Katherine P. Califa

Partner

Overview

Katherine P. Califa is a partner and intellectual property lawyer with Foley & Lardner LLP where she helps clients to develop, protect, license, and enforce their intellectual property, including brands, copyrights, and product shapes. Katherine has helped clients secure and enforce their brands in over 100 countries around the world. 

Katherine’s practice includes:

  • Developing cost-effective brand protection and enforcement strategies
  • Advising on U.S. pharmaceutical name selection, including the intersection between trademark and regulatory review of drug candidate names
  • Securing product shape protection for medical devices, edible goods, and fashion products
  • Thinking “outside the box” to secure protection for non-traditional brands
  • Representing clients in administrative litigation before the Trademark Trial and Appeal Board
  • Negotiating favorable settlements to complex trademark disputes
  • Providing intellectual property support for mergers, acquisitions, sales and other business transactions

While Katherine works with clients in all industries, she has extensive experience advising clients in the pharmaceutical, medical device, food/beverage and financial services industries. She is a member of the firm’s Trademark, Copyright, and Advertising Practice and the Health Care & Life Sciences Sector. Katherine co-chairs the firm's Hispanic Attorney Affinity Group.

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.

Presentations & Publications

  • The Hungry Caterpillar - Colin vs. Cuthbert and a Look at How to Best Protect Cutting Edge Marks Inside and Outside the Trademark Arena, International Trademark Association Annual Meeting (2022)

  • Trademark Enforcement Strategies, Presentation to In-House Counsel at Life Sciences Company (2022)

  • Introduction to Foreign Trademark Prosecution, Foley & Lardner LLP (2022)

  • The Times They Are A–Changin’: What It Means for Your Brand, Foley & Lardner’s 17th Annual IP Conference (2021)

  • Advertising, Promotions, Right of Publicity, and Social Media Introduction, GC Bootcamp for e-retailer (2021)

  • What Firms are Doing: Strategies for the Retention of Women, Women’s Bar Association (2021)

  • Marketing, Advertising, and Promotions: Introduction and Issue Spotting, GC Bootcamp for Marketing Agency (2020)

  • Expanding Your Brand Through Social Media Influencers, Trade Association Presentation (2020)

  • Trademarks, Promotions, and Social Media Best Practices, Presentation to In-House Counsel and Marketing Teams at Consumer Goods Company (2020)

  • Failure to Function Refusals: What You Need to Know, Foley & Lardner LLP (2019)

  • Social Media and #Influencer Issues in the Fashion, Apparel & Beauty Industry, Foley & Lardner LLP (2019)

  • Working With Influencers: What Businesses Need to Know, Daily Business Review (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, Presentation to In-House Counsel and Marketing Teams at Consumer Goods Company (2018)

  • Recent Federal Trade Commission Decisions, American Bar Association Antitrust Division Monthly Update (2018)

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, pharmaceuticals and hospitality services
  • Regularly advises major pharmaceutical manufacturers on trademark and regulatory risks related to candidate drug names
  • Manages U.S. brand and copyright registration and enforcement for leading luxury goods provider
  • Manages buyer-side and seller-side IP due diligence for large corporate transactions
  • Drafts and negotiates a variety of agreements (e.g., coexistence, settlement, content development, licensing of characters, trademarks, music, software, photos, images and artwork)

Recognition

  • Recognized as a leader in the field of trademark law by World Trademark Review in its “WTR 1000 – The World’s Leading Trademark Professionals” directory (2016 – present)

Education

  • Stanford Law School (J.D., 2006)
    • Editor, Stanford Journal of Civil Rights and Civil Liberties
    • Co-chair of the Stanford Latino Law Students Association
  • Wellesley College (B.A., cum laude, 2003)

Professional Memberships

  • International Trademark Association
  • Hispanic National Bar Association
  • American Bar Association 

Admissions

  • District of Columbia
  • Maryland
  • United States District of Maryland
  • United States Court of Appeals for the Fourth Circuit