Marsha K. Hoover advises a wide variety of entities, from public corporations to nonprofit organizations, with respect to trademark, copyright, trade secrets, and identity rights. She helps clients protect and properly use intellectual property assets and avoid and manage conflicts. Ms. Hoover has considerable experience in trademark and copyright prosecution and licensing. While she excels in negotiating the resolution of intellectual property disputes without resort to litigation, she is also an experienced litigator.
Ms. Hoover is included in the 2011 inaugural edition of the Martindale-Hubbell® Bar Register of Preeminent Women Lawyers™ as being among the women attorneys who have received the highest possible rating in both legal ability and ethical standards from their peers. At that time, fewer than 5% of women lawyers had been recognized with an AV® Preeminent rating by LexisNexis Martindale-Hubbell. In 2013, she was selected as a "Top Rated Lawyer in Intellectual Property" by American Lawyer Media (ALM) and Martindale-Hubbell. Ms. Hoover was listed by the World Trademark Review (WTR) since 2013 in the WTR 1000 rankings. Her peers recognize her as a "Leading Lawyer" in 2015 and 2016.
- Primary outside trademark counsel to Fortune 100 company with a portfolio of over 400 United States marks; responsible for clearance, prosecution and enforcement.
- Oversees worldwide trademark prosecution for global publishing company.
- Prevailed in UDRP proceedings on behalf of National Association of Boards of Pharmacy, securing orders for the transfer of Internet domain names that incorporated its certification mark for Internet pharmacies.
- Enforced client rights in character, securing the cessation of broadcast and webcast of infringing imitation advertisements.
- Stopped a client’s competitor from purchasing client’s trademark as a Google AdWords keyword.
- Through negotiation, caused a major television network to change its iPad application to remove a client’s trademark.
- Litigated federal false advertising case to successful settlement.
Ms. Hoover has handled legal matters in these areas:
- United States and International Trademark clearance and prosecution
- Trademark Trial and Appeal Board (TTAB) proceedings
- Registering and protecting copyrights
- Rights and clearances; public domain and fair use analyses
- Publishing agreements
- Merchandise licensing
- Uniform Dispute Resolution Policy (UDRP) cases
- Intellectual property enforcement
Background and Credentials
Ms. Hoover's clients include publishing companies, broadcasters, insurers, investment companies, financial advisors, owners of hotels and restaurants, not-for-profit associations, television and film producers, religious and educational institutions, food manufacturers, retail stores, and web-based enterprises. Her extensive experience dealing with trademark and copyright issues across a very broad array of industries enables her to help clients avoid and overcome conflicts with the existing intellectual property rights of others in all types of media.
She works closely with in-house counsel needing assistance with special intellectual property projects and issues, including complex trademark prosecution and licensing matters and pre-acquisition due-diligence inquiries. Ms. Hoover’s practice includes representing clients in the United States Patent and Trademark Office and the Trademark Trial and Appeal Board, as well as coordinating international trademark registration and enforcement programs. She has considerable experience in copyright and trademark protection for characters, and in protecting, enforcing or securing intellectual property licensing rights.
Ms. Hoover completed a two-year judicial clerkship for the U.S. District Court for the Northern District of Illinois before beginning her private practice in commercial litigation. She gained experience in preparing and trying complex antitrust cases before establishing her intellectual property law practice.
Ms. Hoover earned her J.D. from Northwestern School of Law and received a Bachelor of Science degree in communication, also from Northwestern University.
- Northwestern University School of Law (J.D.)
- Northwestern University (B.S.)
- New York
- U.S. District Court, Northern District of Illinois
- U.S. District Court, Northern District of Illinois, Trial Bar
- U.S. District Court for the Central District of Illinois
- U.S. District Court for the Central District of Illinois, Trial Bar
- U.S. Circuit Court of Appeals, Seventh Circuit
- U.S. Supreme Court
Publications and Presentations
- "Key Developments in the Trademark Trial & Appeal Board," John Marshall Law School 60th Annual Intellectual Property Conference, February 26, 2016.
- "Trademark Tuesday,” Northwestern Law Intellectual Property Law Society Program, February 23, 2016.
- "Estate Planning for Special Assets," DuPage County Bar Association’s Estate Planning & Probate Section’s MCLE, February 9, 2016.
- "Bull or Bully: His Airness and IP Rights and Wrongs." Co-Presenter, Trademark & Copyright Strategy Summit: Chicago, October 15, 2015.
- "U.S. trademark prosecution: Online use may miss the mark," InsideCounsel, September 16, 2014
Click here to see additional Publications and Presentations
Community and Professional Involvement
- International Trademark Association (INTA)
- American Bar Association (ABA)
- Section on Intellectual Property
- Copyright Society of the USA
- Member, Board of Trustees, Union League Club of Chicago Boys & Girls Clubs