Eric Perrott, partner at Gerben IP, is a nationally recognized trademark and copyright attorney. He is a skilled negotiator and represents clients in all manner of trademark and copyright enforcement and defense matters.

In his 14+ years of practice, Eric has assisted thousands of clients, from individuals to start-ups, to multi-national corporations, with protecting their intellectual property. He prides himself on providing individualized client counseling catering to the client’s needs, industry, and budget.

In addition to assisting clients file trademarks and successfully overturn Office Actions with the USPTO, Eric has obtained hundreds ex parte and inter partes rulings for his clients before the Trademark Trial and Appeal Board.

Eric uses his in-depth knowledge of new technology and online platforms to provide his clients with advice on online marketplace infringement on Amazon, eBay, Etsy, and social media.

His legal counseling on domain name abuse and cybersquatting has resulted in over thirty domain name transfers for companies such as the owners of the Toys ‘R Us® family of brands, men’s grooming goods company Duke Cannon®, legal support services Rocket Lawyer®, online resale giant ThreadUp®, Anne Klein® women’s clothing brand, Lotto® Italian Sportswear, and Stericlean® home cleaning franchise.

In addition to his trademark practice, Eric counsels clients on copyright issues, including copyright infringement, transactions, and registration. Eric works with publishers and designers to draft contracts that protect parties in the short term and plan for long-term technological shifts, like AI and procedural image creation using trained datasets.

From being a featured speaker at the USPTO’s Global Intellectual Property Center to being quoted by CNBC, BloombergBNA, and more, Eric requently shares his knowledge of trademark law with organizations and news outlets, while regularly publishing articles for those looking to protect their valuable brands and intellectual property.

Eric is involved with the American Bar Association (ABA) in both leadership roles and as a member of the ABA Artificial Intelligence Taskforce. His leadership roles include Chair of the ABA Trademark Division and Chair of the ABA IP Division’s Committee on USPTO Operations Related to Trademarks.

His position as Chair of the ABA Trademark Division allows him the opportunity to organize more than a thousand talented IP attorneys to draft and influence the ABA’s official comments and responses to IP policy changes and help to provide fellow practitioners with information and updates on trademark law.

When the Trademark Modernization Act of 2020 was being created, Eric worked with the House Judiciary Sub-Committee to provide feedback. He was subsequently the first to file under the new expungement proceedings.

Eric lives in Washington DC with his wife and son. When he’s not working, he is probably playing board games, writing music, or climbing something tall. He is a lifelong learner and tinkerer, excited to learn about new things and eager to learn as much as possible.

Experience

• Successfully resolved a 3+ year dispute, allowing our client, a chocolate company, to obtain a registration despite a prior registered mark. This was accomplished through a Partial Petition to Cancel, which narrowed the scope of rights for the prior registered trademark.
• Devised and executed a detailed anti-counterfeiting plan with a card game maker, using a combination of trademark and copyright law to remove the counterfeit listings.
• Successfully negotiated high-visibility settlement between social media personalities, resulting in a public apology and business opportunities for both parties.
• Litigated and negotiated a settlement with a junior user of a mark after taking it over from another firm who has missed a crucial discovery deadline.
• Using advanced monitoring, we provided comprehensive protection of the Federal Trademark Register against ‘R US marks filed with the USPTO on behalf of Toys ‘R Us.
• Defeated a Morehouse Defense-based Motion to Dismiss in the TTAB for a restaurant client.
• Negotiated co-existence agreement between our client in the crypto industry and a large company in the entertainment industry.

Professional Contributions

• ABA Trademark Division, Chair (2022-2024)
• ABA Artificial Intelligence Taskforce, Member (2023-present)
• ABA Trademark Division, Vice-Chair (2020-2022)
• ABA Delegation – House Judiciary Sub-Committee, Participated in closed door roundtables about the Trademark Modernization Act of 2020 (2019)
• USPTO Trademark Practice and Policy Committee, Chair (2017-2020)

Press Mentions

WTR and Eric Perrott Discuss the USPTO’s Accidental Abandonment of Hundreds of Trademarks

A recent error by the USPTO resulted in the abandonment of hundreds of trademarks, raising concerns for brand owners. WTR and Eric Perrott delve into the issue, exploring its causes, implications, and what businesses can do to safeguard their trademarks. Read more.

Law360 Quotes Eric Perrott Regarding the Recent Federal Circuit Ruling on ‘Overlooked’ Trademark Declarations

The Federal Circuit recently published an opinion on whether a fraudulent incontestability declaration for a trademark can lead to the cancellation of the trademark’s federal registration with the USPTO. Read more.

Bloomberg and Eric Perrott Speak About the Supreme Court’s Decision in Jack Daniel’s Trademark Infringement Case

Jack Daniel’s recently appealed to the Supreme Court for the ability to sue a spoof dog toy company for trademark infringement. The Supreme Court ruled that the Rogers test, isn’t an applicable test when the alleged infringer is using another entity’s trademark. Read more.

Recent Articles

• Optimizing Trademark Work: What GCs Should Know About Firm Selection
• USPTO Fee Changes in 2025: What Foreign Companies Need to Know
• USPTO Trademark Fee Changes for 2025: What You Need to Know
• Navigating IP Policies and Infringement Reporting on E-commerce Sites
• AI-Guided Trademark Development: Mitigating Infringement Risks
• What happens if the opposing party does not respond to discovery in a TTAB Opposition or Cancellation?
• Navigating Trademark Examination Delays: Strategies for Businesses
• USPTO Proposes Increase to Trademark Fees

Speaking Engagements

• AltLegal Connect Webinar | The Ex-Filings: Expungements and ReExaminations Explained (February 2023)
• ABA Annual Intellectual Property Law Conference | Reexamining Reexamination (and Expungement): A Practitioner’s Guide to the Early Days of Ex Parte TMA Proceedings (Spring 2022)
• ABA Annual Intellectual Property Law Conference | Building Your Trademark Toolbelt: Letters of Protest and Requests to Make Special (Spring 2021)
• ABA Webinar | Temporary Non-Use of Trademarks in the Age of COVID (August 2020)
• Game Manufacturers Association | Intellectual Property in the Tabletop Gaming Industry with Eric Perrott (2019)
• ABA Annual Intellectual Property Law Conference | (Panel Moderator) The USPTO Speaks: An Update from the USPTO and TTAB (Spring 2017)
• USPTO’s Global Intellectual Property Academy | Annual Conference on Emerging Intellectual Property Law and Policy (2017)
• Spiral Marketing, Episode 23: Protecting Your Brand and Campaign IP with Trademark Attorney Eric Perrott (2016) – Listen to the Podcast

Recognitions

• Rising Star, Super Lawyers (2023-2024)
• Young Lawyer Fellow, American Bar Association Section of IP Law (2019-2021)
• Outstanding Leadership Contribution Award, American Bar Association Section of IP Law (2019)

Education

American University Washington College of Law

Juris Doctor, cum laude (2012)

The University of Florida

Bachelor of Arts, cum laude (2008)

Bar Memberships

Admitted to practice law in the District of Columbia.

Admitted to practice law in the Commonwealth of Virginia.

Admitted to appear before the Federal Court for the Eastern District of Virginia.