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 11+ 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.

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Experience

• Represented tabletop games company in trademark and copyright licensing with major anime and video game properties.
• Successfully negotiated high-visibility settlement between social media personalities, resulting in a public apology and business opportunities for both parties.
• Amicably settled a dispute between race organizers that lasted 6+ years in litigation.
• Litigated and negotiated settlement terms for a foreign brand dealing with a trademark squatter in the United States after 3+ years of litigation.
• 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.
• Litigated and provided strategic advice for the famous Toys ‘R US brand in litigation before the Trademark Trial and Appeal Board and USPTO.

• Duke Cannon Supply Company, LLC v. Hong Bo Li
  Domain Name Dispute: #2053873 | Domain transferred: 08/11/2023
• Niwaki Ltd. v. Ting Liu
  Domain Name Dispute: #2051951 | Domain transferred: 08/04/2023
• Rocket Lawyer Incorporated v. DNS Admin / Buntai LTD
  Domain Name Dispute: #2050504 | Domain transferred: 07/30/2023
• Steri-Clean, Inc. v. Jake Soesa / Stericlean
  Domain Name Dispute: #2048362 | Domain transferred: 07/13/2023
• LTWHP, LLC v. Client Care / Web Commerce Communications Limited
  Domain Name Dispute: #2045488 | Domain transferred: 06/21/2023
• LTWHP, LLC v. Sebastian Frei
  Domain Name Dispute: #2035973 | Domain transferred: 04/16/2023
• LTWHP, LLC v. Ulrich Eggers
  Domain Name Dispute: #2035974 | Domain transferred: 04/13/2023
• LTWHP, LLC v. Kristian Faust
  Domain Name Dispute: #2035977 | Domain transferred: 04/13/2023
• Rocket Lawyer Incorporated v. Milen Radumilo
  Domain Name Dispute: #2031827 | Domain transferred: 03/17/2023
• LTWHP, LLC v. Luca Fuhrmann
  Domain Name Dispute: #2023281 | Domain transferred: 01/04/2023
• TRU Kids Inc. v. Ramsey Jabbar / Ramsey Dean Mgmt.
  Domain Name Dispute: #2014681 | Domain transferred: 11/09/2022
• Rocket Lawyer Incorporated v. Zhi Chao Yang
  Domain Name Dispute: #2010583 | Domain transferred: 10/11/2022
• Gerben Perrott PLLC v. assaf ghalib / gltrvler
  Domain Name Dispute: #2006775 | Domain transferred: 09/06/2022
• THREDUP INC. v. Thredup
  Domain Name Dispute: #1993727 | Domain transferred: 05/23/2022
• LTWHP, LLC v. Cai Qian
  Domain Name Dispute: #1991968 | Domain transferred: 05/12/2022
• LTWHP, LLC v. Domain Admin / Whoisprotection.cc
  Domain Name Dispute: #1991546 | Domain transferred: 05/11/2022
• SEESAW LEARNING, INC. v. Ven Rajagopala
  Domain Name Dispute: #1991932 | Domain transferred: 05/10/2022
• LTWHP, LLC v. jiali zhang
  Domain Name Dispute: #1985621 | Domain transferred: 03/31/2022
• THREDUP INC. v. Mike Doonin
  Domain Name Dispute: #1982763 | Domain transferred: 02/08/2022
• LTWHP, LLC v. Marina Jager
  Domain Name Dispute: #1978007 | Domain transferred: 01/25/2022
• LTWHP, LLC v. Anja Theiss
  Domain Name Dispute: #1978006 | Domain transferred: 01/20/2022
• Rocket Lawyer Incorporated v. True Shopping
  Domain Name Dispute: #1976510 | Domain transferred: 01/11/2022
• Kick Axe Throwing LLC v. Krista Goelz / Affordahealth Pain Relief Inc
  Domain Name Dispute: #1975168 | Domain transferred: 12/28/2021
• LTWHP, LLC v. Client Care / Web Commerce Communications Limited
  Domain Name Dispute: #1974208 | Domain transferred: 12/27/2021
• TRU Kids Inc. v. Host Master / 1337 Services LLC
  Domain Name Dispute: #1947120 | Domain transferred: 06/21/2021
• Lotto Logic Limited v. Carlos Tolentino
  Domain Name Dispute: #1921749 | Domain transferred: 12/28/2020
• WH Buyer, LLC d/b/a WHP Global v. Ryan Tyner
  Domain Name Dispute: #1920587 | Domain transferred: 12/16/2020

VIEW MORE +

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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)

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Press Mentions

The USPTO announced that it will be continuing to update its new trademark search system. Since the system’s release at the end of last year, user feedback has been poor. Read more.

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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.

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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.

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Recent Articles

• 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
• Beware of a Trademark Scam Coming from USPTO.ORG
• Can You Add Goods and Services to a Trademark Registration?
• How Creators Can Recover Rights Under Copyright Termination
• Specimen Refusals: Tips on How to Avoid an Ornamental Refusal and Submit Strong Specimens to the USPTO

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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

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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)

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Education

American University Washington College of Law

Juris Doctor, cum laude (2012)

The University of Florida

Bachelor of Arts, cum laude (2008)

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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.