Grimes and Battersby Attorneys

ATTORNEYS

Charles W. Grimes

GRIMES Chuck is the firm's Managing Partner, and has been practicing law since the mid-seventies. He received a B.S. degree in Engineering Mechanics from the Pennsylvania State University and a J.D. degree from the University of Denver Law School. He had previously clerked at Reilly & Dorr in Denver and was an associate at the Chicago office of Neuman, Williams, Anderson & Olson. He was Trademark Counsel at Gulf + Western Industries in New York and an associate with Kane, Dalsimer, Kane in New York before founding the firm.

Chuck has worked extensively in all facets of intellectual property law. He has participated in major patent and trademark litigations including the notable Berkey v. Kodak patent antitrust action. He has managed the worldwide trademark portfolios of leading consumer products companies and negotiated and drafted some of the most significant merchandising license agreements of the past decade.

He has written a number of articles and books in the intellectual property and licensing field and spoken on the subject before such groups as NYIPLA, Stamford Regional Bar Association, New York Toy Fair and at the New York Licensing Show. He has been an Adjunct Professor at Sacred Heart University in the paralegal program.

Chuck has been a member of the editorial board of the Trademark Reporter and has been active in the American Bar Association. He is admitted to practice in Illinois, New York and Connecticut and as a patent attorney before the United States Patent & Trademark Office. grimes@gandb.com

Gregory J. Battersby

BATTERSBY Greg is the firm's co-founder and has practiced patent, trademark and licensing law for nearly four decades. He received an A.B. degree from Seton Hall University with a concentration in biology and chemistry and a J.D. degree from Fordham University School of Law where he was an editor on the Fordham Urban Law Journal. He had previously worked at Grumman Aerospace Corp. in R&D on the Apollo spacecraft and F-14 programs and clerked at both the U.S. Attorney’s Office and at Morgan & Finnegan in New York. He was also an associate at Fitzpatrick, Cella, Harper & Scinto and Senior Patent Counsel at Gulf + Western Industries, both in New York before co-founding the firm with Chuck Grimes.

Greg has extensive experience in all facets of intellectual property law, including litigation, prosecution and transactional matters. He has substantial experience in big case litigation, including patent and product liability actions involving hundreds of millions of dollars. In the transactional area, he has negotiated and drafted thousands of license agreements in the product development, patent, trademark and merchandising fields and has substantial experience in mergers and acquisitions. He has been qualified on more than thirty occasions as an expert witness on licensing and valuation issues.

Greg is a prolific author and lecturer, having written more than twenty-five books, fifty articles and edits the Licensing Journal and the IP Litigator. He has also given more than 175 talks on IP and licensing issues before such diverse groups as the Practicing Law Institute, International Trademark Association, International Licensing Industry Merchandisers’ Association, ("LIMA"), American Intellectual Property Law Association ("AIPLA"), Licensing Executive Society ("LES"), Franklin Pierce Law School, UCONN Law School, Quinnipiac Law School, New York Intellectual Property Law Association ("NYIPLA"), Thomson & Thomson Forums, Law Journal Seminar Press, Bar Association of the City of New York, Association of Collegiate Licensing Administrators, National Association of College & University Attorneys, Connecticut Bar Association, Law Society of Upper Canada, Toy & Game Inventor Forum, Connecticut Trial Lawyers Association, Insight Licensing Forums and the New Jersey Patent Law Association. For many years he has moderated and spoken at the New York Toy Fair and the New York and Las Vegas Licensing Show as well as at a number of international licensing shows and conferences. For the past five years, he has been named a "Super Lawyer" in their Connecticut, Corporate Counsel and New England editions for intellectual property matters.

Greg has been General Counsel to LIMA since 1995 and since 1999 has been a member of its Executive Committee and chairman of its Education Committee. Greg was inducted into the LIMA Licensing Hall of Fame during the 2009 Licensing Show in Las Vegas. To view his induction ceremony, including the tribute video and acceptance speech, click LIMA. He has also been Publications Chairman of both the AIPLA and NYIPLA as well as a member of the Board of Directors and officer (vice-president and treasurer) of the NYIPLA.

His avocation for baseball led to his invention of a state of the art baseball pitching simulator that is now used by a number of Major League Baseball teams including the New York Yankees, Cleveland Indians, Pittsburgh Pirates etc., players, Olympic teams, major colleges and commercial batting cages. He is a named inventor on twelve patents covering the product and serves as CEO of the company that he created and built called ProBatter Sports, LLC which manufactures the simulator. To read more about ProBatter Sports, click ProBatter

Greg is admitted to practice in both New York and Connecticut and as a patent attorney before the United States Patent & Trademark Office. gjbattersby@gandb.com

Edmund J. Ferdinand III

FERDINAND Jed is a partner with the firm practicing in the areas of intellectual property litigation, prosecution and licensing, and entertainment law. During his fifteen-year career Jed has litigated intellectual property and related cases in federal trial and appellate courts all across the country and in international arbitration proceedings. He has won significant victories for famous brands such as Oprah Winfrey’s "O the Oprah" magazine and for Pepsi’s SoBe brand beverages. A sample of Jed’s representative cases for the past year alone include:

● Counsel for celebrity in action seeking $100 million in damages arising out of alleged breach of license agreement for apparel -- Tarrant Apparel Group v. Jessica Simpson, et al., N.Y.S. Supreme Court.

● Counsel for German toy manufacturer in a three-week arbitration arising out of breach of license agreement involving technical, accounting and sales issues -- Lernell-Mass v. Zapf Creation, A.G., AAA Arbitration.

● Counsel for defendants in action alleging trademark infringement arising out of unauthorized use of competitor name as keyword to generate sponsored links in Google Adwords program -- True & Dorin Medical Group v. Medical Hair Restoration, S.D.N.Y.

● Counsel for plaintiff in action alleging trademark, trade dress and copyright infringement of plush toy product line -- K&M International Inc. v. Rhode Island Novelty, Inc., Dist. of Rhode Island.

Jed also has significant experience outside of litigation. He regularly advises clients regarding the acquisition and exploitation of intellectual property rights and he has negotiated and drafted numerous product licensing and merchandising agreements with some of the largest companies in the world across a diverse range of product lines. He also handles the U.S. and international trademark filing programs for famous trademarks. In the field of entertainment, Jed has negotiated production deals and other contracts with a variety of networks and record companies.

Jed has been a featured speaker on intellectual property and licensing matters at numerous trade shows, including the annual Licensing Show and American International Toy Fair in New York, before professional organizations and at law schools. He is also a member of the faculty of LIMA’s Certificate of Licensing Studies Program.

Jed received a B.A. degree with honors from Union College and a J.D. degree, cum laude, from Tulane Law School. Prior to joining Grimes & Battersby in 1999, he was formerly associated with the international law firms of Chadbourne & Parke, Brobeck, Phleger & Harrison, and Graham & James.

Jed is a member of the Advisory Board of two publications related to the field of intellectual property -- The Licensing Journal and IP Litigator -- and he is on the Supervisory Board of the publication Inventors Digest for Kids. He also writes the "Trademark Litigation" monthly column for the IP Litigator.

Jed is active in local civic matters in his hometown of Weston, Connecticut. He is a member of the Conservation Commission of the Town of Weston and he is on the Board of the Stoneybrook Owners Association. He also coaches his children’s baseball and softball teams.

He is admitted to practice in Connecticut, New York, the District of Columbia and in numerous federal courts, including the Second, Fourth, Ninth and Federal Circuit Courts of Appeal. ferdinand@gandb.com

Russell D. Dize

DIZE Russ is a Partner with the firm specializing in intellectual property litigation, trademarks and licensing. He routinely advises clients regarding intellectual property disputes, protection of trademarks and copyrights and the negotiation of license agreements. In addition, he regularly represents clients in disputes before various state and federal courts on a wide range of issues in addition to trademark disputes before the United States Patent and Trademark Office.

Since joining the firm, Russ has been actively involved in representing and advising toy inventors and toy companies with regard to disputes over the submission of toy ideas. He was intimately involved with Design Innovation, Inc. v. Fisher-Price, Inc. (Dist. of Conn. 2006), wherein the toy inventor clients were awarded a $1.7 million jury verdict in a case involving misappropriation of a toy concept. In that case, he conducted and defended more than twenty-five depositions over several years. In a similar dispute, he obtained a six-figure settlement on behalf of another toy inventor without having to commence litigation.

Russ has also been actively involved in the enforcement of trademark rights against infringers across a wide spectrum of goods and services. He has represented clients in numerous trademark proceedings before the United States Patent and Trademark Office to oppose or cancel the trademark applications or registrations of various parties. He has also been involved in the enforcement of copyright rights against infringers, particularly with regard to toy and game products, both in the U.S. and abroad.

He received a B.B.A. degree from James Madison University and a J.D. degree from the University of Baltimore (cum laude). During law school, he worked as a Legislative Aide to Senator Richard F. Colburn of the Maryland General Assembly where he performed legal research concerning possible legislation.

Russ is admitted to practice in Connecticut and numerous federal courts, including the United States District Courts for the District of Connecticut, Southern and Eastern Districts of New York and the District of Colorado. dize@gandb.com

Jim McLaughlin

McLaughlin Jim is a Partner with the firm and has been a registered patent attorney since 1993. He provides invention counseling and patent prosecution services for our clients in both the US and many foreign countries. He assists our clients in determining the best approach to protect their new ideas as they come to market. He also evaluates competitor products for possible infringement of our client’s patents. Jim is a former Patent Examiner with the U.S. Patent and Trademark Office specializing in the field of display systems.

Jim received his dual Bachelor of Science degrees in Electrical Engineering and Computer Science from the University of Connecticut focusing on microprocessors, computer languages, and operating systems. After graduating from UCONN, he worked in the field of flight simulation, writing software code for various types of aircraft, mostly in the military tactical arena, working for Singer/Link Flight Simulation and Sikorsky Aircraft. His 10 years of work experience provides valuable knowledge of the engineering world.

Jim received his Juris Doctor (cum laude) from the Quinnipiac University School of Law. While at Quinnipiac, he was a Law Review Member, and received the American Jurisprudence Awards for Legal Skills I; Property; Civil Clinic, and Acquisitions and Mergers.

Jim also worked for Helgott & Karas in New York City prosecuting many electronic inventions for Asian companies trying to obtain patents in the US such as Sony, Panasonic, Sanyo, and Samsung. He also served as Intellectual Property Counsel to Ascom Hasler, a Swiss company providing oversight for all aspects of their intellectual property.

Jim is a registered Patent Attorney before the United States Patent & Trademark Office, a registered Patent Agent before the Canadian Intellectual Property Office, and also admitted to practice law in both Pennsylvania and Connecticut. McLaughlin@gandb.com

Susan M. Schlesinger

SCHLESINGER Susan is a Senior Associate with the firm. Since joining the firm, she has been involved in several trademark and patent litigations. She also prosecutes trademark applications and routinely assists clients with opposition and cancellation proceedings before the U.S. Patent and Trademark Office. She is integrally involved with anti-counterfeiting measures and the enforcement of the trademark rights of clients. Susan also assists clients with intellectual property transaction matters such as licensing agreements and assignment agreements.

Susan received her B.A. degree with a double major in English and Fine Arts with a concentration in theatre from Fairfield University. She went on to work for several years in the entertainment industry at Actors’ Equity Association and handled various performance-related labor issues.

She received both a J.D. and an LL.M. in Intellectual Property from the Benjamin N. Cardozo School of Law. While at Cardozo, she was awarded a Howard M. Squadron Fellowship and worked at the Stanhope Centre for Communications Policy Research in London. She was also a legal intern for Westwood One, Inc., the Entertainment Software Rating Board and Ballon Stoll Bader & Nadler, P.C. in New York.

Susan is admitted to practice in Connecticut, New York and several federal courts including the District of Connecticut, Southern District of New York and Eastern District of New York. schlesinger@gandb.com

Jessica S. Rutherford

rutherford Jessica is an Associate with the firm. She regularly counsels clients on the protection, enforcement and licensing of their intellectual property rights. She has been involved in countless trademark opposition proceedings and has won two appeals before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. In addition, she has represented clients in both copyright and trademark infringement disputes in federal and state courts across the country. Jessica also routinely assists clients in negotiating licensing and agent agreements.

Jessica’s specialty is internet law, advising clients on best practices with regard to web site development and representing clients in domain name dispute proceedings. She writes the monthly "Internet and Technology" column for The Licensing Journal.

Jessica received an A.B. (with honors) from Brown University with a dual concentration in cognitive science and Russian language and literature. After spending a year working for the Russian Academy of Sciences in Moscow, she went on to work in the book publishing industry. Jessica honed her licensing and negotiation skills while working in the subsidiary rights departments of several major publishers, advising foreign publishers on the U.S. book market as a foreign scout, and representing authors as a literary agent.

She received her J.D. from Benjamin N. Cardozo School of Law with a concentration in intellectual property law. During law school, she interned with Southern District of New York Judge Deborah A. Batts. In addition, Jessica was a legal intern at Wolff & Godin, LLP and Classic Media, Inc.

Jessica is admitted to practice in Connecticut, New York and numerous federal courts, including the United States District Courts for the District of Connecticut, Southern District of New York, and Eastern District of New York. (Languages: Russian, French, Italian and Hebrew.) rutherford@gandb.com

Robert C. Beasley

Bob is counsel to the firm. He received his B.A. degree from Wabash College and a J.D. degree from Indiana University School of Law. He has served and will continue to serve as General Counsel to Paws, Inc. in Albany, IN.

Bob has extensive experience in the licensing and merchandising area, having played an instrumental role in the design and implementation of the Garfield merchandising program, including supervising the enforcement activities both domestically and internationally. He is admitted to practice in Indiana. beasley@gandb.com