Mari-Elise Paul is a Member of McBrayer PLLC’s intellectual property practice. With nearly a decade and a half of experience, she assists clients with every aspect of intellectual property, from clearance and prosecution to enforcement and litigation. Mari-Elise’s practice has provided her with unique opportunities to develop an understanding and appreciation for the business considerations involved and intertwined with intellectual property protection and enforcement, and she delivers effective strategies for identifying, protecting, and policing her clients’ assets.  Mari-Elise’s practice heavily focuses on contract and license negotiation and enforcement and management of supply chain and energy transactions.

A major part of Mari-Elise’s practice involves developing and managing global trademark portfolios. This includes conducting, reviewing, and analyzing global clearance searches, counseling clients regarding the results, and ultimately developing and implementing worldwide filing and prosecution strategies, all while assessing risk of use of trademarks. She understands, however, that reasonable solutions cannot always be found without conflict. When that occurs, she assists in enforcement efforts, including before the Trademark Trial and Appeal Board and in federal court. She drafts, reviews, and negotiates licenses, software agreements, and other forms of agreements involving intellectual property assets. She also advises on data privacy regulation compliance. 

Mari-Elise serves industries as varied as energy, fashion, automotive, and consumer goods, all of whom need effective counsel to manage and protect their intellectual property and assets.

She lives in Louisville with her husband Bruce, daughter, two step-twins, and their puppy Moxie. In her spare time, Mari-Elise enjoys practicing yoga, cooking, gardening, reading, and traveling.

MORE THAN MCBRAYER

Mari-Elise serves on the Board of Norton Children's Foundation, an opportunity for which she is extremely grateful. Her daughter is a heart transplant recipient who faced an extremely challenging first year of life, so serving on this Board provides her with the opportunity to give back to Norton Children's Hospital in some small way.  She is also a member of the Wade Mountz Heritage Society with Norton Children's Hospital. It is her mission as a Board member to ensure that any family experiencing an intensive care unit stay has the resources and support they need during their stay.

Capabilities, Successes, and Assignments

• Develops strategies for protection and enforcement of intellectual property for companies.
• Conducts clearance searches for potential trademarks and advises on use and registrability of marks.
• Negotiates commercial transactions for technology and energy companies.
• Leads a team of attorneys working with a large energy company on the management, review and negotiation of supply chain agreements, working to make the review process operate more effectively and efficiently.
• Assisted with obtaining a defense judgment, first in a partial summary judgment ruling and second after a bench trial of copyright infringement claim, to help a major web printing provider prevail on its immunity defense under the Digital Millennium Copyright Act.
• Assisted with obtaining dismissal of a plaintiff’s trademark claims against an online platform by showing that a plaintiff fails to state a claim upon which relief is available where third party uploaders to the platform are the ones “using” the trademark as contemplated under the Lanham Act.
• Obtained a reversal of a refusal to register a wine producer’s marks before the Trademark Trial and Appeal Board on the basis that the marks are not confusingly similar to other marks that had formed the basis of the refusal.
• Currently defending a female entrepreneur’s trademark rights in what can aptly be characterized as a David vs. Goliath legal battle. This business owner created a product which made brandy from fire-smoked grapes and concocted the ideal trademark for that product. She won her first battle, an appeal to the United States Patent and Trademark Office's Trademark Trial and Appeal Board on a refusal to register the mark. Now, she faces a challenge from the Napa Valley Vintner’s Association.
• Prosecution of trademark and copyright applications
• Litigation of trademark, copyright, patent, and trade secret matters
• Enforcement of trademark rights
• Domain name dispute proceedings
• Intellectual property licensing

Primary Practice

Additional Practice Experience

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