Tracy Durkin

Essential Hague for Practitioners Seminar Guest Lecturer

Tracy-Gene G. Durkin is the practice leader of Sterne Kessler’s Mechanical & Design Practice Group and a member of the Trademark & Brand Protection Practice. Tracy has a well-earned reputation for excellence in design patent law. In 2018, Financial Times named her as one of the “Top Ten Legal Innovators in North America,” noting her as “a leading authority on design patents.” Tracy has been named among Chambers & Partners’ “recognized practitioners” in the IP Patent Prosecution, District of Columbia category. Among Tracy’s additional rankings in 2018, Legal 500 recognized her as a “Recommended Lawyer” in the U.S. for assisting “Apple with the development and implementation of its global design patent strategy, including the coordination of patent filings in over twenty countries worldwide.” Intellectual Asset Management’s “IAM Patent 1000” declared Tracy is the “design doyenne,” and World Trademark Review’s (WTR) annual WTR 1000 editors wrote that Tracy is particularly known for operating “at the vanguard of design patent law” and that she has “an affinity for matters at the intersection of trademarks, trade dress and design protection.” Tracy has also been heralded by WTR editors for being “as innovative as the products that she protects.”

Further, since 2013, Tracy has been listed among Managing Intellectual Property’s (MIP) “IP Stars” for excellence in her counseling practice, and she has been consistently named in each edition of MIP’s “Top 250 Women in IP.” In 2017, Who’s Who Legal recognized Tracy for excellence in patents. In 2016, Profiles in Diversity Journal listed her among “Women Worth Watching.” A trailblazer, Tracy achieved a Martindale AV Preeminent Peer Rating of 5.0/5.0 in 2011, a recognition fewer than 5% of women lawyers had earned, and she was named as one of the “Top Women Lawyers in the Northeast.”

With more than thirty years of experience obtaining and enforcing intellectual property rights, she is sought out by leading consumer product companies, and by colleagues around the world for her deep understanding of utility and design patents, trademarks, and copyrights. Tracy crafts and delivers unique IP protection strategies, designed to meet individual client’s needs. Her expertise includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation, and licensing.

Tracy has represented companies in patent, trademark, and copyright disputes before Federal District Courts, the U.S. Court of Appeals for the Federal Circuit, the International Trade Commission, the U.S. Patent & Trademark Board of Patent Appeals and Interferences, and the Trademark Trial and Appeal Board. She has successfully represented both complainants and respondents before the World Intellectual Property Office in domain name arbitrations. Her prior experience working at the U.S. Patent and Trademark Office gives her unique insight into arguing difficult cases and negotiating with examiners in personal interviews. She has served as an expert witness in patent disputes in District Court litigation and before the International Trade Commission on the issues of design patents and U.S. Patent & Trademark Office practice and procedures.

Tracy is a contributing author of Patent Office Litigation, Second Edition, published in 2017, the book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year. In 2016, Tracy served on the Law360 Intellectual Property Editorial Advisory Board.

Tracy has been an Adjunct Professor of Law at George Mason University Law School in Virginia and has spoken internationally on topics, such as the interplay between design patents and trade dress, protection of user interface and the user experience, The Hague Agreement, trademark co-branding and licensing, IP audits and mediation. Tracy is currently serving a three-year term as a member of the USPTO Patent Public Advisory Committee (PPAC), which advises the director on the policies, goals, performance, budget, and user fees of patent operations at the USPTO. She is past chair of the Industrial Designs Committee of IP Section of the American Bar Association and of the Industrial Designs Committee of the American Intellectual Property Law Association. She is past vice chair of the Industrial Designs Committee of the Intellectual Property Owners Association.

Tracy’s leadership at the firm includes her current role as practice group leader and member of the compensation committee. She was the first woman elected equity director to the firm in 1994, and is the first woman to serve on the firm’s executive committee, where she served three terms. A leader in the legal community, Tracy is a past president of the Women’s Bar Association of the District of Columbia and of The Women’s Bar Association Foundation, two organizations in which she continues active membership. She is currently a member of the board of directors of the Legal Aid Society of the District of Columbia.

Tracy received her J.D. from The George Washington University Law School, and her B.S., cum laude, in textile manufacturing and marketing from Jefferson University (formerly Philadelphia University and Philadelphia College of Textiles and Science).