Tracy-Gene G. Durkin

Overview

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. 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 also been named among Chambers & Partners’ “recognized practitioners” in the IP Patent Prosecution, District of Columbia category. Among Tracy’s additional rankings, Legal 500 recognized her as a “Recommended Lawyer” in the U.S. for assisting a world leader in the consumer electronics space “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 “thinking outside of the box to devise one-of-a-kind strategies that focus on delivering business-driven outcomes” and being “as innovative as the products that she protects.”

Tracy has been named an “IP Star” by Managing IP for excellence in her counseling practice, and has been featured in five editions of Managing IP’s “Top 250 Women in IP.” Who’s Who Legal has recognized Tracy for excellence in patents. Profiles in Diversity Journal has listed her among “Women Worth Watching.” Clearly a trailblazer, Tracy has a Martindale AV Preeminent Peer Rating of 5.0/5.0, a recognition fewer than 5% of women lawyers have earned, and has been 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 has served as an advisor to associates participating in the PTAB’s Legal Experience and Advancement Program (LEAP), which provides associates with training and development opportunities in PTAB proceedings, including oral argument.

Tracy recently completed her three-year term as a member, including a one-year term as the vice chair, of the Patent Public Advisory Committee (PPAC), which advises the Under Secretary of Commerce for Intellectual Property at the United States Patent & Trademark Office on the policies, goals, performance, budget, and user fees of patent operations at the Office. She is also the chair of the Designs Committee for the International Trademark Association (INTA). She is past chair of the Industrial Designs Committee of the IP Section of the American Bar Association and of the Industrial Designs Committee of the American Intellectual Property Law Association. In addition, Tracy is past vice chair of the Industrial Designs Committee of the Intellectual Property Owners Association.

Tracy authored the chapter “Design Protection for Graphical User Interfaces” for the book Research Handbook on Design Law, published in 2021 by Edward Elgar Publishing – a unique Research Handbook that presents the state of the art in research on, and the practice of, international design law. Tracy is also a contributing author of Patent Office Litigation, Second Edition, published in 2017 by Thomson Reuters Westlaw. The book provides a 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. 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 graphical user interface designs and the user experience, The Hague Agreement, trademark co-branding and licensing, IP audits and mediation. Additionally, she co-hosts the biennial Design Law Conference, which aims to foster debate on cutting-edge design-related topics.

Tracy’s leadership at the firm includes her current role as practice group leader. She was the first woman elected as an equity director, and is the first woman to serve on the firm’s executive and compensation committees. 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 has also served on the Legal Aid Society of DC’s board of trustees.

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

Education

• J.D., The George Washington University Law School
• B.S., Textile Manufacturing and Marketing, Thomas Jefferson University, Cum Laude