Nicole K. McLaughlin is Chair of the Trademark, Copyright, Entertainment and Advertising Division of the firm's Intellectual Property Practice Group. She practices in the area of intellectual property law, and provides a full range of transactional, litigation and strategic counseling services to clients in connection with their intellectual property, including global brand management, trademark strategy, structure, protection and enforcement, trademark infringement, unfair competition, dilution and counterfeit litigation, trade dress and copyright counseling, licensing, and social media and internet issues.
Ms. McLaughlin has extensive experience in all facets of domestic and international trademark enforcement, procurement and portfolio management, including clearance searches and opinions, online infringement, domain name and cybersquatting issues, IP licensing, product packaging and trade dress protection and overall global strategic branding. She also assists clients in technology-related transactional matters, including structuring, negotiating, drafting, implementing and providing legal advice regarding technology and brand licensing, development, consulting and service agreements, and has experience with computer software licenses, technology due diligence and technology transfer issues.
Ms. McLaughlin has represented clients from emerging companies to Fortune 500 and other public companies in a wide variety of industries, including building materials, consumer goods, pharmaceuticals, medical devices, luxury goods, healthcare, publishing, gaming, software and hardware, and financial services. Her primary practice includes:
- Creating brand recognition and value through trademark clearance, prosecution, transactions and litigation.
- Counseling clients on all aspects of traditional and online advertising, including clearance of advertising copy, claims substantiation, false and comparative advertising, endorsements and testimonials, image rights agreements, and promotions (sweepstakes, contests and incentives)
- Counseling and advising on website policies, social media, online IP protection and on-line privacy issues.
- Domain name protection, acquisitions and disputes, including Uniform Dispute Resolution Proceedings (UDRP).
- Counseling and protection of copyrights through registration, transactions and litigation.
- Negotiating and drafting IP licenses, co-branding agreements, employment agreements, confidentiality and invention assignment agreements, work for hire agreements and corporate purchase, acquisition and financing agreements.
- Maintaining and enforcing client trademark rights through ex parte appeals and inter partes opposition and cancellation proceedings at the U.S. Trademark Trial & Appeal Board and through federal court proceedings.
Ms. McLaughlin is known for giving practical advice and working with clients’ legal, marketing and business teams to ensure that marketing strategies and business sensitivities are integrated into her legal analysis and advice. She also assists clients in developing in-house intellectual property protection programs and policies, and regularly provides in-house training in order to educate the marketing and business teams on these programs and policies and to ensure implementation.
She is consistently recognized by both her peers and clients. Among her most recent honors, World Trademark Review (WTR 1000) named Nicole as one of the top lawyers in Prosecution and Strategy (2014-2022), remarking, “Nicole is my first choice when it comes to trademark issues, whatever kind they are. I have worked with her for many years and benefited immeasurably from her experience, precision, pragmatism and speed. There are many who have mastered the law, but very few indeed who, like Nicole, provide high-quality, fast and reasonably priced services that get great results.” Ms. McLaughlin is listed in the current edition of Chambers USA: America's Leading Lawyers for Business as a leading IP lawyer in Pennsylvania. In addition, Corsearch, a Wolters Kluwer business, estimates that Ms. McLaughlin ranked 7th for U.S. PTO trademark filings from Pennsylvania in 2014.
Ms. McLaughlin is a 2001 graduate of Rutgers University School of Law-Camden, with honors, and a graduate of Purdue University. She is a member of the International Trademark Association, National Association of Women Lawyers and the Pennsylvania Bar Association.
Colony Grill Development, LLC et al v. Colony Grill, Inc. et al. Representing Plaintiffs in a Declaratory Judgment action against Licensors of “Colony Grill” trademark, wherein we allege Licensors have abandoned their trademark due to naked licensing.
BLK Brands LLC v. Five Tran Investment Group, LLC. Representing Plaintiff in a suit alleging trademark infringement and unfair competition. Plaintiff owns the BLK. trademark for “water” and it alleges that Defendant copied its BLK. trademark to sell its coffee products.
Nokia Corporation v. Slash7, LLC. Successfully defended and settled trademark opposition proceeding brought by Nokia against our client Slash7, which is seeking to register the mark NOKO.
Signify Holding B.V. v. YDesign Group, LLC. Signify Holding opposed the registration of YDesign’s mark HUXE for lighting goods based on their registrations for HUE. Successfully settled this case so that our client was able to obtain registration.
Represented online sportsbook operator Vigtory Inc. as transaction and gaming counsel in its sale to FuboTV Inc. (NYSE:FUBO), a sports-focused streaming television service; this is the first time a media company in the U.S. has fully acquired and will operate a live sportsbook.
- Represented Express Homebuyers USA, LLC in obtaining dismissal of false advertising, trade libel and conspiracy claims against it, in excess of $40 million in damages.
- Represented Express Homebuyers USA, LLC in obtaining a favorable court decision ruling that the trademarks “We Buy Houses” and “Webuyhouses.com” are generic and should be canceled.
- Successfully defended Access Clinical Partners, a healthcare provider, in the defense of two preliminary injunction motions against claims of trademark infringement/unfair competition.
- Represent defendant Mercer Café in a trademark dispute involving three family factions battling over trademark rights, including claims of fraud and breach of contract.
- In Pass & Seymour, Inc. v. Lutron Electronics Co., Inc., successfully defended applicant against motion for summary judgment based on claims of functionality and lack of acquired distinctiveness of product configuration trademarks.
- Obtained reversal of refusal of registration in ex parte appeal from the Trademark Trial and Appeal Board (In Re BEDA Investments GmbH) (TTAB 2014).
- Represent manufacturer of abrasives products in opposition of registration of the color blue as a trademark.
- Managed over 6,500 domestic and foreign trademark matters for a single global materials company and its affiliates, involving glass, ceramic, plastic, cast iron and abrasives.
- Counsel to a leading lighting control company for all domestic and foreign trademark matters.
- Represented Laguna Development Corporation, a federally chartered corporation formed by the Pueblo of Laguna Tribe in New Mexico, in its $134.5 million acquisition of the Isle of Capri Casino and Hotel in Lake Charles, Louisiana.
Represented Unilife Corp. (Nasdaq: UNIS / ASX: UNS) in connection with its announced effort to seek strategic alternatives, culminating in a strategic collaboration with Amgen Inc. (Nasdaq: AMGN) for Unilife's wearable injectable drug delivery systems to use with Amgen's biologics and other medicines. The deal provides Unilife with investments of up to $90 million from Amgen and restructures Unilife's existing debt with OrbiMed.
- Represented WineAccess, Inc., a direct-to-consumer (DTC) wine eCommerce company, in its acquisition by Norwest Venture Partners, a global, multi-stage venture capital and growth equity investment firm.
- Represented a private equity firm in its acquisition of a controlling interest in a manufacturer and distributor of women's and children's socks and indoor footwear.
- Represented Clarion Capital Partners, a New York private equity firm, in connection with the sale of Strategic Outsourcing, Inc., a human resources outsourcing firm, to TriNet Group, Inc.
Represented Orthovita, Inc., a Nasdaq-traded specialty spine and orthopedic company with a portfolio of orthobiologic and biosurgery products, in its agreement to be acquired by Stryker Corp. for $316 million through a cash tender offer followed by a second-step merger.
Areas of Practice
- Intellectual Property Law
- Trademark, Copyrights, Trade Secrets and Unfair Competition
- Intellectual Property Litigation
- Technology Transactions and Licensing
- New Jersey
- Supreme Court of Pennsylvania
- U.S. District Court for the Eastern District of Pennsylvania
- Rutgers School of Law - Camden, J.D., with honors, 2001
- Purdue University, B.A., 1991
- Duane Morris LLP
- Partner, 2010-present
- Associate, 2001-2009
- Summer Associate, 2000
- International Trademark Association
- Pennsylvania Bar Association
- National Association of Women Lawyers
Honors and Awards
- Listed in Chambers USA: America's Leading Lawyers for Business, 2020-2022
Listed in 2014-2022 editions of World Trademark Review 1000 list of the World's Leading Trademark Professionals as one of the top trademark lawyers in Prosecution and Strategy
Listed as a "Trademark Star" in Managing Intellectual Property's IP Stars, 2018-2021
- Named a World Trademark Review Global Leader, 2021
- Philadelphia Business Journal Best of the Bar: Top Lawyer 2017
- Corsearch, a Wolters Kluwer business, estimates that Nicole McLaughlin ranked 7th for USPTO trademark filings from Pennsylvania in 2014.
- Anticounterfeiting Committee Member - International Trademark Association
- Corporate Relations Committee Member - Pennsylvania Academy of the Fine Arts
- Women's Board Member - Pennsylvania Academy of the Fine Arts
- Co-author, "The Streaming Loophole Is, Finally, Closed," The Computer Internet & Lawyer, July/August 2021
- Quoted, "Why the US Trademark Modernisation Act Is a Game Changer for IP Protection," World Trademark Review, July 5, 2021
- Co-author, "December 2020 COVID-19 Relief Bill Finally Closes the Streaming Loophole," Duane Morris Alert, February 2, 2021
- Co-author, "Trademark Modernization Act Provides Trademark Owners Easier Access to Injunctions Against Infringers," Duane Morris Alert, January 11, 2021
- Co-author, "Where There's No Will There's a Pay – SCOTUS Rejects Willfulness Requirement for Profit Disgorgement," Duane Morris Alert, April 24, 2020
- Quoted, "Online Celeb Photos and Legal Risks for Brands," Women's Wear Daily, December 9, 2019
Co-author, "Are Trademarks FUCT? SCOTUS Strikes Down Ban on Registering "Immoral" and "Scandalous" Trademarks," Duane Morris Alert, June 28, 2019
Quoted, “Door Shuts on Trademark Registration for ‘We Buy Houses,” Bloomberg Law, August 30, 2018
Quoted, "Cosmetics Company Wins Appeal Over ‘I’m Smoking Hot’ Trademark," Bloomberg Law, August 23, 2018
- Quoted, "The Smell of Success? Coty and Burberry Licensing Deal," World Intellectual Property Review, October 6, 2017
- Quoted, "This Yosemite fan's website protests the Ahwahnee's new name. The hotel's operator is not happy," The Fresno Bee, December 28, 2016
- "Tackling Counterfeiters Where It Hurts the Most: The Allure of the ITC," World Intellectual Property Review Trademarks and the Internet 2011
- "A Warning to Overreaching Trademark Owners: ACPA Gives Domain Name Registrants Cause of Action," The Legal Intelligencer
- Co-author, "Virtual Reality: The Next Frontier for Trademark Owners"
Selected Speaking Engagements
- Speaker, "Social Media Influencers: Building and Protecting Your Brand," Sidebar with Judge Dan Winslow Podcast, March 10, 2022
- Regular presenter to the Wharton Venture Initiation Program with respect to intellectual property issues
- Speaker, "Negotiating IP Licenses Today for Tomorrow"
- Speaker, "Developments in Workplace Law and Practice," Duane Morris' Developments in Workplace Law and Practice 2014, Philadelphia, May 8, 2014