Overview
Charlene is the former Chair of Dorsey’s top-ranked Trademark, Copyright and Advertising practice group. Charlene serves as intellectual property counsel for small and large businesses in a wide variety of industries, including consumer products, entertainment and media, cosmetics, financial services, telecommunications, software, and medical devices. Charlene has extensive experience in all stages of the brand management process and her work includes representation of clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB), demand letters and allegations of infringement, and take down requests related to online infringement, as well as prosecution of Uniform Domain Dispute Resolution (UDRP) proceedings.
Charlene advises clients on open source licensing and compliance and generative artificial intelligence (AI), and provides clients with trainings and seminars on the use of both. Charlene also has significant experience in transactions involving intellectual property, including due diligence, negotiation of agreements, and assistance with the transfer of intellectual property rights and recordation of security interests related to corporate transactions and asset purchase and sale agreements domestic and international.
Charlene is the co-manager of Dorsey’s IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. Charlene also authors Chapter 29 of The Practitioner’s Guide to Colorado Business Organizations.
Experience
Client Achievements
Representative Work
Trademark and Copyright Management, Enforcement and Agreements
- Counsel clients with large and small portfolios on the adoption, selection, protection, and enforcement of trademark and copyright assets on a worldwide basis.
- Strategy and management of international trademark and copyright portfolios including work with local counsels around the world.
- Conduct trademark clearance searches.
- Counsel and assist market leading companies with registration of intellectual property assets with customs agencies in numerous countries and manage seizures by various customs and border control agencies worldwide.
- Develop and assist with strategy for enforcement of trademark rights worldwide, including demand letter campaigns, negotiation of settlements, consent and coexistence agreements, registration of trademarks with customs agencies throughout the world, assistance with seizure actions, and filing and prosecution of opposition and cancellation actions before the United States Trademark Trial and Appeal Board.
- Central Garden & Pet Company v. Doskocil Mfg Co., United States Trademark Opposition No. 91188816 (2013). Successful defense of trademark opposition and prosecution (including counterclaim) resulting in cancellation of adverse parties trademark registration. Case resulted in a published precedential decision of the U.S. Trademark Trial and Appeal Board (TTAB).
- Negotiate intellectual property licenses and purchase and sale agreements.
- Conduct diligence for purchase, sale, and financing transactions and assist with negotiation of intellectual property terms of related transaction documents.
- Assist with post-transaction recordation of title changes and security interest agreement against intellectual property assets worldwide.
- Assist with recordation of license agreements against international trademark asset.
- Represented global provider of digital services and technology solutions for content creation and delivery to major motion-picture groups, television studios, digital content providers, and advertising agencies in acquisition of a global, cloud based localization platform and distributed services firm.
- Represented world’s largest luggage company in $1.9 billion financing secured by portfolio of over 6000 intellectual property assets, including post-closing recordings.
- Leading hospitality company in acquisition of global brands and brand operations of hospitality company priced at $23 million.
- Represented oil and gas technology companies in the sale of all intellectual property, including primarily software technology, of both Canadian and United States entities to private equity firm, in a transaction valued at $140 million.
- World’s largest travel luggage company in $85 million acquisition of leading designer of protective cases for personal electronic devices.
- Leading travel luggage company in multiple acquisitions of international luggage and travel products companies.
- Leading consumer products company in multimillion dollar financing secured by portfolio of more than 4000 patent and trademark assets, including recordation of security interests throughout the world.
Technology, Media, Entertainment, and Online Enforcement
- Assist with trademark and copyright protection and enforcement for assets of creators, artists, musicians, and entertainment and media companies, including major record labels and their artists.
- Prepare and negotiate licenses in the entertainment and media industries, including partnerships and collaborations between musicians and labels.
- Counsel clients on the use of generative AI products and technology and preparation of guidelines, policies, and governing documents related to the use of generative AI.
- Provide seminars and trainings on the use of generative AI.
- Counsel clients on the use of open source software and preparation of guidelines, policies, and governing documents related to the use of open source software.
- Provide seminars and trainings on the use of open source software.
- File and prosecute Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints resulting in recovery of domain names for clients.
- Strategy and management of numerous international actions resulting in recovery of country code top level domain names (ccTLD) from cybersquatters.
- Assist clients in strategy and planning related to launch of new generic top level (gTLD) domain name system, including counseling on registration with Trademark Clearinghouse (TMCH).
- Successful enforcement of client copyright rights through notice and take-down procedure under the Digital Millennium Copyright Act (DMCA) and online service provider terms of service.
News & Resources
Articles
News & Press Mentions
Events & Speaking Engagements
Select Presentations
- Speaker, The Best Offense is Defense: TTAB Defenses, 18th Annual Rocky Mountain Intellectual Property & Technology Law Institute, July, 2020
- Speaker, Office Action Space: Case studies and Winning Strategies, 17th Annual Rocky Mountain Intellectual Property & Technology Law Institute, May 30, 2019
- Panelist, To Use or Not to Use, 16th Annual Rocky Mountain Intellectual Property & Technology Institute, June 1, 2018
- Tapped: Avoiding Bar Fights (typical business disputes), November 2, 2017
- Seminar Playback: Rock Bands, “Redskins,” & Registrations: The Federal Circuit Strikes Down Statute on “Disparaging” Trademarks, January 28, 2016
- Presenter, gTLD Launch Update: Protection and Enforcement of Trademarks, 13th Annual Rocky Mountain Intellectual Property & Technology Institute, May 29, 2015
- Presenter, Review of Recent TTAB Dilution Cases, 11th Annual Rocky Mountain Intellectual Property & Technology Institute, May 30, 2013
- Presenter, Intellectual Property for Small and Start-up Businesses, Bard Center for Entrepreneurship, January 27, 2010
- Presenter, Intellectual Property in the Age of Online News, Society of Professional Journalists, November 11, 2009
- Presenter, Trademark Dilution Revision Act of 2006, Colorado Bar Association, Intellectual Property Section, June 2007
- Presenter, Copyright in Music: The Basics, Licensing, and Issues in the Digital Age, CLE International Intellectual Property Conference, February 2007
- Sixth Annual Intellectual Property & Technology Institute, June 4-6, 2008
- Guest lecturer, Music Law and Licensing, University of Denver Sturm College of Law, Spring 2005 & Fall 2006
- Presenter, Trademark Basics, Rocky Mountain Intellectual Property and Technology Institute, Colorado Bar Association, 2008
- Presenter, Copyright Basics, Rocky Mountain Intellectual Property and Technology Institute, Colorado Bar Association, 2009
Industries & Practices
Trademark, Copyright + Advertising
Explore This Practice View client achievements related to this practice View resources related to this practiceIntellectual Property Litigation
Explore This Practice View client achievements related to this practice View resources related to this practiceFood, Beverage & Agribusiness
Explore This Practice View client achievements related to this practice View resources related to this practiceHealthcare & Life Sciences
Explore This Practice View client achievements related to this practice View resources related to this practiceCybersecurity, Privacy & Social Media
Explore This Practice View client achievements related to this practice View resources related to this practiceFranchise & Distribution Law
Explore This Practice View client achievements related to this practice View resources related to this practiceEnergy & Natural Resources
Explore This Practice View client achievements related to this practice View resources related to this practiceBanking & Financial Institutions
Explore This Practice View client achievements related to this practice View resources related to this practiceDevelopment & Infrastructure
Explore This Practice View client achievements related to this practice View resources related to this practice- Advertising & Marketing
- Artificial Intelligence
- Banking & Financial Institutions
- Cannabis
- Creative Industries
- Cybersecurity, Privacy & Social Media
- Development & Infrastructure
- Emerging Companies
- Energy & Natural Resources
- Food, Beverage & Agribusiness
- Franchise & Distribution Law
- Healthcare & Life Sciences
- Hospitality
- Intellectual Property Litigation
- Mergers & Acquisitions
- Private Equity
- Pro Bono
- Sustainability
- Technology
- Telecommunications
- Trademark, Copyright + Advertising
- Video Games
Professional & Civic
Professional Achievements
- Practice Group Leader, Trademark, Copyright and Advertising Practice Group, 2019 – 2023
- Author of Chapter 29 of The Practitioner’s Guide to Colorado Business Organizations
- Member, International Trademark Association
- Member, Colorado Bar Association
- Member, Denver Bar Association
Community Involvement
- Chair, Board of Directors, Denver World Affairs Council DBA WorldDenver
- Denver Bar Association “Wheels of Justice” bike riding team involved in the Courage Classic to benefit and raise money for Denver Children’s Hospital, 2007 – 2011
- Volunteer Instructor, Columbine Elementary School, Denver, 2009
- Member, WomenCook! Committee for Work Options for Women, 2008-2013
Accolades
- Listed in Best Lawyers in America©, 2021-2025
- Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2014-2024
- Recognized as a Global Leader in World Trademark Review’s Global Leaders Guide: Private Practice, 2024
- Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property), 2018-2024
- Listed as a Top Lawyer in Denver by 5280 The Denver Magazine, Intellectual Property: Trademark, 2018-2024
- Named a Best Lawyers® Lawyer of the Year, Trademark Law, 2023, 2025
- Recognized as a "Super Lawyer" for Intellectual Property by Colorado Super Lawyers, 2020-2022, 2024
- Recognized as an “IP Star” by Managing Intellectual Property Handbook, 2018-2024
- 5280 Top Lawyers Intellectual Property: Trademark, 2016-2020 and 2022
- Dorsey & Whitney – Scales of Justice Team Award (The World Ventilator Foundation), 2021
- Named "Up and Coming" by Chambers USA (Intellectual Property), 2015-2018
- Recognized as a "Rising Star" by Colorado Super Lawyers, 2010-2017
- Winner, "Up and Coming Stars," Law Week Colorado, 2009
- Volunteer Lawyer of the Year, Denver Bar Association, 2009