Kimberly S. Grimsley, Esq.

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Kimberly S. Grimsley is a partner at Oliver & Grimsley.  Ms. Grimsley’s practice concentrates on intellectual property matters, including trademark, copyright, licensing, software, advertising, social media marketing and business law matters, including corporate formations and contract review.

Ms. Grimsley regularly counsels clients on their intellectual property rights.  For trademarks, she advises and assists clients through the entire trademark process, beginning with assessing the availability of a mark and continuing through the application process, obtaining the registration and ultimately maintaining the registration and assisting client’s in policing their trademark rights.  Her trademark practice is not limited to the United States, but includes trademark protection internationally as well.

Ms. Grimsley has resolved numerous trademark disputes efficiently without litigation when possible by negotiating various co-existence, consent, and licensing agreements to protect clients’ marks in a cost-effective manner.  When litigation is required, she has handled numerous opposition and cancellation proceedings before the Trademark Trial and Appeal Board.  Her experience also includes counseling clients on domain name issues and handling matters through the Uniform Domain Name Dispute Resolution Policy UDRP and under the Anticybersquatting Consumer Protection Act.

In addition to intellectual property matters and business law matters, Ms. Grimsley has counseled business clients on on matters concerning compliance under HIPAA and the HITECH Act.  She has handled a variety of trial and appellate matters in State and Federal court and various administrative agencies.  Her litigation practice has included areas such as intellectual property, financial services, tax, property, construction, employment, energy and environmental law.

Prior to Oliver & Grimsley, Ms. Grimsley was a partner at Bowie & Jensen in its Transactional/Intellectual Property departments.  Prior to Bowie & Jensen, Ms. Grimsley was an associate at Gordon, Feinblatt, Rothman, Hoffberger & Hollander, LLC, where her practice included transactional intellectual property matters and litigation.  Kim was also a judicial clerk for the Honorable Alan M. Wilner of the Maryland Court of Appeals.

Kim has been recognized as a legal “Rising Star” by the Super Lawyers publication.

Law Licenses

  • Admitted to Maryland State Bar in 2000.
  • Court of Appeals, Maryland

Education

  • Juris Doctorate, University of Baltimore School of Law, magna cum laude, 2000
    • Heuisler Honor Society
    • Associate Editor, University of Baltimore Law Review
  • Bachelor of Science, Stevenson University, 1992

Honors, Affiliations and Memberships

  • Top Trademark Firms, Intellectual Property Today (2014)
  • Best Law Firms in Maryland, U.S. News & World Report (2014, 2015)
  • Maryland Super Lawyers, Rising Star (2010)
  • Counsel, Better Business Bureau of Greater Maryland
  • Membership Board of American Bar Association, Intellectual Property Law Section (2011)
  • Chair, American Bar Association Intellectual Property Section/Women in the Profession Committee (2009-2010); Vice-Chair of Committee (2008-2009)
  • Member, Maryland State Bar Association (MSBA) Intellectual Property Section
  • Secretary, Maryland State Bar Association (MSBA) Intellectual Property Section (2013-2014)
  • Member, Baltimore County Bar Association
  • Member, Harford County Bar Association (2008-2013)
  • Advocate, National Aquarium of Baltimore
  • Campaign Advocate, Lawyers Campaign Against Hunger (2008-2013)

Pro bono and Community Service

  • Pro Bono Legal Services for Center For Urban Families
  • Chesapeake Figure Skating Club
  • Former Advocate, Baltimore National Aquarium

Published Cases

  • Carter v. Aramark Sports and Entertainment Services, Inc., 153 Md. App. 210, 835 A.2d 262 (2003);Represented Aramark Sports and Entertainment Services, Inc.(employment)
  • State Department of Assessments and Taxation, et al. v. Consolidation Coal Sales Company, 382 Md. 439, 855 A.2d 1197 (2004); Represented City of Baltimore (tax)

Work Experience

  • Partner and Associate, BOWIE & JENSEN, LLC (January 2008 to April, 2013)
  • Associate, GORDON, FEINBLATT, ROTHMAN, HOFFBERGER & HOLLANDER, LLC (September 2001 – December 2007)
  • Judicial Law Clerk for THE HONORABLE ALAN M. WILNER, Maryland Court of Appeals (August 2000 – August 2001)
  • Law Clerk, ECCLESTON & WOLF, P.C. (January 1999 – June 15, 2000)
  • Paralegal, BOWIE & JENSEN, LLC (March 1990 – December 1998)

Courses & Seminars Taught

“Engineering Your Image – Why It Matters, How to Stand Out & Stay Out of Trouble” – Speaker and Presenter at the BBB Pillars of Trust Leadership Conference, October 16, 2014.

“Copyright Issues for Cake Decorators”, Maryland Chapter International Cake Exploration Societe, July 2104.

“Intellectual Property Issues for Women Business Owners”– Speaker and Presenter at Time for Mom-Me Retreat & Experience – Nov. 1, 2013.

“Social Media Marketing Law” – Presentations to:

  • Systems Alliance SiteExecutive CMS User Conference – Nov. 2011;
  • Better Business Bureau of Greater Maryland Members – Nov. 2011;
  • Harford County Chamber of Commerce – Oct. 2011; and
  • Marketing Directors Support Group Association -May 2011

Trademark & Copyright Law Basics – Speaker and Presenter at the Baltimore County Bar Association  – Sept. 2011

“HIPAA/HITECH Act – Protecting PHI” – Presentation to the Maryland Medical Group Management Association – February 2011

“Does Your Business Have Intellectual Property” – Presentation to Md. Business Owner’s Symposium – Nov 2010

Presentations Given on Professional Development:

  • “Defining and Creating Your Leadership Plan” Coordinator and Moderator,  American Bar Association Annual Conference/Intellectual Property Law Section, August 2011, Ontario Canada
  • “Pathways to Success for IP Lawyers: Balancing Work and Life to Achieve Your Goals,” Coordinator and Moderator, ABA/Intellectual Property Annual Conference, April 2009, Arlington, VA.
  • “Women in the Profession 101 – Ten Issues that Young Women Lawyers Face that Everyone Should Know About,” American Bar Association/Young Lawyers Division Fall 2006 Conference, Baltimore, Maryland

Publications

  • “Cake Decorators’ Dilemma – To Make Or Not To Make That Character Cake?”, International Cake Exploration Societe’, Newsletter (2014)
  • “Does Your Business Have Intellectual Property to Protect”, written with Pamela K. Riewerts, Published in CPA Practice Management Forum, a monthly journal by CCH (July 2010)
  • “Summary on L. C. Licensing, Inc. v. Berman, ITU Applications and Proof of Good Faith in Intent to Use” – American Bar Association/Annual Review of Intellectual Property Law Developments 2009

Other Interests

  • Board of Directors, Chesapeake Figure Skating Club (2011-present)
  • President, Chesapeake Figure Skating Club (2013-present)

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