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heather-m-barnes

Heather M. Barnes

Position
Partner
Locations
Cleveland, OH
D
216.696.3952
F
216.592.5009
Email
heather.barnes@tuckerellis.com
vCard
vcard
LinkedIn
LinkedIn

Heather Barnes is a registered patent attorney focusing on intellectual property matters, including the domestic and international prosecution of patents, trademarks, and copyrights.

Heather values learning every client’s business to align their intellectual property strategy with tactical business goals. Her undergraduate degree in mechanical engineering allows her to both understand clients’ technology and clearly communicate to all parties the best strategy for protecting it. Her management of intellectual property portfolios helps clients move projects forward and properly allocate financial resources.

Heather manages extensive domestic and international patent and trademark portfolios, assists in-house counsel with strategic decisions, and provides analysis for risk assessment on pre-litigation issues. She also routinely provides intellectual property advice for corporate transactions, including mergers and acquisitions, license agreements, intellectual property policies, and joint development agreements. As a result of her involvement in the start-up community, Heather works with independent entrepreneurs and corporate clients seeking alternative revenue streams by shepherding new innovations from conception to commercialization.

Heather is ranked in WTR 1000, where one client comments that she “assists our company with many trademark matters, including potential and actual infringement matters, and advises on trademark prosecution worldwide. She is easy to communicate with and can explain trademark processes and recommendations to individuals who may not be experienced or experts in the field. She is also available on our schedule and can assist with matters even on short notice. Her knowledge of trademarks in the US and worldwide is exceptional.”

Heather is a soccer mom to three children. She and her husband Jerry love spending time with their kids, family, and friends and especially enjoy hiking in Cuyahoga Valley National Park and the Cleveland Metroparks.

Education
Ohio Northern University Pettit College of Law (J.D., with distinction, 1999); Law Review, Managing Editor; Editor's Award; The Willis Society (Top 10%); Phi Kappa Phi (Top 10%); National Association of Women Lawyers, Outstanding Law Student Award
The University of Akron (B.S.M.E., 1996)
State Admissions
Ohio, 1999
Federal Admissions
United States Patent and Trademark Office
United States District Court, Northern District of Ohio
Service Areas
Intellectual Property
Patent Procurement
IP Business Strategy & Agreements
Copyright Law
Trademarks
Technology Transfer
Health & Life Sciences M&A Transactions
Educational Institutions
Health & Life Sciences
Commercial Contracts
  • Represented a consumer products company in its domestic and foreign intellectual property matters – including procurement of patents and trademarks, freedom to operate opinions, license agreements, model releases, and enforcement of intellectual property rights – for exercise equipment and other home goods sold through ecommerce websites and infomercials
  • Conducted a seizure of counterfeit goods with U.S. Marshals in Compton, California, in a case against an importer seizing hundreds of counterfeit fitness products
  • Developed global intellectual property strategy for a manufacturing company to ensure new products were protected quickly in foreign markets and in the United States
  • Initiated an intellectual property program for capturing and protecting innovation for a university located in Ohio

Speaking Engagements

  • “Commercial Contracts: The Intersection of Business and Intellectual Property for Your Transaction,” Tucker Ellis In-House Counsel Summit (October 2023)
  • “Building Your Brand: Finding, Establishing, and Growing Your Network,” INTA 2023 Leadership Meeting, Houston, Texas (November 2023)
  • “Mid-Career Motivation: How to Stay Engaged and Inventive in the Ever-Changing Legal Profession Workshop,” INTA 2022 Leadership Meeting, Miami, Florida (November 2022)
  • “Careers in Intellectual Property Law,” Cleveland-Marshall College of Law, Cleveland, Ohio (November 2022)
  • “Corporate IP Management Roundtable: KPI’s for Effective Corporate IP Management and Operations,” Moderator (August 2022)
  • “Survey of Trademark Laws and Updates Around the World,” 23rd Annual Symposium on Intellectual Property Law & Policy, The University of Akron (March 2021)
  • “Trademarks, the Trademark Modernization Act, and a Day In the Life of an IP Attorney,” Case Western Reserve University School of Law, Student Intellectual Property Law Association (March 2021)
  •  “Inquire! Innovate! Invent!”, The University of Akron (November 2020)
  • “Damages, Generic Terms, and Counterfeiting: What Has 2020 Brought So Far, and What Is Yet to Come,” Trademark SLG Spotlight Call, DRI’s IP Litigation Committee (June 2020)
  • “Between the Lines IP: Best Practices for Enforcing and Protecting IP Rights in Online Marketplaces, Industry Bodies, Contracts, and Other Alternate Venues,” 22nd Annual Symposium on Intellectual Property Law & Policy, The University of Akron School of Law, Akron, Ohio (March 2020)
  • “I & E Committee Stories,” Innovation and Entrepreneurship Day, Leadership Akron, Akron, Ohio (November 2019)
  • “Intellectual Property Rights and Mechanical Engineering Considerations in View of the US-China Trade Tension,” Conference for IP Managers of Foreign-Related Enterprises, Guangzhou, China (October 2019)
  • “Avoid the IP Landmines in Corporate Transactions,” Cleveland Intellectual Property Law Association, Cleveland, Ohio (April 2019)
  • “Protecting Your Innovation from A to Z,” Tucker Ellis In-House Counsel Summit (October 2018)
  • “Protecting Your Ideas,” Flight, Launch League, Akron, Ohio (December 2016)
  • “Copyright Basics,” Akron Public Library, Akron, Ohio (September 2016)
  • “Trademark Issues that Affect Every Business Owner,” Steubenville Bar Association, Steubenville, Ohio (August 2009)
  • “Networking – Making Relationships Click,” “I Am Woman Hear Me Roar – Making Your Voice Heard,” and “Making a Difference in Your Community,” The Ohio Conference for Women, Cincinnati, Ohio (May 2009)
  • “How to Search Like a Pro: Strategies for Legal Research on the Web,” National Business Institute, Akron, Ohio (May 2009)
  • “Strategies for Professional Success,” Ohio Diversity Council Conference, Columbus, Ohio (November 2008)
  • “Patent, Trademark and Copyright Basics for Entrepreneurs,” Ashland University, Ashland, Ohio (September 2007)
  • “Basic Intellectual Property Strategies Project Bootstraps,” Jefferson Community College, Steubenville, Ohio (April 2006)

Publications

Media

  • “Protecting Your Intellectual Property Takes a Conscious Effort,” Smart Business Akron/Canton (March 2013)
  • WTR 1000
    • United States: Ohio (2024)
  • Ohio Super Lawyers® (2015–2020, 2022–2024)
  • Ohio Super Lawyers Rising Stars® (2006, 2007, 2010–2012)
  • Martindale-Hubbell® AV Preeminent® Peer Rating
  • Top Rated Lawyer in Intellectual Property Law (ALM) (2018)
  • International Advisory Experts Award (2018)
    • Intellectual Property, Ohio
  • Cleveland’s Legal Leaders™, Top Rated Lawyer (2013)
    • General Practice
    • Intellectual Property
    • Internet Law
  • Barbara Mathews Award, Leadership Akron (2013)
  • “Most Powerful & Influential Women in Ohio,” Ohio Diversity Council (2008-2009)
  • “30 for the Future,” Young Professionals Network, Greater Akron Chamber (2008)
  • Cleveland Intellectual Property Law Association
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association
    • Women in IP Law Committee
      • Co-Vice Chair (2022, 2023)
      • Secretary (2021)
  • International Trademark Association
    • Professional Development Committee (2022–2025)
      • Leadership Meeting Project Team, Co-Lead (2022–2025)
  • Ohio State Bar Association
  • Akron Bar Association
  • Akron Bar Foundation, Fellow
  • Leadership Akron, Class 29
    • Innovation and Entrepreneurship Planning Committee
  • Portage Path Behavioral Health, Board of Trustees
    • Treasurer (2022, 2023)
    • Marketing Committee, Chair
  • Tucker Ellis Women’s Initiative
    • Co-Chair (2023–present)
  • Green Community Leadership Initiative Design Committee
  • National Super Kids Classic, Board of Directors
  • Torchbearers
    • Past President and Vice President
    • Torchbearer College Committee, Former Chair
  • ArchAngels Deal Flow Committee for Entrepreneurs
  • Ask a Patent Attorney, Akron Public Library
  • University of Mount Union, Raider Tank Judge for Entrepreneurial Students