Attorney is an expert in trademark prosecution

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 by Sheila Pursglove

Legal News
 
Trademark attorney Kimberly Berger doesn’t just play board games – she successfully assisted a board game creator and manufacturer in enforcing its trademarks and copyrights against a competitor, who essentially copied one of its best-selling games, using a similar concept, design and name. At an industry convention for board games, the competitor had a booth next Berger’s client. The following year at the same convention, the competitor displayed its “new” game – the “infringing” copycat game. 

“That was how my client discovered it,” Berger says. “My client’s game involves identifying patterns on large dice.  The competitor’s game was to make connections on dominos. The competitor’s game used similar symbols on his dominos, the box had a similar blue color scheme and the name used one of the terms from the name of my client’s game.”  

It was just one of many intriguing cases for Berger, a principal in the Detroit office of Miller Canfield. She revels in the variety of clients and issues in her specialty of domestic and international trademark prosecution and IP litigation, with work that includes trademark registration and prosecution, domain name disputes, trade secrets, unfair competition, false advertising, and trademark and copyright infringement.

“I represent clients ranging from small, local start-ups to large, multinational companies and everyone in between,” she says. “I love assisting a client from the beginning of the trademark process with selecting and registering a trademark and then watching as the fruits of their labor pay off and the brand really takes off – it’s very gratifying to know you played even a small part in the client’s brand success.”

Among other challenging cases, she successfully assisted a client in enforcing its trademarks in a country in South America against several competitors who were using its trademarks without permission or a license agreement; assisted a Michigan-based telecommunications company with the clearance and registration of its new brand name; and currently assists an international company to prosecute, protect and maintain more than 260 trademarks in 74 countries. 

“I enjoy working with my clients in protecting their IP internationally because it brings a whole new set of challenges – every country handles its IP protection differently and you really have to develop a strategy with the client based on their needs,” she explains. “You also need to develop a good relationship with your foreign counsel to achieve your client’s goals.”
Berger will travel to Hong Kong in May for the annual meeting of the International Trademark Association (INTA), where she will meet with foreign counsel from many other countries who have assisted her in registering and protecting her clients’ trademarks internationally. 

“It will be my first visit to Asia so I’m excited to see it,” she says.

A native of Escanaba in the U.P., Berger headed to University of Detroit Mercy to study architecture – but after realizing that appreciating architecture and creating it were two very different things, she changed her major to communications with an emphasis in public relations and advertising, and minored in business, with an eye to going to law school. 

“When I realized architecture was not for me, the natural next choice was law,” she says. “I’d always been interested in the law and politics, and generally loved to argue with people about my opinions and why I was right!  Friends and
family were always telling me I should be a lawyer.”

She earned her J.D., cum laude, from Wayne Law, where she took part in moot court.  

“I really enjoyed going to school in an urban environment and being taught by professors with such rich, real-world experiences – and I met my husband there.”

Named among Michigan Super Lawyers Rising Stars, and DBusiness Top Lawyers, Berger joined Miller Canfield in 2002. 

“I love working here. I have the privilege of working with so many intelligent, successful and hard-working attorneys, which really forces you to step up to the plate and bring your ‘A’ game to the table every day,” she says.  “It’s also a very supportive and collegial atmosphere – for example, I’ve worked a reduced schedule since my oldest daughter was born and was recently promoted to principal this year.  I could not have gotten there without the support of not only the attorneys I work with, but also the firm itself.”

For the past several years she has sat on the Advocacy Committee of the nonprofit Greening of Detroit, that partners with federal, state and local agencies, corporations and foundations to assist neighborhood groups, churches and schools in efforts to improve Detroit’s ecosystem through tree plantings, environmental education, urban agriculture, open space reclamation, vacant land management, and workforce development programs. 

“It’s one of my favorite organizations, which I’ve been involved with since law school,” she says.

Berger and her husband Jay  – a partner at Clark Hill – make their home in Grosse Pointe Park, with their daughters, Ruby, 7, and Evie, 4. 

“We live in a beautiful old home built in 1930, and some sort of work always needs to be done – but I love it and all of its great architectural details,” she says. “I’ve always loved living and working in Detroit.  I love the walkability of the downtown area, as well as the classic architecture and beautiful buildings that still abound.  Since I’m a bit of a foodie, I also love discovering all the new restaurants in the area.”

In her leisure time, she enjoys skiing with her family, reading non-law related books when time allows, practicing yoga, and indulging her passion for architecture, even on vacations. 

“I love to travel, particularly to older cities,” she says. “You can usually find me poking around the churches, which have some of the most beautiful architectural details.”