Katherine P. Califa

Senior Counsel

Overview

Katherine P. Califa is an intellectual property lawyer with Foley & Lardner LLP where she advises clients on ways to develop, protect, manage, and maximize the value of their intellectual property. Katherine regularly counsel’s clients regarding the selection, procurement, and enforcement of brands and other intellectual property assets in the United States and abroad. She also works with clients to develop cost-effective worldwide brand protection strategies related to advertising in new media, launching new products, and entering new markets. Katherine has robust experience dealing with legal issues related to social media, mobile apps, right of publicity, right of privacy, and trade dress matters. On the enforcement side, Katherine represents clients before the Trademark Trial and Appeal Board, helps clients combat online and brick-and-mortar brand infringements, and negotiates favorable settlements to complex disputes. Katherine also provides intellectual property counseling related to business acquisitions and related due diligence. Katherine has specific experience advising clients on the unique challenges related to naming new pharmaceutical products. She is a member of the firm’s Trademark, Copyright Advertising Practice, and the Medical Devices Industry Team.

Katherine has been recognized as a leading trademark practitioner in the 2016, 2017, 2018, and 2019 editions of WTR 1000, published by the World Trademark Review.

Prior to joining Foley, Katherine served as a law clerk for the Honorable Deborah K. Chasanow at the U.S. District Court for the District of Maryland.

Education

Katherine is a graduate of Stanford Law School (J.D., 2006), where she was an editor of the Stanford Journal of Civil Rights and Civil Liberties and served as co-chair of the Stanford Latino Law Students Association. Katherine earned her B.A. in economics from Wellesley College (cum laude, 2003).

Representative Experience

  • Manages worldwide trademark portfolios and directs global clearance, registration and enforcement strategies for clients in diverse industries, including financial services, consumer products, health/medical technology, and pharmaceuticals
  • Regularly advises major pharmaceutical manufacturers on trademark and regulatory risks related to candidate drug names
  • Manages brand and copyright enforcement actions for leading e-content provider
  • Assisted client with reaching global mobile app release targets by handling all aspects of intellectual property due diligence, including advising on trademark use and clearance, copyright, and right of publicity clearance, compliance with internal branding guidelines, and compliance with app platform rules and guidelines

Presentations

  • Trademarks, Promotions, and Social Media Best Practices, Client Presentation (2019)
  • The Effect of Your Trademark Initiatives on Your Business Image, Managing Intellectual Property's Fifth Annual International Women’s Leadership Forum (2018)
  • Trademark Protection and Enforcement, Client Presentation (2018)
  • Recent Federal Trade Commission Decisions, American Bar Association Antitrust Division Monthly Update (2018)

Admissions and Professional Memberships

Katherine is admitted to practice in the District of Columbia, Maryland, the United States District of Maryland, and the United States Court of Appeals for the Fourth Circuit. She is a member of several professional organizations, including the International Trademark Association, the Hispanic National Bar Association, and the American Bar Association.

Representative Matters

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Foley’s Sports Industry Team has worked closely with Citigroup on multiple representations, including sponsorship of the 2012 London Olympics and the 2014 Sochi Olympics. In this respect, Foley was instrumental in navigating them through the various branding, copyright, right of publicity and marketing/advertising issues that arise through the sponsorship of an event of this magnitude on an international stage. When it comes to trademarks and sports, the Olympics and Citigroup are paramount. Given the numerous well-known Citi-formative marks and brands in more than 100 countries, this is a global representation. Citigroup’s confidence in Foley is demonstrated time and time again in sports, including through our branding/trademark and advertisement counseling in connection with the Citi Bike Program (the successful bike sharing program in New York City), Citi Field (where the NY Mets play baseball) and the sponsorship of various sporting events for children, such as the Citi Open.
Foley regularly provided global strategic counseling, reviewed advertising and marketing materials regarding copyright and right of publicity issues directly with Citigroup's in house trademark and advertising counsel and various associated business units regarding Citigroup's 200th anniversary.
Foley assists new client DirecTV with various trademark counseling, enforcement and social media matters.