Anne E. Yates
D: (678) 632-6933
- Contests & Sweepstakes
- Intellectual Property
- U.S. District Court for the Northern District of Georgia
- Franklin Pierce Law Center (now University of New Hampshire School of Law); J.D., 2003
- Georgia State University; B.A., Sociology, 1997
Large Law Firm Experience:
- Troutman Sanders LLP
- Adorno & Yoss LLP
- Arnall Golden Gregory LLP
Anne has practiced intellectual property law since 2003, following her passion developed in college. Anne has represented and continues to represent a variety of individuals, non-profits, and small and large companies in connection with every aspect of non-patent intellectual property law and sweepstakes and promotions law, including athletic equipment, apparel, and footwear companies, Internet companies, software companies, hosting providers, consumer goods manufacturers, food and beverage companies, restaurants, professional and celebrity chefs, recording artists, hospitals, and medical-related companies.
Anne routinely counsels clients on all aspects of domestic and international trademark and copyright matters. Anne assists clients with state, federal, and international trademark selection, clearance, registration, maintenance, and enforcement. Anne also assists clients with domestic and international trademark portfolio management, including overseeing application filings, prosecution, and maintenance, as well as inter partes and ex parte proceedings before the U.S. Trademark Trial and Appeal Board.
Anne manages international counsel, including coordinating the filing of multiple trademark applications in almost every nation with a trademark office and routinely conducts or manages domestic and international investigations concerning unauthorized third party trademark use. Anne also has substantial experience assisting clients with copyright-related matters, including federal copyright registration and enforcement. Anne also has substantial Internet and social media-related trademark and copyright experience, including domain name registration and maintenance and protection and enforcement of trademarks and copyrights, including takedown of infringing websites and web pages and takedown or recovery of infringing usernames. Anne also has substantial domain name dispute resolution experience, including an undefeated record with WIPO.
Anne served as trademark and licensing counsel for the world’s largest beverage company, in which capacity she routinely worked with domestic and international counsel to effectively manage and streamline one of the world’s largest trademark portfolios. Anne also reviews advertisements and other publications to determine intellectual property and regulatory compliance and the risk of challenge from regulators and competitors. Anne also routinely assists clients with federal and state trademark and copyright litigation, including settlement negotiations.
Anne also assists clients with I.P.-related documents and agreements, including drafting and negotiating licenses, assignments, and other ownership-related documents and agreements. Anne also routinely assists clients with business transactions involving intellectual property, including conducting due diligence to confirm the accuracy of claimed intellectual property asset ownership and validity.
In addition to Anne’s intellectual property experience, she also has extensive experience representing clients in connection with sweepstakes and promotions, including drafting Official Rules and related documents, registering and bonding sweepstakes, and reviewing sweepstakes and promotions-related marketing documents.
Anne also has significant in-house experience. Before law school, Anne served in a secondment capacity as an intellectual property paralegal for world’s largest package delivery company, where she developed her passion for intellectual property law. Additionally, Anne served in a secondment capacity as a trademark attorney for the world’s largest beverage company. Therefore, Anne understands and appreciates the obstacles frequently encountered by a company’s legal team working with the business team. Anne has assisted clients with creating and implementing solutions and procedures to increase proactive communication between legal and business teams in connection with launching new products, services, slogans, and promotions.
Anne has devoted a substantial amount of time serving the community in a legal and non-legal capacity, including counseling on a pro bono basis non-profits and individuals. Additionally, since 2003, Anne has served as a brief judge and oral argument judge for a national trademark law moot court competition. Anne is also a member of the State Bar of Georgia’s Trademark Committee and served as a member of the International Trademark Association’s Academic Committee. Anne also served as a Board member and Board Chairperson for a local non-profit theatre.
Anne was selected as a Super Lawyers 2014 Georgia Rising Star in the area of intellectual property.
Presentations & Teaching Experience:
- Panelist, “IP Protection for the Fashion Industry” – The Museum of Design Atlanta, November 2014
- Interview, Blackhorse v. Pro Football, Inc. and the effect the TTAB’s cancellation of the WASHINGTON REDSKINS trademarks could have on the Atlanta Braves- CBS Atlanta television interview- June 18, 2014
- Panelist, “What You’re Worth: How to Protect the Intellectual Property Rights in Your Designs” – Museum of Design Atlanta- June 11, 2014
- Panelist, “Risk Management Terms for Addressing Potential Intellectual Property Ownership Challenges and Infringement Claims: Clauses for Copyrights; Strategies for Navigating Risks in Data and Technology Transactions” – March 27, 2014
- Panelist, “INTA Career Panel in Trademark Law” – Mercer University School of Law – February 25, 2014
- Moderator, “Responsible Enforcement – How Not to Be Perceived as a Trademark Bully” – 2013 INTA annual meeting
- Panelist, “IP Issues in the Entertainment Industry” – John Marshall Law School (Atlanta) – 2012
- Moderator, “Social Media: A Trademark Administrator’s Perspective” – INTA roundtable – March 8, 2011
- Clayton State University, Adjunct Professor (intellectual property law), 2004-2005
- Former co-editor, “Troutman Sanders LLP Intellectual Property & the Law Newsletter”
- Author, “Don’t Fall Victim to Online Trademark Infringement”
- Author, “Fair Use or Fat Chance: Dispelling the Fair Use Myth in Educational Settings”
- Co-author, “Recent Developments in Trademark Law,” 2002-2006
- Co-author, “Connecting the Dots: Strategies for Effective Domain Name Portfolio Management”
Professional and Community Activities:
- 7 Stages Theatre, Chairwoman of the Board of Directors, 2009-2011
- Adorno & Yoss LGBT Affinity Group, founding member, 2008-2010
- Arnall Golden Gregory Diversity Committee, member, 2010-2011
- Franklin Pierce Law Center Admission Committee, member, 2001-2002
- Franklin Pierce Law Center Board of Trustees, student representative, 2002-2003
- Franklin Pierce Law Center Bookstore Board, member, 2001-2003
- Franklin Pierce Law Center Moot Court Board, President, 2002-2003
- Franklin Pierce Law Center Student Bar Association, President, 2002-2003
- Franklin Pierce Law Center Teaching Effectiveness Committee, class representative, 2000-2002
- International Trademark Association, member
- International Trademark Association Academic Committee, member, 2011-2013
- National LGBT Law Association, member
- Saul Lefkowitz National Moot Court Competition, brief judge, 2004-2007; oral argument judge, 2008-present
- State Bar of Georgia, member Intellectual Property Law Section and Trademark Law Committee
- State Bar of Georgia Young Lawyers Division Leadership Academy, member, Class of 2010
- Stonewall Bar Association, member and law student mentor
- Troutman Sanders Diversity Committee, member, 2004-2006
- Troutman Sanders Pro Bono Award (recognition for at least 50 hours of annual pro bono service), 2004-2008