Matthew Nigriny

Matt has more than 10 years of experience in intellectual property prosecution and litigation. He often focuses on trademark matters, helping clients with all aspects of the trademark lifecycle, from inception to registration and beyond, and providing clients with trademark counseling, prosecution, and enforcement advice, as well as overall trademark portfolio management. He counsels on trademark selection, including timing and distinctiveness; assesses clearance searches and performs relative risk analyses; strategizes and drafts responses to trademark office actions, including likelihood of confusion refusals, as well as those raising complex procedural and other issues; works through oppositions and cancellations, including drafting complaints and discovery requests and negotiating settlement; considers and advises on potential infringements both by clients and by third parties based on clients’ marks; drafts cease and desist letters and responses thereto; and counsels on and implements plans for online enforcement, including with respect to counterfeit websites and interfacing with online entities (i.e., social media companies) to resolve trademark infringement concerns.

Matt is also registered to practice before the US Patent and Trademark Office (USPTO) and counsels clients on patent prosecution and litigation. And he advises clients on clearance, registration, and management of intellectual property assets, as well as IP and technology licenses, transfers, and other agreements.

• Assists companies across industries in the clearance, registration, and maintenance of trademarks in the US and worldwide.
• Counseled large chemical company on worldwide trademark portfolio, which included working with foreign agents to address issues related to foreign refusals, managing complex multi-party refusals, and negotiating consent agreements and identification of goods and services (ID) amendments to achieve allowances of client applications.
• Prosecutes a broad range of patent applications, particularly in the areas of telecommunications and financial transactions, including related to blockchain and distributed ledger technology and artificial intelligence (AI).
• Performs intellectual property due diligence investigations for mergers and acquisitions.
• Handles discovery and prepares briefs, motions, and legal memoranda for complex IP litigation.
• Represented national lawn care products company in trademark enforcement matters.

• Selected as One to Watch for Intellectual Property Law and Litigation – Intellectual Property (2023-2024), The Best Lawyers in America