Maerker

Jenevieve J. Maerker

Counsel
Co-Chair, Trademark, Copyright & Unfair Competition Practice
Boston

I help companies develop, protect and enforce key brand and content assets to support their business goals.

Jenevieve Maerker focuses her practice on supporting companies both large and small in protecting and leveraging their intellectual property assets. She has extensive experience in domestic and international trademark and copyright strategy, including selection, clearance, registration, policing and licensing of marks and other brand assets.

Jenevieve’s intellectual property practice spans a broad range of industries, including pharmaceuticals, medical devices, cannabis, financial services, education, technology, food, fashion and consumer products. Her clients include companies at every stage of development, from innovative start-ups to established multinational corporations with global trademark portfolios.

In addition to trademark strategy, Jenevieve counsels clients on copyright, social media, right of publicity, false advertising and related issues. Drawing on her professional background in book publishing, she advises creators, publishers and users of copyright-protected content on publishing, licensing and registration matters.

When disputes arise, Jenevieve brings strong advocacy skills and pragmatism to enforcement matters on behalf of both plaintiffs and defendants. Jenevieve has experience litigating trademark, trade dress and copyright infringement and ownership disputes in federal court, and regularly handles opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board.

In addition to her intellectual property work, Jenevieve has significant experience in insurance coverage disputes and general commercial litigation, focusing in particular on counseling clients regarding insurance coverage for intellectual property matters.

Prior to joining Foley Hoag, Jenevieve served as a judicial law clerk for the Honorable Margot Botsford of the Massachusetts Supreme Judicial Court. Before studying law, Jenevieve spent several years in the editorial acquisitions and licensing department of an academic book publisher, where she was responsible for author contracts, permissions and copyright issues.

Education

  • Harvard Law School, J.D., magna cum laude, 2007
  • Emerson College, M.A., Publishing and Writing, 2001
  • University of Texas Austin, B.A., with highest honors, 1998

Bar and Court Admissions

BAR ADMISSIONS
  • Massachusetts
  • New York
COURT ADMISSIONS
  • U.S. District Court for the District of Massachusetts
  • U.S. Court of Appeals for the First Circuit
  • U.S. District Court of the District of Western New York
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. Supreme Court

Languages

  • Spanish
  • Norwegian

Experience

COUNSELING, PROSECUTION AND ENFORCEMENT
  • Secured clients’ trademark and trade dress rights through aggressive protection and enforcement strategies in an array of industries, including pharmaceuticals, medical devices, consumer products, food and beverage, publishing, entertainment, technology and financial services.
  • Responsible for over 1000 trademark applications and registrations in more than 60 countries around the world.
  • Handled global trademark portfolios for nationally recognized pharmaceutical, financial services, and medical device companies, including coordination with foreign associates in numerous jurisdictions.
  • Advised startup companies on brand selection and protection priorities and best practices.
  • Conducted extensive pharmaceutical name clearance projects for life sciences companies, including collaboration with regulatory counsel and branding consultants.
  • Counseled clients regarding copyright registration strategies and fair use.
  • Successfully responded to trademark office actions from the U.S. Patent and Trademark Office and overcame refusals to register based on a variety of issues. 
  • Successfully appealed refusals to register from the U.S. Copyright Office.
  • Oversaw trademark in-use investigations for clearance, enforcement and litigation purposes.
  • Successfully enforced clients’ trademark and copyright rights through demand letters, and responded to demand letters alleging infringement by clients.
LITIGATION AND DISPUTES
  • Litigated trademark, trade dress, and copyright infringement disputes in federal court.
  • Defended and prosecuted opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
  • Represented clients in successful mediations involving a variety of trademark issues, including trade dress and indigenous rights.
  • Obtained jury verdict of copyright infringement and maximum available damages in case involving copied greeting card designs.
  • Defended printing company in litigation involving contract and intellectual property claims based on use of font software.
  • Negotiated favorable resolutions of numerous trademark infringement claims and Trademark Trial and Appeal Board proceedings for clients in both plaintiff and defendant roles, and secured the benefits of those resolutions via thoughtful settlement agreements.
  • Participated in drafting two amicus briefs submitted to the U.S. Supreme Court during its 2015-2016 term.
  • Participated in representing a major research university in litigation in multiple jurisdictions relating to various life sciences technology licensing agreements.
  • Advised and represented policyholders in coverage litigation relating to liability and property insurance in federal and state courts, and negotiated with insurers to obtain coverage for defense of intellectual property infringement claims.
TRANSACTIONS
  • Managed due diligence for trademark and copyright portfolios on behalf of buyers and sellers in corporate transactions.
  • Drafted and negotiated trademark and copyright licenses and assignments, contractor agreements, sponsorship and co-branding agreements, work-for-hire agreements, and publishing contracts.
  • Assisted creators in clearing rights to copyrighted works for incorporation in new projects, including rights controlled by music publishers in the United States and abroad, news outlets, filmmakers, and others.

Publications

  • "Copyright at the Museum," Copyright & New Media Law (Spring 2017) 
  • “‘I’m with the Band’: Boston Guitarist Can Call Himself ‘Former Original Member’ without Infringing Trademark,” IP Litigator (Jan./Feb. 2017) 
  • “Trademark Infringement and Related Claims,” MCLE’s Business Torts in Massachusetts (2016 ed.) (with Nicole Kinsley and Daniel McFadden)
  • "One Vision,” exploring WIPO's proposed treaty on copyright exceptions for the visually impaired and what it could mean for rightsholders, IP Magazine (co-authored with Michael Boudett, Mar. 2013)
  • "Twitter’s Hard Lesson," Corporate Counsel Magazine (Jan. 2012)
  • "Harry Potter and the (Allegedly) Purloined Font," ASIA IP Magazine (Aug. 2011)

Honors & Involvement

HONORS
  • Listed in World Trademark Review (WTR) 1000 – The World's Leading Trademark Professionals, Bronze category in prosecution and strategy (2021, 2022) 
  • Recognized as a “rising star” in the field of intellectual property in Massachusetts Super Lawyers (2016, 2017)
  • Recognized as an “Up & Coming Lawyer” by Massachusetts Lawyers Weekly (2015)
INVOLVEMENT
  • Boston Patent Law Association, Copyright Committee, Co-Chair
  • Intellectual Property Owners Association (IPO), Copyright Law and Related Rights Committee, Vice Chair
  • International Trademark Association, Right of Publicity Committee, Member
  • Pharmaceutical Trade Marks Group, Member
  • Boston Bar Association Public Interest Leadership Program, Class of 2014-2015
  • The Copyright Society of the USA, Member
  • Boston Bar Association, Member
  • Supreme Judicial Court Law Clerks’ Society, Member
  • ONEin3 Boston Mayor’s Advisory Council, Alumna

Speaking Engagements

  • Moderator, “The Copyright Claims Board: What to Expect and How to Incorporate It into Your Practice,” Boston Patent Law Association Annual IP Symposium (2022) 
  • Panelist, “Friday Fundamentals Series: Basics of Intellectual Property Law,” Boston Bar Association (2022)
  • Panelist, “Developments at the U.S. Copyright Office: Establishing a Copyright Small Claims Tribunal,” Intellectual Property Owners Association Annual Meeting (2021) 
  • Guest Lecturer, “Trademark and Copyright Licensing Best Practices,” Northeastern University School of Law IP Co-Lab Clinical Course (2020) 
  • Speaker, “2019 Developments in Copyright Law,” Boston Bar Association’s 20th Annual Intellectual Property Year in Review (2020)
  • Panelist, “Copyright Takedowns and Shakedowns,” The Copyright Society of the USA, Boston Chapter (2019)
  • Panelist, “GC’s Role in Insurance: Your D&Os Might Not Actually Be Covered by Insurance if Your Company Gets Breached,” TechGC (2019)
  • Panelist, “Doing Business Online: Sources of Liability for and Response to Incidents Involving Misuse of Intellectual Property,” Massachusetts Continuing Legal Education (2018)
  • Moderator, "Protection for Fashions and Designs in the Age of 3D Printing and Star Athletica," Intellectual Property Owners Association Annual Meeting (2017) 
  • “Best Practices for Preserving Trademark Rights for Biosimilar Products,” American Conference Institute’s Seventh Annual Summit on Biosimilars (2016) 
  • “Insurance Coverage for Intellectual Property Disputes,” Boston Bar Association (2013)