Nicholas Holmes, Esq.
Trademark Attorney
Associate
1050 Connecticut Ave NW, Suite 500
Washington, DC 20036
202-294-2287 (Office)
Trademark Attorneys Trusted For Our Experience®
Trademark Attorney
Nicholas Holmes is an attorney at Gerben IP, where he provides tailored and comprehensive advice to clients in an array of industries. He has assisted clients of all sizes with their trademark needs, from sole proprietors to global corporations.
As an attorney, Nicholas focuses on all aspects of the trademark prosecution process, from drafting and filing applications to filing office actions and maintenance documents.
Nicholas also has experience in enforcing his client’s trademark rights both before the Trademark Trial and Appeal Board, as well as before the Court of Appeals for the Federal Circuit, where he second-chaired a trademark appeal against a publicly traded global corporation.
Before joining Gerben IP as an associate, Nicholas was an associate at a Hartford-based boutique IP firm, as well as the Director of the Trademark practice at a Boston-based IP firm, where he gained additional experience in trademark prosecution and enforcement, as well as client management.
While attending Suffolk University Law School, Nicholas was a member of the Intellectual Property and Entrepreneurship Clinic, assisting pro-bono trademark clients as a student attorney. This experience in law school helped fuel Nicholas’ passion for trademark law and for providing clients with comprehensive guidance and advice to navigate their trademark needs.
Nicholas was born in Massachusetts and resides in Boston with his wife and two cats. When he is not working, he can be found in the kitchen recreating recipes from his family recipe box. He also enjoys the craft beer scene and frequently travels to cities to experience and taste new beers and food, where he can be found rating his favorite beers on the Untappd app.
Experience
- Negotiated a settlement between a global nutrition company and an alternative medicine entrepreneur resulting in an out-of-court settlement.
- Assisted client in global trademark re-branding and achieved positive client outcome before new product launch.
- Defended a technology company in a trademark appeal at the Court of Appeals for the Federal Circuit, resulting in a favorable outcome for the client.
- Negotiated a settlement for a client in the legal and business software company, narrowing the scope of rights for the other trademark.
- Helped register a trade dress design for a red-bottom hat by proving the mark was distinctive and well-known.
- Negotiated co-existence and consent agreements with a national cosmetics company on behalf of a client in the same industry.
- Assisted a well-known museum in registering a portfolio of marks for brand awareness and enforcement purposes.
- Registered a trademark for a client in the real estate industry, after overcoming a likelihood of confusion refusal, which cited an existing registration in the same industry as the client.
- Successfully overcame a merely descriptive refusal, resulting in the registration of a trademark for a national landscaping company.
- Settled a trademark dispute for a national food company, resulting in opposing party phasing out its use of an infringing trademark.
- Created a trademark and copyright filing program for a health technology startup to ensure IP protection as it was created.
- Successfully argued against likelihood of confusion and merely descriptive trademark office action refusals resulting in trademark registrations on the Principal Register.
- Performed IP due diligence for a proprietary wheel technology company being acquired by a Private Equity firm.
Professional Contributions
- Alan D. Lourie Boston Intellectual Property American Inn of Court, Member (2024 – present)
- Boston Intellectual Property Law Association, Member (2024 – present)
- International Trademark Association, Member (2021 – present)
Speaking Engagements
- Becoming an IP Lawyer Without a Science/Technical Background, Massachusetts Bar Association Young Lawyers Division (September 2024)
- IP Year in Review: Hot Topics in Patent, Trademark, and Copyright Law, Connecticut Bar Association, IP Law Section (March 29, 2023)
- The Ethics of Working from Home, Joint Patent Practice Seminar (June 15, 2022)
Publications
- ‘We are Penn State’ and We Will Protect our Marks, Trademark Lawyer Magazine (Annual 2024)
- Ruffled Feathers over alleged Twitter Copyright Violations, Trademark Lawyer Magazine (July 20, 2023)
Recognitions
- Top 10 Ranking, JD Supra’s 2024 Reader’s Choice Awards (2024)
- Justice Benjamin Kaplan Copyright Law Award, Suffolk University Law School (2021)
Education
Suffolk University Law School
Juris Doctor (Intellectual Property Concentration), cum laude (2021)
University of Delaware
Bachelor of Science (Chemistry), (2018)
Bar Memberships
Admitted to practice law in the state of Connecticut.
Admitted to practice law in the state of Massachusetts.
Admitted to appear before the Federal District of the District of Connecticut.
Admitted to appear before the Court of Appeals for the Federal Circuit.