< PreviousWe both have active trade- mark practices and are constantly evaluating whether a client’s proposed trade- mark is available for use for that cli- ent’s goods or services. We review a lot of trademarks. While brands are valuable and very important for a business, we do our best to steer our clients away from difficulties that are ancillary to their primary mission – which typically relates to profit gen- eration. As a result, we often advise a client that it should not use a mark because our search and evaluation ef- forts have revealed that another party is already using a similar mark. When the compared marks are identical, and the parties’ goods or services are the same, that is an easy call (like when 3M was able to quickly shut down attempts by others to leverage the 3M brand to peddle N95 face masks at exorbitant prices). Usually, however, that’s not the case. Our client’s proposed mark may not be the same as the prior mark (but may include similar words or elements) and the goods and services of the parties may not be the same either. How do we then assess the possible conflict and risk involved in our client’s use of the proposed mark? Like almost all legal issues, this determination involves consideration of a test where a number of factors are weighed. On a federal statutory level, the test for trademark infringement is whether the accused infringing mark is “likely to cause confusion, or to cause mistake, or to deceive” as to the source of the product. 15 U.S.C. § 1114(1). Actual confusion or deception of purchasers is not required, but proof of actual confusion can be quite probative in establishing whether a likelihood of confusion exists. The test is not merely a side- Trademark [Social] Distancing: How Close is Too Close? Z. PETER SAWICKI AND JAMES L. YOUNG | Intellectual Property Z. PETER SAWICKIJAMES L. YOUNG Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and effective strate- gies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either psawicki@wck.com or jyoung@wck.com. ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 7 10by-side comparison of the marks. The marks must be considered in the context in which the goods or services are sold, including the ordinary care that a person uses in buying those particular types of goods or services. Although they vary a bit from court to court (and at the U.S. Patent and Trademark Office), most likelihood of confusion tests include consideration of these factors, in some form: a) the similarity between the marks (such as appearance, sound, con- notation and commercial impres- sion); b) the strength of the mark (rang- ing along this trademark dis- tinctiveness scale, from weak descriptive marks – like COLD AND CREAMY for ice cream, to less weak suggestive marks – like AIRBUS for airplanes, to strong arbitrary marks – like APPLE for computers, and to stronger fanci- ful marks – like GOOGLE for on- line services); c) the relationship between the par- ties’ goods or services (e.g., are they complimentary goods that would be bought and used togeth- er – like shoes and socks); d) the marketing of the goods or ser- vices (e.g., in-person solicitation vs. mass-marketing); e) the customer’s degree of care in making purchasing decisions (i.e., “impulse” buys vs. careful, sophis- ticated purchases); f) the frequency and casualness of the purchase (e.g., hailing a taxi for a ride home vs. buying a ticket via NASA for a visit to the Interna- tional Space Station); and g) the defendant’s intent in adopting the mark (like claiming your face masks are from 3M when they are not). Intent is not an element of trademark infringement, but it is helpful in proving both likeli- hood of confusion and in award- ing damages. The application of this test, as you can appreciate, is a judgment call. It often comes down to the client wanting to use a mark it really really likes while weighing the business risk that doing so may lead to an objection by a prior user, and the distractions and costs associated with that (as well as an unfortunate and untimely need to rebrand a product it just launched). We don’t decide whether a client can use a mark. We are mere counsellors. We assess each situation given the facts before us and provide a risk assessment to the client regarding the use of its proposed mark. Like all lawyers, sometimes our clients choose not to follow our advice. Occasionally the client gets away with it (like when the prior user never bothers to object to the client’s use of the mark). However, that third party reaction is totally out of our control. What the client can control is whether it actually uses a particular mark, based on our advice and counsel. While we love talking to clients about branding issues, we want our clients to do what they do best – and being the defendant in trademark litigation is nowhere on any client’s Bucket List (or budget). When one of our clients begins actual use of a new brand, we like to reference the Grail Knight from Indiana Jones fame and say, “You have chosen … wisely.” While we love talking to clients about branding issues, we want our clients to do what they do best – and being the defendant in trademark litigation is nowhere on any client’s Bucket List (or budget).tor).”A TT ORNEY OF THE MONTH A Culture of Opportunity BY H. K. WILSON MICHELLE GILBOE ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 7 12MICHELLE GILBOE hen Michelle Gilboe was thinking about moving her life sciences practice in 2019, she identified the single most important thing she wanted for herself and her group – opportunity. She defined opportunity as being happy and supported in a collegial office environment, having a role in defining your path no matter who you are, and the re- sources to grow a vigorous practice. In September 2019, she and three colleagues found opportunity at Lewis Brisbois Bisgaard & Smith LLP, when they opened the firm’s 52nd location in Minneapolis. Gil- boe took the helm as managing partner and, nearly a year later, the Minneapolis team is thriving under her leadership. “Ten of us came over initially, attorneys and staff, and we’re now up to 24 people, including six additional attorneys,” Gilboe says. “I’m excited to grow like this and add great talent to our ranks. The opportunity to start a new office, choose the people we work with and focus intensely on creating a good culture was the part of this opportunity that ap- pealed to me most. The longer I practice law I realize how important a positive work culture it is to everyone’s day-to-day happiness, and even their ability to provide good service to clients. I think happy lawyers are good lawyers.” Since opening its doors over 40 years ago, Lewis Brisbois has grown to a community of more than 1,500 lawyers in 53 offices across 30 states and the District of Columbia. Offering legal practice in more than 40 specialties and numerous sub-specialties, the firm provides a wide range of legal services with a continuity of representation across multiple disciplines. “My goal is for our Minneapolis office to grow to reflect the diversity of practice in the firm,” says Gilboe. “Adding talented partners like we have with Kari Berman in complex business litigation and Tina Syring in labor and employ- ment is exactly what we hoped to do when we opened. And we expect to add more partners in the near future. For our office to be busy and hiring when others are contracting is nothing short of spectacular. It is a testament to our tal- ented attorneys and the firm’s strength and com- mitment to smart growth and client service.” With preeminent life sciences expertise in offices from coast to coast, Lewis Brisbois decided it was the right time to assert its presence in the Life Science Alley. “Having an anchor for the firm is extremely important here in the Twin Cities where we have such a concentration of life science companies. This is a significant focus of mine and of the firm, and we want to grow that practice.” A first chair trial attorney with more than 20 years of experience representing life sciences clients, industrial and consumer products, and sports and fitness manufactur- ers, Gilboe has a distinguished record of complex class action, toxic tort, and MDL litigation, including representation of medical spa services and pharmaceutical manu- facturers. Admitted in Minnesota and Wisconsin, she advises clients on key business issues, has served as national and regional counsel, and has broad experience defend- ing complex medical and scientific matters in state and federal courts. “My goal is for our Minneapolis office to grow to reflect the diversity of practice in the firm, adding talented partners like we have with Kari Berman in complex business litigation and Tina Syring in labor and employment is exactly what we hoped to do when we opened.” AttorneyAtLawMagazine.com 13A CULTURE OF PROGRESS At the end of April, Lewis Brisbois completed the build- out of a new floor in the Wells Fargo Center. For those attorneys looking for an innovative, inclusive and enter- prising environment in which to go grow their practices, this is an ideal place to call home. “I love the entrepreneurial spirt here. We’ve been given a lot of control over what we do in our own office, and we have been so pleased by the way we have always been very supported by the firm and management at all levels, whether in terms of marketing, hiring, business develop- ment or serving clients. The firm is responsive, yet doesn’t get in the way. We have the freedom to shape and grow our own culture and office, but with the benefit of an estab- lished, well-managed firm with an unparalleled platform.” Lewis Brisbois’ deep bench of practitioners collaborate to take on complex matters anywhere in the country. “It’s nice to be able to plug into the expertise of people in the firm who have different but complementary prac- tices. There’s always somebody who will pick up the phone when you call or that you can bring to your team. The firm promotes collaboration, which is good for attorneys and clients.” COVID-19 has certainly been an unanticipated vari- able in rolling out the new office, but Gilboe reports that her team remains committed to delivering the same high- quality legal services while observing social distancing guidelines. “We have a skeleton crew in the office most of the time and are keeping numbers low enough for everyone to so- cially distance. Although I’ve been here most of the time, we’ve been allowing those who need to be at home to do that.” Lewis Brisbois maintains a COVID-19 Response Re- source Center that provides legal updates across practice areas and is a testament to its nationwide network of so- phisticated practitioners. Gilboe attributes the firm’s abil- ity to weather the pandemic more effectively than some other firms to its overall agility and responsiveness. “We are very large but nimble. We have highly diverse clients, and we have deployed our resources to answer some of the new questions they have needed to respond to during the COVID crisis. The pandemic is changing how many of our clients do business at the same time it’s changing how we do business. We’ve had to be ready to shift to meet that need. There is no ‘normal’ to fall back on in this situation. Our COVID response team has been in- credible, and we are well-prepared to deal with the issues that are coming.” With the goal of continuing to grow in an intentional way, Gilboe is seeking talented professionals who can con- tribute to established practice areas and provide expertise in areas where demand is increasing due to the pandemic. “We are looking to grow into new areas that make sense for this office based on the practices here. One of the founding partners in Min- neapolis, Rick Morgan, has a robust toxic tort practice as part of our sophisticated products liability base. We will continue growing our products practices as well as complex business litigation, and we want to bring intellectual property talent. Employment law is going to be a key area to grow talent.” With more people working remotely than ever before, cybersecurity is another rising con- cern for law firms and their clients. Advisen, an international cyber insurance industry associa- tion, recognized Lewis Brisbois as the Cyber Law Firm of the Year in both 2019 and 2020. “We have one of the foremost cyber security groups in the country at our firm. They provide an incredible level of service to our clients across all disciplines. Just about every client now needs that kind of support and has ques- tions about cybersecurity. As a firm, we’re ahead of the game generally and in this time of COVID. To have this resource inside the firm is amazing.” A CULTURE OF INCLUSION Diversity is an integral part of the culture at Lewis Bris- bois, and the firm has repeatedly earned national recogni- tion for its diversity initiatives and commitment to hiring, retaining and promoting diverse individuals. Its convic- tion is that a diverse workforce provides a wide array of views that contribute to the sophisticated and multifac- eted legal representation the firm provides. “Having people here who are multifaceted — whether it’s race, gender, LGBTQ, political affiliation — the di- versity of thought and experience you can gather makes you better. I truly believe it makes you better able to serve your clients who also reflect a diversity of experience and thought. We want people here from many different pers- GILBOE LEADS TEAM MEETING. (L-R): CAMERON WOODS, CARLI PEARSON, MICHELLE GILBOE, DOUG PFEIFER, ALEX HERMAN ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 7 14At a Glance Lewis Brisbois Bisgaard & Smith LLP Wells Fargo Center 90 7th Street, Suite 2800 Minneapolis, MN 55402 (612) 428-5000 lewisbrisbois.com Practice Areas Products Liability Life Sciences Complex Business & Commercial Litigation Toxic Torts COVID-19: FDA Regulatory/Life Scie nces Education Juris Doctor, University of Minnesota Law School Bachelor of Arts, English & Political Science, University of St. Thomas Honors Martindale-Hubbell, Rated AV Preeminent pectives. It makes a better workplace and provides insights you don’t already have. It’s forward looking.” On July 15, 2020, it was announced that Gilboe is a member of the trial team representing the family of George Floyd in a civil lawsuit filed against the city of Minneapolis and the police officers involved Floyd’s death. “This is an incredible opportunity for me to be able to serve on a team that is representing members of George Floyd’s family. For a firm like Lewis Brisbois to support those efforts and give us the resources we need to be on right side of history is amazing to me. I’m so grateful to Lewis Brisbois for wanting to do that and for allowing me, and our office in particular, to have the chance to help. Ev- erybody in the world is reel- ing from these events, parti- cularly here in Minnesota. I think our firm’s commitment to participating in this team and seeking justice is really a reflection of our culture, how committed we are to making sure everybody is respected and valued. It’s part of our success.” Another aspect of Lewis Brisbois’ diverse culture is its commitment to identifying, elevating and retaining fe- male talent. With four young children at home, Gilboe says that being a mother, juggling a very active practice and opening a new office is both challenging and exciting. Lewis Brisbois has opened new opportunities for her to both excel and reward excellence. “Life is crazy and full, but they say if you want something done, give it to a busy person. As a woman with a fulsome practice and a busy family life, I also respect that in other people. I respect that people have lives and different commitments. Giving people the collegial sup- port that allows them to get the work done in that context is important to me. It has been so affirming to be supported by this firm and put in a position to lead. I think it’s important for our attorneys to see people who look like or are like them in their management. Lewis Brisbois has a great commitment to recognizing professional success and an incredible women’s initiative. It invests a lot of effort into promoting women and creating a culture where we can grow our practices. A lot of firms say they’re doing it, but I’m evidence that we are doing it.” After a year at Lewis Brisbois, Gilboe says she is certain that she and group made the right choice in coming to the firm. “We say we were meant to be here because it’s a great fit. Providing clients with sound advice is one of the most gratifying aspects of being an attorney. It’s a privilege to be at a place that provides people with the opportunity to grow into and excel in that role.” PARTNER RICHARD MORGAN WITH GILBOEMarie Bottineau Baldwin 1863-1952 The trouble in this Indian question which I meet again and again is that it is not the Indian who needs to be educated so constantly up to the white man, but that the white man needs to be educated to the Indian. – Marie Bottineau Baldwin, quoted in “Indian Women the First Suffragists and Used Recall, Chippewa Avers,” Washington Times, August 3, 1914 Marie Bottineau Baldwin was born in Pembina, a town on her ancestral homelands on the current North Dakota-Minnesota border. A member of the Turtle Mountain Band of Chippewa Indians, Baldwin attended school in the Twin Cities. She worked as a clerk in the Minneapolis firm established by her father, a lawyer who practiced on behalf of Ojibwe people. In the early 1890s, she moved to Washington, DC, to fight for treaty rights for Native Americans. President Theodore Roosevelt appointed her a clerk in the Office of Indian Affairs. When Baldwin earned a degree from Washington College of Law in 1912, she was the school’s first woman of color and indig- enous woman graduate. She helped establish national alliances and networks of Native people as an officer in the Society of American Indians. Baldwin was also a suffrage organizer and marched with other lawyers in the 1913 march in Washington, DC. She was among the group of suffrage lead- ers who met with President Woodrow Wilson to enlist his support. Baldwin’s life work demonstrates the multifaceted concerns of Native women. As they sought ways to support their communities, treaty rights and tribal sovereignty often edged out suffrage. The 19th Amendment Anniversary: Meet Several Women of Color Who Led the Way to Voting Rights in Minnesota BY MICHELLE WITTE AND KATE ROBERTS, PHD August 26, 2020 marks the 100th anniversary of the official adoption of the 19th Amendment – “The right of citizens of the United States to vote shall not be denied or abridged by the United States or by any State on account of sex.” But not all women were afforded nor could exercise their right to vote as part of this landmark U.S. Constitutional Amendment. Many Native American women could not vote until they achieved citizenship in 1924. And many people of color were unable to exercise their right to vote until the Voting Rights Act of 1965. Many Minnesota women were on the frontlines of securing “Votes For Women.” However, the suffrage story has most often been told through the lens of the white women who led the way on this long journey to expand vot- ing rights. There were however many women of color who were also leaders in the struggle to overturn barriers to voting rights – barriers that persist to this day. Let’s meet five great women who made a difference! PRESENTATION SPONSORED BY ILLUSTRATION BY MATHEW LEFEBVRE - COURTESY MNHS.ORG ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 7 16Nellie Griswold Francis 1874-1969 Your children will reap the harvest of our solidarity — of our determination to stand together, to fight together, and, if needs be, to die together. — Nellie Griswold Francis, from a speech published in The Appeal, May 7, 1921 Nellie Griswold Francis founded the Everywoman Suffrage Club (ESC) in 1914. It was the only Black suffrage organization in Minnesota. Francis knew that voting was just one of many civil rights denied her com- munity. Her reach was nationwide. She chaired the Press Department of the National Association of Colored Women’s Clubs, and was active in the NAACP and the Urban League. Booker T. Washington, Ida B. Wells, and other civic leaders were her friends and supporters. Francis and other ESC members attended the Minnesota Woman Suffrage Association convention in 1916. She believed in working with white suffrage organizations, and she enlisted white women to the cause of Black women’s suffrage. This was a controversial stance that cost Francis allies. The national suffrage movement was segregated, often as a tactical move by white leadership. Rac- ist statements and actions were commonplace. But Francis followed the path of her aunt Juno Frankie Pierce, a Nashville suffragist who employed similar techniques. In 1920, the ESC became the Everywoman Progressive Council, dedicated to “the promotion of political and economic equality and social justice of the Negro, cooperation between white and colored women and men, training of local colored women leaders, and fostering the recognition of Negroes who have achieved success.” Isabelle Bellecourt 1858-1936 Isabelle Bellecourt was a citizen of the White Earth Nation and lived on the White Earth Reservation. Her husband, Eustace, fought in the Civil War and her sons Charles (Marine Corps) and Paul (Cavalry) fought in World War I. She was proud of her son’s military service, and expressed this in a letter to the White Earth newspaper, The Tomahawk, in 1918 with her sons deployed to France: “I rest in peace for I know my sons are doing what is right and what their father would have them do.” Bellecourt celebrated her family’s contribu- tion by serving on the Armistice Day celebration committee at White Earth in 1923. Bellecourt’s involvement in both her Native nation and in the U.S. war effort was common during World War I. At the time, Native American men who were U.S. citizens could volunteer or be drafted into military service, and many served. However, citizenship status for Native Americans was often unclear, leading the draft boards to sometimes assign citizenship status — and thus draft eligibility — arbitrarily. At times, this barred Native Americans who vol- unteered to serve, while others were allowed to volunteer despite lack of U.S. citizenship. ILLUSTRATION BY MATHEW LEFEBVRE - COURTESY MNHS.ORG ILLUSTRATION BY MATHEW LEFEBVRE - COURTESY MNHS.ORG AttorneyAtLawMagazine.com 17Ruth Tanbara 1907-2008 Everything was trial and error and the villain was race prejudice, fear, war hysteria, intolerance, and discrimination. — Ruth Tanbara, from “The Evacuation Experience,” in Reflections: Memoirs of Japanese American Women in Minnesota, 1995 In 1942, Ruth Tanbara and her husband Earl were the first Japanese Ameri- cans to resettle in St. Paul as a result of President Roosevelet’s Executive Order 9066. The Order authorized the forced removal of residents of Japanese de- scent from their homes all along the West Coast, regardless of their citizenship status. Anti-Japanese discrimination in Minnesota was prevalent, fueled by the on- going war. After a neighbor reported Tanbara to the FBI suspecting that she was entertaining Japanese soldiers, she hung a service flag in her window. The soldiers Tanbara hosted were her brother Howard and his Army friends, who were training at the Military Intelligence Service Language School at Fort Snel- ling. Tanbara became a leader in the local Japanese community. She served on the boards of the YWCA and the International Institute, among other organi- zations. Through these positions, she built trust among white neighbors and assisted new residents with finding housing, work, and gaining citizenship. Until 1952, U.S. law barred Issei, Japanese immigrants, from becoming citi- zens, thereby excluding them from the right to vote. This policy extended to many people of Asian descent, and had lasting generational effects. Through her lifelong dedication to community service, Ruth Tanbara helped immi- grants, from Japan and elsewhere, become engaged citizens. Josie Johnson b. 1930 I have concluded that although the struggle takes on different forms and requires different strategies, the basic struggle is the same. — Josie Johnson, Hope in the Struggle, 2019 Dr. Josie Johnson continues to fight for and protect voting rights for Black Minnesotans. She often speaks of her efforts as building upon her ancestors’ struggles for freedom and civil rights. In Minneapolis, she worked as a com- munity organizer for the Urban League and was active in the League of Wom- en Voters, eventually becoming the first Black national board member. In the national movement for civil rights, Dr. Johnson participated in the official Minnesota delegation at the March on Washington. As a part of the Wednesdays in Mississippi movement, she traveled to Mississippi to covertly support efforts for racial justice, despite the possibility of retaliation from the Ku Klux Klan. As a lobbyist, Dr. Johnson supported a fair housing bill by gathering evi- dence of housing discrimination affecting Black Minnesotans. She was also an integral part of the effort to pass the bill that established the Fair Employment Practices Commission. Dr. Johnson has always prioritized education. She founded the Junior Ser- vice League, a mentoring program that connected Black girls in junior high with professional Black women. At the University of Minnesota, she was the first Black woman on the Board of Regents and worked to create the African American Studies Program. Remarkable women fought for voting rights for all. We are learning more about them every day. Inspired by their stories, what actions will YOU take to shape our democracy? KATE ROBERTS, PHD WORKS FOR THE MINNESOTA HISTORI- CAL SOCIETY. MICHELLE WITTE IS THE EXECUTIVE DIRECTOR OF THE LEAGUE OF WOMEN VOTERS MINNESOTA. ILLUSTRATIONS BY MATHEW LEFEBVRE, ALONG WITH BIOGRAPHICAL INFORMATION ON THE FEATURED WOMEN, COURTESY MINNESOTA HISTORICAL SOCIETY. LEARN MORE AT MNHS.ORG/VOTESFORWOMEN ILLUSTRATION BY MATHEW LEFEBVRE - COURTESY MNHS.ORG ILLUSTRATION BY MATHEW LEFEBVRE - COURTESY MNHS.ORG ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 7 18You made the leap to your own solo practice or small firm. You decided the fish have manners, they’re coming with you, and you’re going to start something real. See Jerry Maguire, Sony Pictures (1996). So, what are some of the benefits of your newfound freedom? Flexibility. I have a hard time working in a regular office setting. It creates too many distractions for me. I found myself working longer hours because much of my time from 9 – 5 often felt wasted or non-productive. Instead of really getting things done, it often seemed that time was spent either managing down or up. Now, if I want to roll out of bed at 4:00 a.m. and work on a brief in my home office until the evening, there’s no organizational pressure stand- ing in the way. The pandemic has probably let a lot of lawyers in on this secret. Favors. You can make the call on who you do favors for. When your well- connected friend has what may be a silly issue, you have the discretion to send the angry cease-and-desist on your letterhead. Or you can go advocate for them in conciliation court. Doing favors for the right people and the right rea- sons is never a waste of your time. Firms should value allowing their younger lawyers to do reasonable favors for their friends and families. It builds clients and experience. Fees. Cutting your standard fee to get your foot in the door can make great business sense. Like performing favors, this may be an opportunity to develop good will with people who can help your career. Maybe that company is just a start up now, but 10 or 20 years from now it could be a juggernaut. You want to work with older business partners who show at least some semblance of caring about what your personal practice looks like after they’ve moved on. Friends. Creating the right co-counsel relationships can be important in launching your career. On the plaintiff’s side, these are professionals who can send you cases, or who you can bring in to help finance and staff larger pieces of litigation. One of the biggest opportunities I’ve had in my career came from agreeing to be local counsel on a difficult case that likely had little upside. But I did it because I saw the limited risk in serving as local counsel and the po- tential value in establishing a relationship with a large national firm. You want to be at a firm that lets you make friends. You do not want to be at a firm that only values its senior lawyers’ relationships. JEFF STORMS IS A PARTNER AT NEWMARK STORMS DWORAK LLC. HE HAS A DIVERSE LITIGATION PRACTICE WITH AN EMPHASIS ON PLAINTIFF’S CIVIL RIGHTS AND SEXUAL ABUSE LITIGATION. JEFF IS A PERENNIAL SU- PER LAWYER AND HAS TWICE BEEN NAMED AN “ATTORNEY OF THE YEAR” BY MINNESOTA LAWYER. “Doing favors for the right people and the right reasons is never a waste of your time.” ON YOUR OWN Raise a Glass to Freedom! BY JEFF STORMS AttorneyAtLawMagazine.com 19Next >