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Kristin Garris


Counsel
garris@thsh.com
Phone: 212-508-6783



Attorneys » G » Kristin Garris

Kristin Garris

Bio

Kristin Garris joined Tannenbaum Helpern’s intellectual property group in late 2017, bringing valuable depth of experience with trademarks, copyrights, and Internet enforcement. Kristin’s practice includes counseling clients across a broad spectrum of industries on:

  • intellectual property ownership and protection;
  • branding procedures and brand management;
  • trademark clearance and protection;
  • copyright protection;
  • inbound licensing;
  • outbound licensing and expansion;
  • data privacy issues, including GDPR;
  • privacy policies;
  • data transfer and compliance;
  • identifying risks related to IP;
  • bringing IP to a new employer;
  • preserving IP when leaving an employer;
  • IP considerations with independent contractors;
  • tailored website terms of use;
  • copyright litigation and enforcement;
  • trademark litigation and enforcement;
  • IP provisions in employment agreements;
  • tailored nondisclosure agreements;
  • IP issues in asset purchase agreements and joint ventures;
  • IP issues in master services agreements and SOWs;
  • resolving IP disputes efficiently;
  • purchase and sale of IP;
  • due diligence in mergers and acquisitions;
  • protection of IP rights online, including social media and apps.

Kristin has created and implemented comprehensive trademark and copyright policing and enforcement programs for U.S.-focused clients as well as clients with expanding interests outside the U.S. She advises clients on the clearance of trademarks, protection and registration strategies, enforcement goals and business-friendly enforcement methods, IP monetization goals, and IP considerations for employment agreements, master services agreements, and non-disclosure and confidentiality agreements. She also advises clients on IP enforcement online and in connection with social media platforms, including crisis management.

Kristin has significant experience with trademark proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. She helps clients resolve intellectual property disputes with employers, with employees, with independent contractors, in federal court proceedings, in arbitration proceedings, and through creative and practical settlements outside the courtroom. She conducts IP due diligence on trademark, copyright, and domain name issues in corporate transactions.

In addition to building the IP practice for Tannenbaum Helpern, Kristin is a member of the firm’s Cybersecurity and Data Privacy practice, an interdisciplinary team with experience in the many facets of this crucial and evolving area, including technology issues, cybersecurity and data privacy regulation and compliance, data breach planning and response, and dispute resolution.

Kristin has also provided significant pro bono volunteer work over the years. She was a recipient of multiple awards for pro bono work, including the 2015 Commitment to Justice for Outstanding Legal Team award presented by Her Justice, Inc.

Significant Matters

  • Trademark: Elektra Entertainment Group Inc. v. Elektra Trading and Consulting Group, S.A. de C.V. Assisted with successfully representing Elektra Entertainment in an opposition proceeding before the Trademark Trial and Appeal Board concerning the use of the ELEKTRA mark by Elektra Trading and Consulting for electronic goods. The opposition proceeding went through trial and resulted in a decision in favor of Elektra Entertainment.
  • Internet: Ikeafans, Inc. v. Ikea Property Inc. et al. Assisted with successfully representing IKEA in a dispute with operators of a “fan site” known as Ikeafans.com.
  • Copyright: Citigroup Global Markets Inc. v. James Cass and Hedgeanalyst.com.Assisted with obtaining a permanent injunction and judgment of nearly $1M in damages and attorneys’ fees against a website delivering full copies of proprietary analyst reports online.
  • Licensing: JA Apparel Corp. v. The Judger Group Ltd. Assisted with an international arbitration proceeding for plaintiff licensor JA Apparel Corp. against a Chinese licensee for the JOSEPH ABBOUD mark. After conducting a full trial on liability, the team successfully obtained an arbitral award confirming the termination of the license, finding that the licensee materially breached the license agreement, enjoining the licensee's activities in China, and dismissing the China licensee's counterclaim. The team also obtained a damages award in the amount of $1.2 million, a permanent injunction including an order to return or destroy all remaining inventory, and an award of attorneys’ fees and costs. This arbitration award was later formally recognized by the Shanghai Number One Intermediate People's Court.
  • Domain Names: Assisted with or led nearly 80 domain name dispute resolution proceedings on behalf of numerous clients to recover well over 100 domain names.

The following are representative examples of cases that were successfully resolved:

  • Quicken Loans Inc. v. Dempsey Mork / Magellan Capital, Forum No. 1712212 (rocketonlinebusinessloans.com, rocketonlinebusinesloans.com, rocketonlineloans.com, rocketwins.com, rocketfinancing.com) February 22, 2017.
  • Retail Royalty Company and AE Direct Co. LLC v TexPrompt, Inc., Forum No. 1659909 (aerie.design) March 4, 2016.
  • Carolina Carports, Inc., Adela Herrera and Javier Herrera v. PrivacyProtect.org/Web Master Internet Services Private Limited, WIPO Case No. D2014-0147 (carolinacarports.com) March 25, 2014.
  • Expedia, Inc. v. M D Lawrence, WIPO Case No. D2013-0061 (timelessclassicvacations.com) February 20, 2013.
  • IKEA Systems B.V. v. Ali ─░hsan ADA / PrivacyProtect.org, Domain Admin, WIPO Case No. D2012-0167 (ikeamarket.net) March 22, 2012.
  • Reynolds Innovations Inc. and Reynolds American Inc. v. PrivacyProtect.org, Domain Admin / Juan DIego Alvarez, Santiago Holdings Ltd., WIPO Case No. D2012-0872 (camelcigarette.com) July 7, 2012.

Areas of Focus:

  • IP protection strategies.
  • IP in employment, APA, MSA, and JV agreements.
  • IP due diligence.
  • Trademark clearance and counseling.
  • Trademark prosecution.
  • Trademark licensing.
  • Copyright protection.
  • Trademark and copyright litigation.
  • Trademark and copyright enforcement.
  • Privacy policies.
  • Data transfer and compliance.
  • Website terms of use.
  • Internet enforcement, including domain name disputes.
  • Negotiation of IP rights in commercial agreements.
  • IP and social media.

Education:

College:

  • Davidson College

Graduate School:

  • University of Virginia

Law School:

  • Wake Forest University School of Law

Prior Affiliations:

  • Kilpatrick Townsend & Stockton LLP (2008-2017)

Memberships:

Professional:

  • New York State Bar Association Entertainment, Arts and Sports Law Section, Fashion Law Committee (co-chair, present);
  • New York State Bar Association Commercial and Federal Litigation Section (present);
  • New York State Bar Association Intellectual Property Section (present);
  • Association of the Bar of the City of New York, Copyright & Literary Property Committee (present)
  • International Trademark Association (INTA) (present)
  • International Trademark Association (Saul Lefkowitz Moot Court Competition, Brief Reading Judge, 2010-2015, 2017)
  • South Carolina Governor’s School for Science and Mathematics Alumni Association Board (Board member and fundraising committee 2011-2017).

Bar Admissions:

  • New York
  • North Carolina

Court Admissions:

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Middle District of North Carolina
  • U.S. District Court for the Western District of North Carolina

Other:

  • Pro Bono Committee, Tannenbaum, Helpern, Syracuse & Hirschtritt LLP (2017–present).
  • Pro Bono Trademark Clinic Coordinator for Start Small Think Big, Inc.’s partnership with Kilpatrick Townsend & Stockton (2015-2017).

Award recognition:

  • N.Y. Super Lawyers - Rising Star:2013 (IP), 2014 – 2018 (IP Litigation).
  • Recipient of the 2015 Commitment to Justice Award for Outstanding Legal Team presented by Her Justice, Inc.
  • Recipient of 2014 Pro Bono Justice Award from Kilpatrick Townsend & Stockton.
  • Recipient of 2015 Pro Bono Opportunity Award from Kilpatrick Townsend & Stockton.
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