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Micheline Kelly Johnson

Of Counsel
Chattanooga
T: 423.209.4103
F: 423.752.9548
Orlando
T: 407.422.6600
F: 407.841.0325

Micheline Kelly Johnson, a registered patent and trademark attorney in the Chattanooga and Orlando offices, concentrates her practice in intellectual property.

Featured Videos

Consider Using a Non-Disclosure Agreement to Protect Your Intellectual Property July 17, 2015
IP Tips for U.S. Companies Expanding Into Foreign Countries May 12, 2015

Featured Experience

Global trademark counsel for Avis Budget Group, Inc.

Global intellectual property counsel for Prestige Brands Holdings, Inc., marketer of famous brands including Allerest PE®, Clear Eyes®, Chloraseptic®, Luden's® and EPT®.

Assisted both seller and buyer in intellectual property aspects of acquisition of $200MM OTC pharmaceutical company by $600MM OTC pharmaceutical and household brand products company. Continue to represent combined intellectual property portfolio.

Professional Biography

Overview

Ms. Johnson's practice leads the Firm in trademark portfolio management with responsibility for over 6,600 U.S. and international trademark applications and registrations, helping propel Baker Donelson to listing in the "Top 100 Trademark Firms" as noted in Intellectual Property Today.

Ms. Johnson has obtained trademark protection for both product configurations and market-leading brands, and has negotiated and structured critical international co-existence agreements designed to protect brand strength while embracing business opportunities. Ms. Johnson represents a number of consumer product over-the-counter (OTC) pharmaceutical companies in branding, advertising and packaging matters, as well as a technologically innovative global automobile rental company, an international television network, and numerous web-based service providers. She counsels clients in international intellectual property protection strategies.

Ms. Johnson assists clients in identifying, protecting, and capitalizing on intellectual property assets. She also performs due diligence evaluations of portfolios in connection with public financings and acquisitions and counsels clients in transactional matters involving intellectual property, including preparing transactional documents for license agreements, joint ventures, mergers and acquisitions, and divestitures. Ms. Johnson's portfolio management includes enforcing clients' intellectual property rights in federal courts and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, as well as coordinating enforcement efforts worldwide.

Ms. Johnson has prepared and prosecuted domestic and international patents relating to a range of technologies, including chemicals, manufacturing equipment, toys, computer-based business methods, and general mechanics. In addition, Ms. Johnson evaluates patents and drafts license agreements, freedom-to-operate opinions, validity/invalidity opinions, patentability opinions, and non-infringement opinions.

Ms. Johnson also has experience in copyright protection and enforcement, and Internet, eCommerce, and domain name matters. She has served as an expert in patent litigation and is the former Chair of the Firm's Intellectual Property Group, and currently serves as co-chair of the Firm's Trademark and Branding section.

Ms. Johnson holds the highest rating for ability and ethics, the AV® rating from Martindale-Hubbell, based on anonymous surveys of lawyers and judges.

Representative Matters
  • Global trademark counsel for Avis Budget Group, Inc.

  • Global intellectual property counsel for Prestige Brands Holdings, Inc., marketer of famous brands including Allerest PE®, Clear Eyes®, Chloraseptic®, Luden's® and EPT®.

  • Assisted both seller and buyer in intellectual property aspects of acquisition of $200MM OTC pharmaceutical company by $600MM OTC pharmaceutical and household brand products company. Continue to represent combined intellectual property portfolio.

  • Negotiated favorable settlement on behalf of a client accused of field employees' multiple copyright infringements via peer-to-peer (BitTorrent) sharing of a movie file.

  • Assisted a large pharmaceutical company in combating extensive, targeted international registrations of the client's trademarks by a foreign corporation, successfully opposing and/or obtaining assignments of all of the pirate marks, totaling roughly 100.

    (2015)
  • Obtained permanent injunction in Federal Court against Puerto Rican competitor that designed a sophisticated  scheme to prey on our client's market recognition and goodwill for an important dietary supplement brand. Our client, an over the counter brand manufacturer, recently acquired several established health care brands. During the due diligence, we identified the scheme and filed an action in U.S. District Court for trademark and trade dress infringement and false labeling. To settle the lawsuit, the defendants agreed to a permanent injunction against infringement, abandoned all markets for the competing product, assigned any rights to their infringing marks to our client and paid a confidential but substantial sum to cover our client's attorneys' fees. (2015)
Professional Honors & Activities
  • AV® Preeminent™ Peer Review Rated by Martindale-Hubbell
  • Listed in The Best Lawyers in America® in Trademark Law (2012 – 2017); Copyright Law (2016 – 2017); Patent Law (2017); Entertainment Law - Motion Pictures and Television (2017)
  • Named Best Lawyers' 2014 Chattanooga Trademark Law "Lawyer of the Year"
  • International Federation of Intellectual Property Attorneys (Fédération International des Conseils en Propriété Industrielle) (2015)
    • Nominated by U.S. Member Group to, and accepted for, membership on Trade Marks Study & Work Commission (CET)
  • Member – International Trademark Association (INTA)
    • Emerging Issues Committee (2016 – 2017)
  • Listed in Mid-South Super Lawyers in Intellectual Property (2013 – 2016); listed as one of the top 50 female attorneys (2015, 2016); listed as one of the top 100 Tennessee attorneys (2016)
  • Volunteer – Pro Bono Attorney in the Chattanooga legal aid program
  • Volunteer – Pro Bono Attorney in the Atlanta legal aid program
  • Member – Tennessee (Patent, Trademark and Copyright Sections) Bar Association
  • Member – Georgia (Patent, Trademark and Copyright Sections) Bar Association
  • Member – American Bar Association
  • Member – Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
  • Member – American Chemical Society
Community Leadership & Activities
  • Corporate Advisory Board, Chattanooga Women's Leadership Initiative
  • Board Member, Past President and Vice President, Family Promise of Greater Chattanooga (fka Interfaith Homeless Network)
  • Past Board Member – The Junior League of Chattanooga
  • Past Chairman – Corporate Partnership for Lookout Mountain Elementary School
  • Past Board Member – St. Jude Home and School Association
  • Past Member – Girls' Preparatory School Auction Committee
  • The Baylor School International Students Host Family (2009 – 2015)
  • Lector, Eucharistic Minister, former Secretary of Parish Council and Sunday School teacher, Our Lady of the Mount Catholic Church
Publications
Speaking Engagements
  • "Tennessee-China Network – Selling to China Seminar" (October, 2016)
  • "Selling into China: Protecting Your IPR Abroad," Tennessee China Network - Selling to China Seminar, Chattanooga, Tennessee (October, 2016)
  • "Unauthorized Use of Trademarks on the Internet," panelist, Open Forum of FICPI (International Federation of Intellectual Property Attorneys), St. Petersburg, Russia (October, 2016)
  • "Marketing In The Year We Live In" (July, 2016)
  • "Best Practices: Social Media," Southeast Tennessee Lawyers Association for Women's (SETLAW) Lunch and Learn CLE (July, 2016)
  • "Protecting Your Intellectual Property in China," JC Partnership Forum China Workshop (July, 2015)
  • "JC Partnership Forum China Workshop" (July, 2015)
  • "Social Media Workshop," Emerson Group/Vayer Media (May, 2015)
  • "Global Intellectual Property," North Alabama International Trade Association (May, 2015)
  • "Branding Experience" (April, 2015)
  • "Fall 2014 Franchise Business Network Meeting" (November, 2014)
  • "Global Protection and Enforcement of Trademarks," International Franchise Association's Franchise Business Network (November, 2014)
  • "Branding Experience" (October, 2014)
  • "Non-Disclosure Agreements for the Information Technology Professional," for CIO and IT staff of national nursing home, assisted living, retirement living, home care, and Alzheimer centers (July, 2014)
  • "Intellectual Property Simplified for the CPG Executive," Consumer Products Goods (CPG) Executives (July, 2013)
  • "Branding in the Digital Age: New Media, New Models," International Franchise Association's Franchise Business Network (July, 2013)
  • "Summer 2013 Franchise Business Network Meeting" (July, 2013)
  • "Hot Topics in Trademarks," International Biotech Audience, Washington, D.C. (July, 2013)

Awards

Education

  • Vanderbilt University, J.D.
    • Student Writing Editor – Vanderbilt Journal of Transnational Law
  • Vanderbilt University, M.B.A. (Finance)
    • Owen Merit Scholar
  • Spring Hill College, B.S. (Chemistry), cum laude
    • Miller-LeJeune Memorial Scholar

Admissions

  • U.S. Patent and Trademark Office
  • Tennessee
  • District of Columbia
  • Georgia

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