Katherine P. Califa
Partner
Katherine P. Califa is an intellectual property lawyer with extensive experience helping companies clear, protect, license, enforce, and strategically manage their valuable assets, including brands, packaging, product shapes, and creative works. She is a partner in the firm’s Trademark, Copyright, & Advertising Practice and the Health Care & Life Sciences Sector and serves as Senior Chair of the firm’s Latino Attorney Affinity Group.
Katherine works with clients in all industries and has significant experience in the pharmaceutical, medical device, food & beverage, and financial services industries, in particular. Katherine has helped clients secure and enforce their brands in over 100 countries around the world.
Katherine’s practice includes:
- Developing practical, 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
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.
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, among others
- 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)
- Develops IP policies and internal processes to capture and protect new intellectual property development and reduce legal risk for multinational companies
Awards and 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)
Affiliations
- International Trademark Association
- Hispanic National Bar Association
- American Bar Association
Presentations & Publications
- Limitations In Seeking Trade Dress With Patent Protection, IPLaw360 (2023)
- Building Distinction in Architectural Trade Dress, American Law Institute Continuing Legal Education’s The Practical Real Estate Lawyer (2023)
- Supreme Court’s Jack Daniel’s Decision Clarifies First Amendment Parody Defense in Trademark Infringement Cases, Publication, Foley in Fashion Blog (2023)
- Pharmaceutical Regulatory Process and Trademark Clearance, Presentation to Legal Department at Life Sciences Company (2023)
- Business Value of Intellectual Property, Presentation to Business Leads at Manufacturing Company (2023)
- 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)
Foley Advises HonorHealth in Acquisition of Steward Health Care Facilities
Foley & Lardner LLP represented HonorHealth, a nonprofit health care system serving over five million people in the Phoenix and Scottsdale areas, in its acquisition of multiple health care facilities from Arizona-based Steward Health Care.
Foley Represents MOGAS Industries in Sale to Flowserve
Foley & Lardner LLP served as legal advisor to MOGAS Industries, a privately held, Houston-based provider of mission-critical severe service valves and associated aftermarket services, in its sale to Flowserve Corporation.
Foley Represents ARCHIMED in Acquisition of Majority Stake in Innovative Skincare Company Cellese
Foley & Lardner LLP represented global private equity health care specialist ARCHIMED in its acquisition of a majority stake in Cellese, a developer of innovative topical dermo cosmetics sold under the AnteAGE brand name.
Trademark Primer: Proactive Strategies for Avoiding Disputes and Consumer Confusion
By proactively assessing trademark risks and taking steps to avoid infringement, emerging companies save time and money.
Understanding the Risks Associated with Social Media Marketing
Healthy food and beverage companies frequently use social media to advertise. When used appropriately, social media campaigns can be incredibly effective tools to help emerging F&B companies reach target consumers, create buzz, and generate sales.
World Trademark Review Recognizes Foley Attorneys and Jurisdictions in 2024 Edition of WTR 1000: The World’s Leading Trademark Practitioners
Ten Foley & Lardner LLP attorneys and four firm jurisdictions have been recognized in the 2024 edition of the World Trademark Review 1000: The World’s Leading Trademark Practitioners.