Photo, Mery Pimentel

Mery Pimentel

Associate
Baker & McKenzie LLP

Biography

Mery Pimentel is an associate in Baker McKenzie's Intellectual Property Practice Group in Dallas. Mery specializes in the management and enforcement of global trademark portfolios for clients in a variety of industries. She is routinely called upon to advise on various trademark issues in the context of domestic and cross-border corporate transactions.

Practice Focus

Mery focuses on global trademark portfolios and brand management services, including the selection and clearance of trademarks, trademark prosecution, licensing, opposition and cancellation proceedings, and enforcement and litigation. Mery’s litigation experience includes drafting complaints and answers to complaints, answering and serving discovery requests, and assisting with depositions. Mery’s practice further focuses on addressing issues in the context of corporate transactions involving intellectual property, including analyzing, negotiating, and preparing intellectual property-related provisions and agreements, conducting due diligence, and assisting with post-closing implementation and integration.

Representative Legal Matters

  • Counseled a Fortune 50 technology company that specializes in Internet-related products and services on the selection and clearance of trademarks worldwide.
  • Assisted a NYSE company specializing in the design and manufacture of a variety of labeling and functional products in managing a trademark portfolio that comprises thousands of trademark applications and registrations worldwide. 
  • Assisted a global multibillion dollar company with identifying gaps in trademark coverage worldwide and coordinating new filings in over 30 jurisdictions. 
  • Assisted an international company in its acquisition of brands and heat transfer technology from a leading global supplier of heat transfer equipment and related technology for the power generation industry. Advised the company on trademark due diligence and licensing matters, as well as negotiated and prepared intellectual property-related documents, including a trademark license agreement and assignment agreement.
  • Assisted a leading NYSE company specializing in water, hygiene, and energy technologies and services in its potential acquisition of a division of a Fortune 50 company specializing in pharmaceuticals, medical devices, and consumer packaged goods. Due diligence was conducted on a global trademark portfolio comprising approximately 2,000 trademarks, over 100 trademark agreements and documents, and a number of trademark disputes in several jurisdictions. 
  • Assisted a digital technology company in its acquisition of a leading genetics diagnostics company – valued at USD 1 billion. Analyzed and drafted intellectual property-related provisions and agreements, including Representations & Warranties and Disclosure Schedules.
  • Counseled a global manufacturer and distributor of pressure-sensitive adhesive materials and specialty products on trademark issues and recordal of assignments worldwide as part of a post-integration of inter-company license and coexistence arrangements. Successfully overcame refusals of trademark applications, obtained letters of consents, and recorded letters of consents, coexistence agreements, and/or assignment agreements worldwide. 
  • Assisted multiple companies with post-closing trademark issues, including recordal of assignments, license agreements, entity conversion and merger documentation, and releases of security interests both domestically and globally.
  • Represented a major footwear company and its parent holding company in a dispute with a former holdover franchisee after the former franchisee continued to operate and use the franchisor’s marks. 
  • Assisted a multinational restaurant company with enforcement of its trademark rights. Successfully stopped several restaurants from using a confusingly similar mark in connection with similar goods and services.

Professional Associations and Memberships

  • International Trademark Association (INTA) - Saul Lefkowitz Moot Court Competition, Member
  • Dallas Bar Association IP Section - Young Lawyers Committee, Member

Corporate Responsibility

  • Obtained trademark registrations for a non-profit Dallas-based organization focused on providing free respite care to children with special needs and drafting an education chapter of a published handbook for the homeless youth in Texas.

Admissions

  • New York~United States (2015)
  • New Jersey~United States (2014)
  • Texas~United States (2016)

Education

  • Northeastern University School of Law (JD) (2014)
  • Manhattan College (BA Government and Urban Affairs magna cum laude) (2010)

Languages

  • English
  • Spanish