Elizabeth G. Borland

Elizabeth G. Borland is an accomplished intellectual property litigator who counsels clients on protecting, enforcing, and maximizing the value of their intellectual property assets. She represents clients in complex disputes in federal courts across the country, before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and in domain name proceedings. Elizabeth is known for developing strategic, business-oriented solutions that help clients safeguard trademarks and other valuable IP, defend against third-party claims, and advance brand protection objectives in the United States and abroad. In addition to her litigation practice, she advises on trademark clearance and prosecution and manages substantial global trademark portfolios. Her experience also includes copyright prosecution, trade secret protection, and patent litigation involving a broad range of technologies.

Prior to beginning private practice, Elizabeth served as a judicial clerk for Judge Wilbur D. Owens, Jr., then-Chief Judge of the U.S. District Court for the Middle District of Georgia, Macon, Georgia.  During her undergraduate studies, Elizabeth served as a student programmer on the IBM Courseware Development Project and also completed a summer study program in London, England.  During law school, she served as a Managing Editor of the Emory Law Journal and was a Wayne L. Cardon Scholar. Elizabeth also completed an internship with Judge Dorothy T. Beasley of the Georgia Court of Appeals.

In her free time, Elizabeth enjoys travel, theatre, music, and reading.  She is an alto in the Atlanta Symphony Orchestra Chorus and in the Chancel Choir of Trinity Presbyterian Church, where she has also served as an Elder of the Session, a Sunday School teacher, Chair of the Personnel Committee, and Chair of the Worship and Music Committee, among other roles. 

Elizabeth's Practice

Representative Matters

• Secured a favorable decision from the Trademark Trial and Appeal Board (“TTAB”) for a Swedish-based game studio in a cancellation proceeding brought against a Russian individual, in which the main dispute was over who had priority in the RAFT mark. After several years of discovery, cross-motions for summary judgment, and other pre-trial skirmishing, the court granted our petition to cancel the RAFT trademark registration on the client’s behalf.  The Russian individual has filed a civil action in the Eastern District of Virginia to appeal the TTAB’s decision.
• Prevailed in a UDRP proceeding in which the domain <bestoffice.com> was ordered to be transferred to our furniture distributor client. The individual owner of the domain was affiliated with one of our client’s main competitors, had recently acquired the domain from a prior owner, and was using the domain for a website that sold furniture under the BESTOFFICE mark. The owner and his company filed an action in the Northern District of California to challenge the UDRP decision and to obtain a declaratory judgment that the  BESTOFFICE mark was invalid and not infringed by the plaintiffs.  After initial motions and some discovery, the parties were able to reach a settlement in which our client obtained full rights in the <bestoffice.com> domain.   
• Successfully opposed an application for CLUB NOC that was preventing our real estate development client from obtaining its own registrations containing the term “NOC.”
• Negotiated a favorable settlement on behalf of a non-profit symphony organization after bringing a petition to cancel a registration obtained by another non-profit arts organization that was preventing the symphony from registering its trademarks.
• Obtained many favorable UDRP decisions on behalf of companies in a variety of industries, including health insurance, health care technology, apparel, pulp and paper, and real estate development, resulting in the transfer of infringing domain names to their rightful trademark owners.
• Secured consent judgment in infringement action brought in the Northern District of Illinois against client’s former independent sales distributor prohibiting her from using an infringing logo and subsequent modified version of the infringing logo on health and beauty products.
• Negotiated favorable settlement on behalf of automobile parts distributor client after bringing trademark infringement action in the Northern District of California against media company who was using an infringing logo for automative media services.
• Obtained summary judgment of non-infringement in favor of her amusement equipment producer client after persuading the Eastern District of Virgina to adopt a claim construction that did not even cover the plaintiff’s equipment.
• Negotiated settlement in defense of trade dress infringement claim involving decorative candy wrappers.
• Negotiated settlements in defense of trademark infringement claims against tribute bands.
• Obtained favorable settlement in mediation after bringing trademark infringement and unfair competition claims against defendants who were falsely linking their products to plaintiff’s listings on Amazon.com.
• Obtained favorable ruling from the Northern District of Geogia on motion for reconsideration after being substituted in as new counsel for the defendant after summary judgment motions had been filed, and ultimately persuaded the court to enter judgment that included an injunction much narrower than the defendant had offered during mediation and damages in an amount much lower than the plaintiff was seeking, and to deny the plaintiff’s request for treble damages and attorney’s fees.