Roger H. Bora
Intellectual Property Group
Trademark, Copyright, Internet
Roger’s practice includes all aspects of international trademark and copyright laws, including global portfolio management, registration procurement, enforcement actions, trade dress, brand creation, domain names, Internet, licensing and intellectual property transactions.
Roger represents clients from an array of industries, including sports courts and athletic surfaces, personal care, consumer goods, apparel, automotive, medical devices, computer software, industrial cleaning supplies, energy generation and distribution, chemical ingredients, protectant coatings, manufacturing equipment, health care, construction, concrete construction, online technologies, real estate, accounting, pet care and franchising.
Roger counsels clients with respect to federal trademark registration eligibility for products and services related to the cannabis industry, including marijuana, hemp and CBD products, as well as other forms intellectual property protection for cannabis businesses.
Understanding that companies place a high priority on controlling legal costs, Roger takes a proactive approach by offering customized domestic and international IP portfolio management procedures designed to increase internal efficiencies and reduce outside legal costs, while utilizing Thompson Hine’s innovative SmartPaTH™ system designed to align service delivery with client needs. Each customized program features a detailed presentation for legal and marketing teams, as well as a presentation on best practices for global IP registration and enforcement.
Before entering private practice, Roger was a trademark attorney with the U.S. Patent and Trademark Office (USPTO) where he ranked as one of the top performing trademark attorneys, and received special assignments with the Office of the Commissioner for Trademarks and Post Registration Division. During law school he received a full-time internship at the USPTO and a part-time internship at the U.S. Trademark Trial and Appeal Board, where he served under the direction of now Chief Judge Gerard F. Rogers.
Roger has handled more than 8,000 domestic and international trademark application filings and registrations during his career, which have included complex multi-jurisdictional national and international application strategies. He also handles and/or manages more than 25 domestic and international copyright and trademark enforcement actions on a rolling basis, including trademark registration opposition and cancellation proceedings around the world, and domain name complaints filed with the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.
Roger's extensive global trademark experience and knowledge of trademark registration regulations enables him to anticipate objections and potential issues that may arise during the trademark registration process allowing him to provide preemptive value-added advice to our clients. That experience also allows Roger to propose U.S. and global filing strategies designed to avoid unnecessary objections and delays, thus reducing overall time and expense for securing trademark registrations.
Before entering the legal profession, Roger had 10 years of marketing, sales and business management experience, which gives him a unique business perspective when working with clients, including the appreciation for client deadlines and budget control, and building reliable business and advisory relationships. Based on his experience and passion for marketing, advertising and brand development, Roger went to law school to study copyright, trademark and branding laws so he could continue his career working within the field that drives his passion.
The best comment a client can give Roger is that he is “brutally honest,” a character trait in which he takes much pride.
In his spare time, Roger enjoys supporting his son’s sporting activities, including traveling with family for his son’s travel hockey team, nature walks and golfing with his son and supporting his high school golf and golf team, blogging, meditation and community activities.
Roger's practice includes the following practice areas:
- Global portfolio management
- Trademark selection consultation
- Trademark availability opinions
- Complex global trademark application filing strategies (incl. ARIPO, EU Trademarks, Madrid)
- U.S. federal, state and international trademark registration prosecution
- Trademark registration opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board and international trademark offices
- Cease and desist letter enforcement and defense, litigation
- International brand creation
- Trade dress packaging and configuration design consultation, including private label branding
- Settlement agreements, license agreements
- Advertising and branding laws
- Global portfolio audit consultation and IP due diligence review
- U.S. and international copyright registration application prosecution and defense and enforcement actions, including DMCA take down-notice actions
- Filing domain name infringement complaints before the WIPO in Geneva
- Acquisition of domain names from third parties
- Online trademark and copyright infringement enforcement, including infringement of trademarks on websites, social media pages and Internet search engines
- Social media consultation and enforcement and acquisition of social media user names, including via filing complaints with social media vendors
- Managing copyright and trademark portfolios for leading industry brands covering more than 100 countries.
- Settling more than 50 domestic and international trademark and copyright enforcement actions since 2013.
- Compelling transfer of domain names that infringed upon clients' trademark rights by utilizing the UDRP complaint process at the WIPO, including a January 2013 case involving an internationally known celebrity's name, which had been infringed upon by the subject domain name holder for more than 15 years.
- Representing clients in trademark registration opposition and cancellation proceedings and copyright enforcement actions throughout the world, including in Bolivia, Brazil, Canada, China, Colombia, Ecuador, the European Union, Germany, Mexico, Paraguay, Taiwan, Turkey and the United States.
- Representing clients in complex global trademark filing strategies, many of which focus on strategically staged filings to spread out costs over several years.
- Representing clients in the assertion and defense of claims for trademark and/or trade dress infringement.
- Advising businesses in connection with intellectual property issues arising in the context of asset purchases, mergers, acquisitions and other business transactions.
- Developing intellectual property protection programs and strategies for businesses.
- Developing internal procedures for reducing legal costs for global copyright and trademark portfolios.
- Conducting due diligence and IP audits in acquisition, merger and licensing ventures.
- “CBD Companies Face Class Action Suits After FDA Issues Warnings About CBD Products,” Thompson Hine Cannabis Practice Update, December 2019
- “Federal Trademark Overview for U.S. Cannabis Businesses,” Marijuana Venture Magazine, January 2020
- “Trademark Registration Protection for Global Brand Expansion and for Maximizing Company Goodwill and Asset Valuations,” Thompson Hine Business Law Update, Spring 2019
- Creator and author of Trademark Titan Blog: www.TrademarkTitan.com
- Co-presenter, "Legal Issues Impacting the Cannabis Industry," Thompson Hine webinar, April 29, 2021
- “U.S. and International Trademark Seminar: What clients need to know for U.S. and global brand expansion,” Dayton Bar Association
- “Brand Name Selection and Protection: Client Conversations | Marketer’s Perspective,” Dayton Bar Association
- “Trademark Clearance and the Trademark Electronic Search System (TESS),” Dayton Bar Association
- “U.S. and International Trademark Seminar: What you need to know for U.S. and global brand expansion,” Law Offices of Thompson Hine LLP
- “Protecting Your Brands and Trademarks Internationally: Is Your Company Prepared for Global Expansion?” International Trade Association of Southwest Ohio
- "The Configuration Design IP Trifecta; Copyrights, Trade Dress and Design Patents," Dayton Intellectual Property Association
- "Global Trademark Selection and Protection," Dayton Intellectual Property Association
- "Copyright Fair Use in the Age of Social Media," New Media Cincinnati
- "Brand Protection in the Age of Social Media," American Marketing Association
- "Trademark Clearance and the Trademark Electronic Search System (TESS)," American Marketing Association
- "Brand Protection in the Social Media Age," SummitUp 2009 – A Social Media Confab, Wright State University
- "Protecting Your Trademarks: An Essential Part of the Marketing Plan," American Marketing Association
- "Trademark Protection in the European Union," Maine International Trade Center
- "Trademarks: How to Select & Protect Valuable Company Assets," University of Southern Maine
- World Trademark Review 1000 — The World's Leading Trademark Professionals, 2018 - 2021
- International Trademark Association, member
- International Trademark Association, U.S. Patent and Trademark Office Subcommittee member, 2009–2013
- International Trade Association of Southwest Ohio, board member, 2012-present
- Maine Bar Association
- Maryland Bar Association
- Dayton Bar Association
- YMCA of Greater Dayton, board member, 2011 to 2013
- YMCA, co-chair for Strong Kids Campaign, 2012 to 2013
Federal Trademark Overview for U.S. Cannabis BusinessesMarijuana Venture
December 04, 2019
April 29, 2021