Michael A. Marrero

Partner | Co-Group Leader, Cybersecurity & Privacy

Mike concentrates his practice in trademark law, such as trademark clearance, prosecuting trademark applications and office actions before the U.S. Patent & Trademark Office, opposition and cancellation actions, and litigation. Besides trademarks, his areas of expertise include copyrights and licensing, business planning, shareholder and investor relations, mergers and acquisitions, cybersecurity and data privacy, advertising and promotional law, and administrative law. He has extensive experience representing closely held corporations in business matters, venture-capital funding, acquisitions, and divestitures. He was in-house counsel with a Fortune 500 company for more than 10 years in intellectual property, acquisitions, divestitures, administrative law, and truth-in-advertising matters. Michael was recently selected by his peers for inclusion in The Best Lawyers in America© in the Corporate Law field and has achieved the highest rating, AV Preeminent®, from Martindale-Hubbell®. Mike is fluent in French.

Education & Admissions

Education

  • Xavier University

    (A.B., 1974)

  • University of Michigan Law School

    (J.D., 1977)

  • University of Paris, Sorbonne

    (Diplome annuel de la cour de langue et civilisation, 1973)

Admissions

  • State of Ohio
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. District Court, Southern District of Ohio
  • U.S. District Court, Central District of Illinois
  • U.S. District Court, Western District of Michigan

Experience

  • Extensive experience since 1993 in trademarks, copyrights, licensing matters, intellectual property, software agreements, advertising and labeling (consumer products such as dietary supplements), and administrative (e.g., CPSC, FTC, FDA).
  • Extensive experience since 1981 representing closely held corporations in business matters, venture-capital funding, acquisitions, and divestitures.
  • Successfully appealed a trade dress protection case for a market newcomer accused of copying a large competitor’s unpatented grease pump. The Sixth Circuit reversed the decision and saved the client $2 million in damages.
  • From 1981 to 1993, in-house counsel with Bristol-Myers Squibb (The Drackett Co.) and Johnson’s Wax (The Drackett Co.) in intellectual-property matters (trademarks, licensing), acquisitions, divestitures, administrative law, and truth in advertising.

Publications & Presentations

Client Alerts

  • "As California Enacts New Data-Privacy Laws, So May the Nation," Ulmer & Berne LLP Client Alert (November 2020)
  • "The California Consumer Privacy Act Is Coming: Are You Ready?," Ulmer & Berne LLP Client Alert (October 2019)
  • “New EU Data Protection Regulation Raises the Stakes for Compliance,” Ulmer & Berne LLP, Client Alert (December 2015)
  • European Decision Invalidating the Safe Harbor Requires Many Companies to Reassess Their Privacy Programs, Ulmer & Berne LLP Client Alert (October 2015)
  • “Target Reached a Historic Settlement with Visa Stemming from Target’s Data Breach,” Ulmer & Berne LLP, Client Alert (August 2015)
  • “Data Breach Insurance Coverage Denied by the Connecticut Supreme Court,” Ulmer & Berne LLP, Client Alert (June 2015)
  • “House Passes Cybersecurity Bills to Enable Companies to Share Threat Information,” Ulmer & Berne LLP, Client Alert (April 2015)
  • “Cybersecurity Exam by SEC Provides Insight About Focal Points for Broker-Dealers and Investment Advisers,” (reprint of Ulmer & Berne LLP Client Alert) Financial Markets Association “Market Solutions Newsletter” Volume 24, Number 1 (March 2015)
  • Cybersecurity Exam by SEC Provides Insight About Focal Points for Broker-Dealers and Investment Advisers, Ulmer & Berne LLP, Client Alert (February 2015)

Publications

  • “A Primer On NCAA Athletes’ Right Of Publicity,” Law360(July 2013)
  • Final SEC and CFTC Red Flag Rules Require Compliance by November 2013,” Ulmer & Berne LLP, Client Alert (May 2013)

Presentations

  • Data & Privacy in the Financial Services Industry: How Can You Stay Current?” Ulmer, Hot Topics in Financial Services & Securities Litigation Webinar (December 2019)
  • “E-Commerce: Brand Enhancement and Enforcement Issues,” Nationwide CLE Series (November 2015)
  • “Data Privacy & Security for Startups,” Queen City Angels (June 2015)
  • “Practical Cybersecurity: Translating Legal Requirements into Business Decisions,” Association of Corporate Counsel, Northeast Ohio (February 2015)
  • “20 Minutes + A Beer: Find out about false advertising,” American Advertising Federation, Cincinnati (July 2014)
  • “Power Up Your Professional Network,” University of Virginia Career Services (February 2013)

Involvement

PROFESSIONAL AFFILIATIONS

  • American Bar Association
  • Ohio State Bar Association
  • Ohio State Bar Foundation (Fellow, Class of 2004)
  • Cincinnati Bar Association (Board of Trustees, 1991 – 1995)
  • Legal Aid Society of Cincinnati (Past President, Member, Board of Trustees, 1990 – present)
  • Community Law Center (President, Board of Trustees)
  • Intellectual Property Owners Association (IPO)

COMMUNITY INVOLVEMENT

  • Cincinnati Opera (Board of Trustees, 2017)
  • Cincinnati Athletic Club (Past President, Board of Trustees)
  • Greater Cincinnati Venture Association (Past President, formerly Board of Trustees)
  • American Heart Association, Cincinnati Division (Advisory Board, Chair, 1991-1994; Board Member, 1988-2010)
  • St. Xavier High School (Board of Trustees, 1995-2001)
  • The Seven Hills School (Board of Trustees, 1992-2000; Secretary of Board of Trustees, 1995-1999)
  • Comprehensive Community Child Care (4C) (Board of Trustees, 1988-1996; Chairman of Board of Trustees, 1994-1995)
  • Xavier University (General Chairman, Annual Fund, Alumni Division, 1990-1991; Annual Fund, Class Chair, Class of 1974)

FIRM INVOLVEMENT

  • Data Privacy & Information Security, Co-Group Leader

Honors

  • Ranked as one of Ohio’s “Leaders in Their Field” in Intellectual Property by Chambers USA: America’s Leading Lawyers for Business (2018-2022)
  • AV Preeminent Peer Review Rated – Martindale-Hubbell
  • Named to The Best Lawyers in America®, Corporate Law; Trademark Law (2015-2023)
  • Named to the Ohio Super Lawyers list (2007; 2008; 2018-2022)
  • Named a Cincy Leading Lawyer in Copyright & Trademark in a survey of lawyers by Cincy Magazine (2007-2022)
  • Recognized in the World Trademark Review ‘s WTR 1000 – The World’s Leading Trademark Professionals  (2016-2022)

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