Emilia F. Cannella
Counsel
Emilia Cannella is counsel in the corporate department and a member of the Ropes & Gray intellectual property group. She joined the firm in October 2004 after practicing with an intellectual property boutique in Chicago and a general practice firm in Boston. She advises a wide range of companies and institutions in the determination of domestic and international brand adoption, filing, protection, and licensing strategies.
Emilia represents clients before the U.S. Patent & Trademark Trial and Appeal Board and has extensive experience in domestic and international trademark selection, clearance, and registration, due diligence regarding intellectual property rights in corporate transactions, the negotiation and drafting of assignments, licenses and related agreements, and the prosecution, defense and settlement of disputes.
Publications
- Quoted, “For IP bar, new federal laws a pleasant surprise,” Massachusetts Lawyers Weekly (January 14, 2021)
- Co-author, “INSIGHT: The Supreme Court Can Bring Trademark Law into the .Com Age,” Bloomberg Law (June 3, 2020)
- Co-author, “Supreme Court Holds that Ban on Registration of Immoral and Scandalous Trademarks Is Unconstitutional,” IP Litigator (September-October 2019)
- Co-author, “The International Comparative Legal Guide to Trade Marks 2016,” International Comparative Legal Guides (May 2016)
- Quoted in “United States - Reaction to ING Direct rebrand shows how consumers value trademarks,” World Trademark Review (November 22, 2012)
- Quoted in “Clean Sweep,” Boston Business Journal (September 29, 2008)
- Co-author, “Chapter 2: Trade Dress and Product Configuration Law,” Trade Dress Law (2d ed. 1999)
Presentations
- Speaker, “Global Trademark Searching and Clearance: Strategies and Tips for a Post-Pandemic World,” Boston Bar Association Webinar (June 17, 2020)
- Speaker, “Conference on Brand Valuation,” University of New Hampshire School of Law (April 22, 2016)
- Moderator, “Look Before You Leap: Trademark Due Diligence in Corporate Transactions,” International Trademark Association Annual Meeting Table Topic Session (May 13, 2014)
- Moderator, “Tips for the Unwary: Statutory Use Requirements in the USPTO,” International Trademark Association Annual Meeting Table Topic Session (May 7, 2013)
- Speaker, “No Such Thing as an Honest Mistake? Lessons from the Medinol Decision and its Aftermath,” Franklin Pierce Law Center Annual Student Intellectual Property Law Association Symposium (April 17, 2009)
- Speaker, “No Such Thing as an Honest Mistake? Lessons from the Medinol Decision and its Aftermath,” Boston Bar Association (December 18, 2008)
- Co-Chair, “Trademarks in Business Transactions,” International Trademark Association Roundtable, Boston, MA (April 23, 2004)
- Moderator, “Recent Developments in CTM Practice,” International Trademark Association Annual Meeting Table Topic Session (May 5, 2004)
- Moderator, “Organizing a Worldwide Trademark Licensing Program,” International Trademark Association Annual Meeting Table Topic Session (May 7, 2003)
- Speaker, Intellectual Property Basics, Massachusetts Continuing Legal Education, Boston, MA (2003)
- Speaker, Hot Topics in Trademark Law, Massachusetts Continuing Legal Education, Boston, MA (2003)
- Speaker, Intellectual Property Licensing for Paralegals, Massachusetts Continuing Legal Education, Boston, MA (2002)
Education
- JD, The George Washington University Law School, 1996; Articles Editor, American Intellectual Property Law Association Quarterly Journal , 1995-96
- AB (Anthropology), The College of the University of Chicago, 1989
Admissions / Qualifications
Qualifications
- Massachusetts, 2001
Court Admissions
- U.S. District Court for the Northern District of Illinois
Awards
- World Intellectual Property Review: US Trademarks Rankings (2023)
- Managing IP Americas Awards “IP Transactions Firm of the Year” (2023)
- Legal 500 (2021)
- WTR: Global Leaders (2020-2023)
- LMG Life Sciences Licensing & Collaboration Firm of the Year (2020)
- WTR1000: The World's Leading Trademark Professionals (2011-2023)
- Who's Who Legal: Trademarks (2016-2017, 2022)
- Euromoney’s Expert Guides – Women in Business Law (2015-2022);Trade Marks (2016-2022)