Photo of Jessica M. Mendez

Jessica M. Mendez

Of Counsel

"I enjoy working through complex legal issues and finding creative solutions that maximize the value of our clients’ intellectual property assets."

Admissions

  • Missouri
  • Illinois
  • United States District Court, Eastern District of Missouri
  • United States Court of Appeals, Eighth Circuit
  • United States Court of Appeals, Federal Circuit

Education

LL.M., Intellectual Property, Washington University School of Law, 2011

J.D., Washington University School of Law, Global Studies Law Review, Associate Editor 2010

B.A., Political Science and English, Boston University, 2007

Profile

Jessica Mendez specializes in the strategic management and protection of trademarks and other intellectual property assets.  She works with clients in numerous industries including software, health care, personal care, consumer goods, and food and beverage. 

Trademark Trial and Appeal Board, Counseling, and Portfolio Management

Jessica manages trademark portfolios ranging from a few trademarks to hundreds of trademarks worldwide.  She assists with securing trademark registrations and properly allocating financial resources to maintain, enforce, and defend trademark rights. During the trademark selection and clearance process, Jessica provides valuable insight based on upon her extensive litigation experience to effectively assess risk. She has substantial experience before the Trademark Trial and Appeal Board (TTAB), handling proceedings for clients ranging in size and industry from local breweries to a Fortune 500 personal care corporation.  She also handles drafting and negotiating agreements, including license agreements, coexistence agreements, joint development agreements, and co-branding agreements. Jessica takes a holistic approach to ensure all aspects of a brand are protected, including associated rights, such as copyrights and domain names.

Intellectual Property Litigation

Jessica handles all phases of litigation — including jury trials — for clients in disputes involving infringement of trademarks, trade dress, patents, copyrights, and trade secrets in courts across the country.  Her broad experience includes matters ranging from trademark counterfeiting to software copyright infringement to telemedicine patent infringement and ex-parte civil seizure proceedings.  To ensure that her client’s interests are protected, Jessica works diligently through all aspects of litigation, seeing cases through from start to finish, whether resolved through favorable settlement, motion practice, or trial. 

Emerging Companies

For start-up and small businesses, Jessica develops a strategy through agreements, appropriate registrations, and practical policies and procedures to protect intellectual property in a cost-efficient manner that helps businesses grow. She is a member of the firm’s Cortex team and participates in presentations aimed at helping small businesses learn about protecting intellectual property assets.

Community Involvement

Jessica prides herself on giving back to the community. She serves on the board of the Hispanic National Bar Association as Deputy Vice President of Programs.  She is the president emeritus and a founding member of the Hispanic Bar Association of St. Louis, an affiliate of the Hispanic National Bar Association, and serves as General Counsel to the Hispanic Chamber of Commerce of Metropolitan St. Louis.  Jessica is the Diversity and Inclusion Subcommittee Chair for the Intellectual Property Litigation section of DRI and serves on the steering committee for the Patent, Trademark, and Copyright Section of the Bar Association of Metropolitan St. Louis. She also volunteers for the Hispanic Educational, Cultural, and Scholarship Fund, raising funds for scholarships for Hispanic students, and for Volunteer Lawyers and Accountants for the Arts, providing pro bono legal services to local artists.

Professional Affiliations

  • Hispanic National Bar Association, Deputy Vice President of Programs
  • International Trademark Association
  • Missouri Bar, Diversity Committee Chair, 2014-16
  • Bar Association of Metropolitan St. Louis, Young Lawyers Division Chair, 2015-16; Minorities in the Legal Profession, Chair, 2014-15; Patent, Trademark, and Copyright Section, Steering Committee, 2013-present
  • Hispanic Bar Association of St. Louis, President Emeritus
  • Hispanic Chamber of Commerce of Metropolitan St. Louis, General Counsel
  • DRI, Diversity and Inclusion Subcommittee Chair for the Intellectual Property Litigation section

Community/Civic Activities

  • Hispanic Educational, Cultural, and Scholarship Fund
  • Volunteer Lawyers and Accountants for the Arts

Honors & Awards

Honors & Awards

  • Best Patent Attorneys, St. Louis Small Business Monthly, 2018
  • Missouri & Kansas Super Lawyers Rising Stars, 2014-18
  • Top Lawyer Under 40, Hispanic National Bar Association, 2017
  • Emerging Hispanic Leader of the Year, Hispanic Chamber of Commerce, 2017
  • Women’s Justice Rising Star Award, Missouri Lawyers Weekly, 2016
  • 30 Under 30, St. Louis Business Journal, 2014

Experience

Representative Matters

  • Managed foreign and domestic trademark portfolio of more than 400 trademarks for U.S.-based original equipment manufacturer.
  • Successfully handle proceedings before the Trademark Trial and Appeal Board for clients ranging in size and industry from local breweries to a Fortune 500 personal care corporation.
  • Won summary judgment of non-infringement in a case involving trademarks for pet care products and represented the client on appeal before the Eighth Circuit where the judgment was affirmed.
  • Secured a favorable settlement after cross-motions for summary judgment for a multibillion-dollar health care provider in litigation over infringement of the client’s house mark by a large insurance brokerage firm.
  • Won a jury verdict of over $2 million in a case involving infringement of an airport screening system used to detect explosives and narcotics; during pretrial motions, crafted Daubert motions resulting in the exclusion of the defendant’s non-infringement experts.
  • Served as lead counsel for a Markman hearing in a matter involving telemedicine technology.
  • Won a complete defense verdict in a software copyright infringement trial; during pretrial evidentiary motions, crafted Daubert motions successfully limiting the damages expert testimony and reducing the clients’ liability exposure by approximately $2 million.
  • Won summary judgment of non-infringement in a case involving software patents and represented the client on appeal before the Federal Circuit, where the judgment was affirmed.

News & Insights

Seminars & Speaking Engagements

  • "Can You Keep a Secret? Comparing the DTSA and UTSA"
    DRI Intellectual Property Conference, Denver, Colorado, April 2018
  • "2016 Trademark Year in Review"
    Bar Association of Metropolitan St. Louis, St. Louis, Missouri, January 2017
  • "Trademarks and the Constitution: Does the First Amendment Protect Disparaging Trademarks?"
    Hispanic National Bar Association Annual Convention, Chicago, Illinois, September 2016
  • "8th Circuit and Federal Circuit Trademark Review"
    Bar Association of Metropolitan St. Louis, St. Louis, Missouri, December 2013
  • "Computer Tampering: Protecting Important Assets and Information"
    Missouri Bar Tech Law Expo, St. Charles, Missouri, October 2013
  • "Generic Top-Level Domains: Protecting Trademarks Through the Trademark Clearinghouse"
    Missouri Bar Tech Law Expo, St. Charles, Missouri, October 2013
  • "Fundamental Intellectual Property Strategies: What Every Start-Up Needs to Know About Intellectual Property"
    Entrepreneurship Seminar at Downtown T-REX, St. Louis, Missouri, May 2013

Publications

Articles & Books

  • DRI Defense Library Series: Remedies in Intellectual Property Cases, July 2018
  • "Knock It Off: Counterfeit Goods and the Building Blocks of an Effective Brand Protection Program"
    St. Louis Bar Journal, Spring 2017

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