Experience – Intellectual Property

Attorneys in the firm have handled the following representative matters:

Intellectual Property Counseling

  • Ongoing representation of Varian Medical Systems, Inc., a Fortune 1000 multinational developer and manufacturer of medical devices and software for cancer treatment, in trademark matters and other selected intellectual property issues
  • Ongoing representation of Kat Von D Beauty, Bite Beauty, Fenty Beauty by Rihanna, Marc Jacobs Beauty, Ole Henriksen of Denmark and parent company Kendo Brands in all aspects of intellectual property development and enforcement matters
  • Ongoing representation of Magpul Industries Corp., a leading supplier of accessories for firearms for military and recreational applications, in all aspects of intellectual property development and anti-counterfeiting matters
  • Ongoing representation of Method Products and its parent company Ecover, maker of environmentally conscious cleaning products, in all aspects of intellectual property development and enforcement matters
  • Advised Method Products on successful multi-platform social media marketing strategy (www.votedaisy.com)
  • Ongoing representation of OLLY PBC, a leading maker of vitamin, supplement and nutrition products,  in all aspects of intellectual property development and enforcement matters including the successful prosecution of the company’s application for trade dress protection of its unique bottle shape
  • Ongoing representation of San Diego Gas & Electric, Southern California Gas, US Gas & Power and parent company Sempra Energy, a Fortune 500 energy services company, in U.S. trademark clearance and prosecution matters
  • Ongoing representation of Varex Imaging, the world’s largest independent supplier of medical X-ray tubes and image processing solutions, in relation to the company’s trademark matters and other selected intellectual property issues
  • Representation of Fortune 500 consumer products company for all U.S. trademark clearance
  • Advised various ISPs, social media and other Internet intermediaries with liability issues  (copyright and trademark infringement, defamation, privacy, etc.)  relating to third party content in Europe and in the US
  • Filed several trademarks in France, Europe (CTM) and the US for different start-ups and larger companies in the tech and media industry, and assisted with the enforcement of these trademarks
  • Advised a major US-based company in the sportswear industry in relation to the sale of infringing products on major French and US-based online auction websites
  • Advised an Italian telecom company in relation to their planned advertising campaign (false advertising and privacy)
  • Trademark and IP counsel to Cedar Ridge Apple Ranch, LLC, producer and seller of the Indigeny Reserve line of alcoholic and nonalcoholic beverages
  • Advisor to an up-and-coming cosmetics and skincare company in the launch of its website, including incorporation of all levels of social media promotions and guest blogging activities
  • IP counsel to Limay Ventures, LLC, owner of the U.S. rights to the trademark La Bodeguita del Medio and the U.S. restaurant by that name, on, among other matters, issues arising from the ownership of the mark and its similarities to another trademark as affected by current U.S. embargoes
  • Trademark and IP counsel to Stemple Creek Ranch, a California-based cattle ranch producing organic grass-fed beef and lamb
  • Counsel to Passport Resorts, owner of a collection of high-end hotels and restaurants in IP matters arising in relation to its hotel and restaurant properties
  • Advisor to a well-known consumer products company on intellectual property issues related to the launch of its second and third worldwide company brands
  • Counsel to the largest online distributor of Nigerian entertainment content in U.S. trademark matters, copyright enforcement and Uniform Domain-Name Dispute-Resolution Policy proceedings
  • Representation of AReflectionOf, Inc. (aka The New Hive), a creator of the blank canvas for the web – a radically simple DIY self-publishing toolkit, with regard to its intellectual property matters
  • Counsel to an online start-up company with regard to brand selection and protection for its training programs and courses
  • Advisor to a start-up food company with regard to brand selection and protection for its food products for kids
  • Management of domestic and international trademark prosecution matters, including counseling, USPTO filings, management of local counsel, watch service monitoring, and content and trademark licensing, for Incase Designs Corp., a developer of personal electronics accessories
  • Counsel to venture-backed start-ups, RockYou, Xignite, Inc., and Glassdoor, Inc., in all U.S. and international trademark prosecution matters

Intellectual Property Enforcement

  • Development and implementation of comprehensive anti-counterfeiting program for Kat Von D Beauty including policing of online markets and customs enforcement
  • Counsel to major international personal electronics brand in relation to anti-counterfeiting efforts and enforcement of trademark rights in the United States
  • Represented Samsung in federal trademark infringement investigation and enforcement efforts
  • Represented Oracle USA, Inc., et al. in copyright litigation matter, in the United States District Court for the Northern District of California
  • Represented Ascential Software Corporation in employment, trade secret misappropriation and copyright infringement dispute in the United States District Court for the Northern District of California
  • Advised several US- and EU-based companies on the enforcement of their rights at the borders. Set up various IP infringement and gray market cross-border strategies, and filed various domestic and EU-wide requests for intervention with French customs
  • Assisted a US-based company in the catering industry with a DMCA claim; obtained a TRO and favorable settlement
  • Represented a large French company in the cosmetic industry against a large US-based online auction website before the Paris Court regarding the sale of infringing products on the website
  • Represented a US pharmaceutical company and its French subsidiary before the International Chamber of Commerce and obtained a favorable settlement in a patent infringement matter involving the interpretation of a patent licensing agreement
  • Represented a US-based company in the computer technology industry before several courts in France and obtained favorable judgments in various copyright, design and trademark infringement matters
  • Represented a French haute couture company and obtained several favorable judgments relating to the infringement of their copyrights, trademarks and designs
  • Obtained several favorable judgments for a well-known Italian designer in relation to the infringement of his designs
  • Obtained a favorable judgment for a well-known Italian soccer player against a major French newspaper in a defamation matter
  • Orsetti Seed Co., Inc. v. Halley Vick and Applied Genetics (Cal. Sup. Ct.). As lead counsel, obtained consent judgment against defendants in tomato breeding trade secret action.
  • Exoxemis v. Advanced Polymer Systems, Inc. (E.D. Ark.). As lead counsel, represented defendant in a trademark infringement action involving the “EXACT” trademark.
  • In re Thomas M. and Anna Valentine (N.D. Cal.). As lead counsel, represented Orsetti Seed Company in bankruptcy proceedings involving lettuce breeder.
  • Hewlett-Packard Co. v. Supreme Office Products (C.D. Cal.). As lead counsel, obtained temporary restraining order, preliminary injunction and consent decree in trademark counterfeiting action involving toner cartridges.
  • Hewlett-Packard Co. v. Rapid Office Products (M.D. Fla.). As lead counsel, obtained preliminary injunction, seizure order and consent decree in trademark counterfeiting action involving toner cartridges.
  • Chain Reactions Inc. v. OMNI Technology, Inc. (E.D. Cal.). As lead counsel, represented plaintiff in a breach of contract action involving planar loudspeaker technology.
  • Iris Medical Instruments v. International Remote Imaging Systems, Inc. (N.D. Cal.). As lead counsel, represented defendant in a trademark infringement action involving the “IRIS” trademark.
  • Solitec, Inc. v. Gerike and Zaferes (Cal.Sup.Ct.). Represented plaintiff in a breach of contract action involving semiconductor fabrication equipment.
  • SyQuest v. MicroStorage and Omron (N.D. Cal.). Represented Japanese defendants in action involving alleged misappropriation of disk drive trade secrets.
  • Hexcel Corp. v. TRE (N.D. Cal.). Represented manufacturer of metal honeycomb aircraft materials in trade secret misappropriation and antitrust action.
  • Golden Harvest Limited v. Dai Chung Video et al. (N.D. Cal.). As lead counsel, represented Chinese video retailers in defense of copyright infringement action.
  • Guangorena v. Nagy and Hansen (Cal.Sup.Ct.). Won jury verdict and $200,000 judgment after trial of trade secret misappropriation and breach of contract action involving sailboat winches.
  • Port of Stockton v. Industrial Service Corp. (Cal.Sup.Ct.). Won jury verdict that the client’s commercial lease had been renewed after trial of a lease renewal dispute for industrial waste processing company.
  • Spectravest v. Lerner Stores (N.D. Cal.). As lead counsel, obtained preliminary injunction in copyright infringement action involving printed sweatshirt designs.
  • Counsel to a well-known California winery in relation to claims against a former employee for trade dress infringement, trademark infringement and passing off, copyright infringement, theft of trade secrets, and breach of contract
  • Counsel for oversight and management of all online intellectual property enforcement efforts for a popular children’s entertainment franchise and a well-known fashion and lifestyle brand
  • Representation of a major technology company (smartphones and other products) with regard to online anti-counterfeiting efforts on various e-market websites
  • Representation of an internationally recognized dog trainer in a trademark infringement and right of publicity action
  • Representation of a Marin-based art gallery with regard to protection and enforcement of its intellectual property rights
  • Management of domestic and international trademark enforcement matters, including counseling, watch service monitoring, web monitoring, investigation, cease and desist demands, TTAB proceedings, litigation, and settlement negotiation, for Incase Designs Corp., a developer of personal electronics accessories
  • Co-counsel/trademark subject matter specialists with regard to geographical descriptiveness claims on behalf of a well-known California winery in a Trademark Trial and Appeal Board (TTAB) cancellation action
  • Representation in trademark prosecution and enforcement matters for a large multinational consulting and technology services firm
  • Representation of Testarossa Vineyards, LLC, a California producer of award-winning Chardonnays and Pinot Noirs, in an action for trademark infringement against an Italian winery and its U.S. importers

Areas of Experience