Appeal Board, online enforcement, domain name dispute proceedings under the UDRP, litigation in federal courts, and working closely with local counsel in countries throughout the world.

Representative Matters

Brand Management and Trademark Prosecution

• Developed and executed an international protection strategy across dozens of countries for a skin care company, prioritizing efforts to position the company for acquisition as part of a five-year plan.
• Developed and implemented trademark registration and protection strategy for athletic equipment and apparel company in connection with acquisition by private equity firm.
• Drafted brand guidelines, licensing agreements, and trademark protection strategy for start-up and established restaurant chains.
• Created and implemented licensing and trademark protection strategies reflecting patchwork state and federal regulation and legality for cannabis-based products.
• Managed and expanded the global trademark portfolio for well-known pharmaceutical company and advised on the launch of multiple new products in the U.S. and around the world.
• Developed and implemented trademark protection strategies for startup and established breweries, wineries, and cideries.
• Managed trademark portfolios for a publicly traded company spanning multiple subsidiaries, numerous product segments, and more than 100 countries.
• Obtained numerous favorable rulings in trademark prosecution office actions for food and beverage companies, software startups, and clients in a variety of other industries.

Enforcement and Litigation

• Obtained a preliminary injunction in federal court and ultimately a favorable settlement requiring a rebrand of physical locations and monetary payments to our client, against a health and wellness franchise.
• Prevailed in a ten-year Trademark Trial and Appeal Board opposition matter filed by a global luxury watch company.
• Created and implemented robust and cost-efficient global enforcement strategies for international powersports and apparel companies, negotiating and resolving dozens of global disputes each year.
• Successfully obtained preliminary injunction in federal trademark infringement lawsuit on behalf of local medical service provider against national chain of service providers.
• Successfully defended a claim of a likelihood of confusion brought by an international luxury goods manufacturer at the Trademark Trial and Appeal Board.
• Obtained favorable judgment including an award of attorney fees in trademark litigation in federal court.
• Obtained favorable judgment at the Trademark Trial and Appeal Board for medical device manufacturer preventing a competitor from obtaining rights in a confusingly similar trademark.
• Developed and implemented enforcement strategies for counterfeit products sold through online retailers such as eBay, Amazon, Alibaba, Taobao, and others.
• Negotiated and obtained favorable settlements of trademark infringement disputes in the restaurant and bar industry.
• Defended client in an opposition at the Trademark Trial and Appeal Board that resulted in a favorable decision and a settlement agreement including repayment of client’s attorney fees.
• Developed and implemented anti-counterfeiting strategy, including investigations of Chinese manufacturers and resellers across Asia and the Middle East.

Copyright, Software Agreements, and Technology Transactions

• Represented a software company in the aircraft maintenance, repair, and overhaul industry to draft and negotiate long term software platform agreements, including with publicly traded U.S. airlines.
• Advised clients regarding safe harbor provisions afforded to companies under the Digital Millennium Copyright Act.
• Advised clients regarding ownership, licensing, and acquisition of intellectual property rights associated with copyright protected computer software, mobile apps, and cloud-based software.
• Obtained favorable settlement terms in numerous copyright disputes regarding allegations of copyright infringement involving photographs, academic journal articles, and other copyright-protected works of authorship.

Also experienced in

Copyright

Cannabis Law

Technology & Intellectual Property Transactions

USPTO Proceedings

Intellectual Property Litigation

Honors & Awards

Rising Stars

Minnesota Super Lawyers®, 2019-2024

MSBA North Star Lawyer

Pro Bono Service, 2016-2020, 2023-2024

Top Ten Author, Trademarks

JD Supra Readers’ Choice Awards, 2018-2019

Associations & Memberships

Federal Bar Association

Minnesota Chapter
Member, Intellectual Property Committee

International Trademark Association

Simon Says Give

Board of Directors

Hennepin County Bar Association