Marshall, Gerstein & Borun LLP

Representative Experience

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, including the Internet. 

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 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.  Fewer than 5% of women lawyers have been so recognized with an AV® Preeminent rating by LexisNexis Martindale-Hubbell.

Marsha 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.

Publications and Speeches

• Commentary: “Disillusioned with dilution:  Starbucks versus Charbucks,” Westlaw Journal, Intellectual Property, March 21, 2012.
• “Copyright and Data Rights Under Government Contracts and Grants – the Yours, Mine and Ours of Technology Transfer,” Society of Research Administrators International Annual Meeting, Live Presentation, October 2011.
• “Intellectual Property Basics for the Research Administrator,”  Society of Research Administrators International Annual Meeting, Live Presentation, 2010.
• “Recent Developments in Trademark Law,” John Marshall Law School Intellectual Property Conference, Live Presentation, 2006.
• “From Concept to Craze – The Development of a Fictitious Character,” International Trademark Association (INTA) Annual Meeting, Live Presentation, 2004.

Community and Professional Involvement

• SERRV International, a nonprofit international fair trade and development organization
  • Chair of the Board, 2007-present
• International Trademark Association (INTA)
• American Bar Association (ABA)
  • Section on Intellectual Property
• New York State Bar Association (NYSBA)
• Chicago Bar Association (CBA)

Short Biography