Michelle A. Cooke

Partner

2121 Avenue of the Stars
Suite 2800
Los Angeles CA 90067
TEL: 310.734.3252
FAX: 310.734.3300

Michelle A. Cooke is a partner in Steptoe & Johnson LLP's Intellectual Property group. Ms. Cooke heads the firm's trademark transactional practice in California. Immediately prior to joining Steptoe, she led the trademark group at a major Los Angeles firm.

Branding

Ms. Cooke’s career focuses on helping clients build brands and equity rights. She works with some of the best-known brands in the world, and helps new brands grow into valuable corporate assets. This experience includes developing new brands as well as providing counseling on brand expansion, exploitation, and exposure in advertising and marketing. Ms. Cooke assists clients in achieving maximum control and value for their trademarks through licensing, merchandising, and distribution agreements. On behalf of her clients, she frequently interacts directly with licensees and licensors on issues of contract negotiations, disputes, and compliance. Further, she has lead teams in the sale and acquisition of large international intellectual property portfolios.

Ms. Cooke’s in-depth experience managing trademark and copyright portfolios, and developing strategies to protect and enforce intellectual property rights enables her to assist her clients in evaluating and navigating risks that might threaten brand value or create liability. Clients routinely turn to her for her ability to identify and execute strategies for trademark and copyright issues and disputes that cross international borders.

Clients from a wide-range of industries seek out Ms. Cooke’s knowledge and experience in intellectual property, including apparel, entertainment, television and media, food and beverage, software, online services, consumer products, and manufacturers of industrial goods.

Recent work includes:

Led the intellectual property team in the $125 million acquisition of all substantial assets of century-old clothier Hartmarx Corporation and its affiliates via Chapter 11 bankruptcy proceedings, which included an extensive international intellectual property portfolio of copyrights, patents, and licensing rights for brands such as Hickey Freeman, Hart Schaffner Marx and Misook.
Led the intellectual property team for a European client in the acquisition of an international portfolio of trademarks and copyrights for a world-known brand, which included an assessment of numerous active international third party disputes over the brand.
Assists celebrity fashion designers, with hundreds of millions of dollars in sales, in establishing, protecting and enforcing multiple brands internationally.
Represents an apparel company in a venture with a well-known entertainer to develop and protect one of the most successful celebrity brands.

Online Services

Ms. Cooke counsels clients in technology and with extensive online services and web based businesses. In addition to drafting all forms of agreements for online services, website use, technology, and software licensing, maintenance and development, she advises clients on issues of privacy regulations and DMCA compliance. This experience allows her to provide specific and general advice to any web-based business.

The use, protection, and enforcement of intellectual property rights on the Internet presents unique concerns and challenges for all owners of intellectual property rights. Ms. Cooke provides strategies tailored to the online environment including developing agreements, guidelines and policies for the use and posting of user generated content, domain name disputes, and trademark and copyright policing and enforcement plans. She also assists clients in navigating issues arising from the growing presence of brands in social media and Web 2.0.

Recent work includes:

Assisted a media company in its expansion from television into a sophisticated interactive online presence by crafting policies and agreements for use of the website, user generated content, and personal data, as well as formulating internal compliance procedures and audits.
Works with a multimedia entertainment company with multiple brands on international intellectual property protection for computer and online games, film and original content distribution through a website, downloads, applications, and other forms of recorded media.
Assists clients in “edutainment” by preparing software licenses, setting intellectual property rights usage and protection strategies, evaluating third party licensing opportunities, and drafting independent contractor agreements for software development, music, content, and artistic works.

International Protection

The global market requires intellectual property owners to consistently reevaluate their rights from an international perspective. Ms. Cooke has extensively focused on this critical aspect for her clients as pre-planning and vigilance can minimize risks in other countries and lay the foundation for international brand expansion. Ms. Cooke can facilitate a client’s entrance into new territories through her accumulation of nuances on branding, advertising, and intellectual property legal issues in all major foreign markets.

By first identifying a client’s short and long term goals, Ms. Cooke proposes strategies tailored to the client’s needs and budget. She then builds international portfolios of registered rights to bolster brand strength and value, and negotiated licensing, manufacturing, and distribution agreements for foreign markets.

As the value of a brand is also impacted by the level of brand control, Ms. Cooke handles global brand monitoring, policing and enforcement, including overseeing foreign opposition and cancellation proceedings, actions for infringement, domestic and foreign customs enforcement, and assisting local authorities in criminal proceedings against counterfeiters.

Recent work includes:

Developed a licensing agreement for a major US apparel company with a Chinese manufacturer and retailer on the manufacture, development, and distribution through retail and online stores for a product tailored to the local market, and provided for quality control over manufacturing, subcontractors, product, brand-usage, and trademark enforcement.
Crafted and implemented an international enforcement strategy in over five countries to help eliminate third-party obstacles to the expansion and exploitation of a brand with multi-level application.
Initiate oppositions, cancellations, and infringement suits in foreign countries, as well as defend clients in similar actions for multiple clients

In 2011, she was recognized on the Daily Journal’s “Top 25 Intellectual Property Portfolio Managers and Patent Prosecutors in California.” Ms. Cooke regularly speaks and writes on the topics of brand development, and the protection and enforcement of intellectual property rights.

Noteworthy

Southern California Super Lawyers, Intellectual Property, 2009 - 2012
"Top 25 Intellectual Property Portfolio Managers and Patent Prosecutors in California," Daily Journal, 2011
Rising Icon Award, Grey Goose and Uptown Magazine, 2010
"Top Ten California Trademark Attorneys," Daily Journal, 2008

Select News & Events

Selected Publications

Michelle Cooke Authors Article, "Legal Challenges Arise in Protecting Sports' Brands"
April 2, 2009, Sports Litigation Alert
Losing Your Mark
March 4, 2009, Los Angeles Daily Journal

Professional Affiliations

Vice Chair (North America), Lex Mundi, Intellectual Property
Los Angeles County Bar Associations, Intellectual Property Section
Jack Daniel’s Properties, Inc., Board of Directors
Southern Comfort Properties, Inc., Board of Directors
California Black Women’s Health Project, Board of Directors, Secretary