Kimberly Berger

Practice Areas

Litigation and Dispute Resolution

Appeals

Intellectual Property Litigation

Intellectual Property

Intellectual Property Litigation

Trade Secrets and Non-Competes

Trademarks and Brands

Copyrights

Career

Kimberly A. Berger specializes in domestic and international trademark prosecution and intellectual property litigation, including domain name disputes, trade secrets, unfair competition, false advertising, and trademark and copyright infringement.

She assists a variety of clients – from large, international companies to small businesses and individuals – with protection of their intellectual property rights, including selection, clearance and prosecution of trademarks, e-commerce issues, domain name registration and disputes and brand name protection.

Kim is experienced in developing and managing domestic and international trademark portfolios; trademark selection, clearance and prosecution; negotiating use agreements; brand protection; U.S. Patent and Trademark Office proceedings, including opposition and cancellation actions; and intellectual property litigation in both state and federal courts.

Kim previously served as Chair of the State Bar of Michigan Intellectual Property Law Council.

Professional Memberships

Chair of the State Bar of Michigan Intellectual Property Law Council, 2022-2023; Chair-Elect, 2021-2022; Secretary/Treasurer, 2020-2021; Member, 2015-present

International Trademark Association, Enforcement Committee 2016-2017, Internet Committee 2018-2019; Emerging Issues Committee, 2021-2022

Women of Miller Canfield, Co-Chair, 2019-present

Detroit Metropolitan Bar Association Inns of Court, 2013-2014

Michigan IP Inn of Court

American Bar Association, Intellectual Property Law Section & Litigation Section

American Intellectual Property Law Association

Federal Bar Association

Detroit Regional Chamber's Leadership Detroit, Class XXXVIII

Publications

Chapter author, "Trademarks and Brand Protection," Social Media and the Law, Practising Law Institute, 2014-present

"Internet control moves towards private sector with U.S. handover" (quoted), E-Commerce Law and Policy, April 2014

Work Highlights

Represents automotive Original Equipment Manufacturer (OEM) in trademark enforcement matters across all of its brands, including trademark oppositions and cancellations.

Manages international trademark portfolio for international aftermarket automobile services company with over 340 trademarks in 77 countries.

Manages international trademark portfolio for game company with over 155 trademarks in 30 countries.

Represented tattoo supply manufacturer in patent infringement action filed by German company in California District Court and successfully negotiated terms of patent license agreement.

Coordinated and managed multiple lawsuits in Brazil on behalf of franchisor against former master franchisee and sub-franchisees.

Coordinated and filed worldwide trademark registrations for nutritional supplement company.

Education

Awards