Twenty-plus years prosecuting and litigating intellectual property across all four federal districts in Texas, including a deep practice before the Trademark Trial and Appeal Board — and most of the work happens out of public view.
Most federal intellectual property work happens in the years before anyone files a complaint. Patents get prosecuted, trademarks get registered, oppositions get answered, cancellations get litigated before the Trademark Trial and Appeal Board, and licensing disputes get resolved without ever appearing on a court docket. Erik J. Osterrieder, a Shareholder and Senior Attorney at Kearney, McWilliams & Davis PLLC in Houston, has been doing that quiet work for more than two decades.
A Trademark Trial and Appeal Board Practice in Texas
Osterrieder’s practice is unusually broad inside intellectual property. He has drafted and prosecuted hundreds of domestic and foreign patent, trademark, and copyright applications. He has lodged and defended against European patent oppositions and, more relevantly for Texas trademark owners, has litigated U.S. trademark oppositions and cancellations before the Trademark Trial and Appeal Board. He has handled reexaminations, reissues, post-issuance procedures, and appeals before both the Patent Trial and Appeal Board and the U.S. Court of Appeals for the Federal Circuit.
That TTAB practice matters because the Trademark Trial and Appeal Board is where most trademark disputes actually live. Federal court trademark litigation gets the press, but oppositions and cancellations make up the procedural bulk of contested U.S. trademark practice. Attorneys who can litigate fluently in both venues — and who know when to file federal first and move to suspend the TTAB proceeding under 37 C.F.R. § 2.117(a) — are a small subset of the bar.
TTAB practice is where most trademark disputes live. Federal trademark litigation gets the press; oppositions and cancellations do the procedural bulk of contested practice.
Federal Bar Admissions Across All Four Texas Districts
Osterrieder’s federal admissions cover the U.S. Western District of Texas, U.S. Southern District of Texas, U.S. Northern District of Texas, U.S. Eastern District of Texas, the U.S. Court of Appeals for the Fifth Circuit, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Patent & Trademark Office. He has litigated IP matters across all four federal districts in Texas. That breadth matters: trademark plaintiffs often need a counsel-of-record with admission in the specific district where the defendant or the infringing conduct is located, and prosecution counsel who can step into federal litigation without re-engaging a new firm.
Education: B.S. in Chemistry, cum laude, University of Louisville (1992); graduate studies in nuclear chemistry, University of California, Berkeley; J.D., University of Dayton School of Law (1999). Prior experience: Partner at Rao DeBoer Osterrieder PLLC.
Why a Mid-Size Texas IP Firm Matters
Kearney, McWilliams & Davis is a multi-office firm with locations in Houston, Dallas-Fort Worth, San Antonio, Denver, Midland, and Wyoming. The firm’s expertise spans corporate and business development, energy and natural resources, estate planning, immigration, intellectual property, labor and employment, real estate, and tax. The mid-size structure gives intellectual property clients access to cross-disciplinary support — corporate counsel for licensing transactions, employment counsel for trade-secret matters, energy counsel for technology-licensing in oil and gas — without the conflict-check and rate friction of an Am Law firm.
For Texas trademark owners weighing counsel for a contested matter — opposition, cancellation, federal infringement action, or a multi-front strategy that needs both — Osterrieder’s combination of prosecution depth, TTAB litigation experience, and four-district federal admission profile is the kind of resume that doesn’t turn up in a typical bar-directory search.
Contact
Erik J. Osterrieder, Shareholder — [email protected] — (888) 855-1276 x139 — Houston, Texas.
