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William G. Barber
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Biography

Bill Barber specializes in trademark law, focusing primarily on litigation and policing, handling cases in federal courts across the U.S. and before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.  Experienced in all aspects of litigation, including jury and bench trials as well as appeals, Bill also handles domain name disputes through ICANN’s domain name dispute resolution policies. He also regularly assists clients with a wide range of trademark needs, including trademark policing strategies and programs, trademark clearance, and trademark prosecution.

Bill is a member of the U.S. Patent and Trademark Office Trademark Public Advisory Committee, has testified before Congress regarding reforms to the federal trademark dilution statute, and is a frequent author and speaker on various trademark and unfair competition topics.  He is a past president of the American Intellectual Property Law Association and a past chair of the State Bar of Texas Intellectual Property Law Section.

Bill has received a number of professional awards in his career, including Best Lawyers' Austin Lawyer of the Year for Trademark Law (2012, 2015) and Intellectual Property Litigation (2013).  Ranked in WTR 1000 since the inaugural edition, the most recent rankings awarded Mr. Barber Gold status nationally in both the “Prosecution and Strategy” and “Enforcement and Litigation” categories, and heralded him as a “legend in the field”.  He has also been recognized in Chambers USA/Global, Expert Guides Trademark, Texas Super Lawyers, Trademark Law Experts, and Who’s Who Legal: Texas/Trademarks.

Bill received a B.S. in Chemical Engineering with highest honors from The University of Texas at Austin in 1984. He earned a J.D. with high honors from The University of Texas School of Law in 1987.

Last but not least, Bill is a devoted husband and father. Bill and his wife Melinda have three daughters, Robyn, Elyse, and Melynn.

Professional Activities and Memberships

  • U.S. Patent and Trademark Office Trademark Public Advisory Committee (TPAC) (2014)
  • American Intellectual Property Law Association
    • Fellows (2013 – present)
    • President (2011 – 2012)
    • Executive Committee (2008 – 2012)
    • Education Foundation, Board of Trustees (2008 – 2010)
    • Secretary (2006 – 2008)
    • Board of Directors (2003 - 2006)Austin IP American Inn of Court, Master of the Bench (2010-present)
  • Austin Intellectual Property Law Association
  • State Bar of Texas
    • Intellectual Property Law Section, Chair (2003 - 2004); Council (1999 - 2005)
  • Texas Bar Foundation, Life Fellow (2004 – present)
  • American Bar Association
    • Intellectual Property Law Section
  • Texas Intellectual Property Law Journal, Editor (1995 - 2004)
  • The Trademark Reporter, Editorial Board Member (1995 - Present)
  • The University of Texas School of Law, Adjunct Professor (1999 - 2010)

Honors

  • WTR 1000 The World's Leading Trademark Professionals, World Trademark Review (2011-2015)
  • Guide to the World’s Leading Trade Mark Law Practitioners, Euromoney Legal Media Group (2004-2014)
  • Best Lawyers' Austin Trademark Law Lawyer of the Year (2012, 2015)
  • Best Lawyers' Austin Litigation - Intellectual Property Lawyer of the Year (2013)
  • Chambers USA and Global (2006-2014)
  • Managing Intellectual Property - IP Stars (2014)
  • The Best Lawyers in America® (2008-2014)
  • Who's Who Legal: Trademarks (2005-2014)
  • Texas Super Lawyers (2007-2014)
  • Trademark Law Experts (2014-2015)
  • State Bar of Texas Intellectual Property Law Section, Chair Award (2001)
  • Who's Who Legal: Texas (2007-2008)
  • AV Preeminent® Peer Review Rated*

* AV®, BV®, AV Preeminent® and BV Distinguished® are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedures, standards and policies. Martindale-Hubbell is the facilitator of a peer review rating process. Ratings reflect the confidential opinions of members of the Bar and the Judiciary. Martindale-Hubbell Ratings fall into two categories - legal ability and general ethical standards.

Educational Background

  • 1987 J.D., High Honors, The University of Texas School of Law
  • 1984 B.S., Highest Honors, Chemical Engineering, The University of Texas at Austin

Publications

  • “The Universe,” Trademark and Deceptive Advertising Surveys:  Law, Science, and Design, Chapter 3 (ABA Section of Intellectual Property Law, 2012)
  • "Dumping the ‘Designation of Source’ Requirement from the TDRA: A Response to the Alleged ‘Trademark Use Requirement in Dilution Cases’," Santa Clara Computer & High Technology Law Journal, Vol. 24, No. 3, at 559-70 (2007-08)
  • "The Trademark Dilution Revision Act of 2005: Breathing Life Back into the Federal Dilution Statute," Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. XVI, No. 4, at 1113-42, Summer 2006
  • "A ‘Rational’ Approach for Analyzing Dilution Claims: The Three Hallmarks of True Trademark Dilution," AIPLA Quarterly Journal, Vol. 33, No. 1, at 25-72, Winter 2005
  • "Recent Developments in Trademark Law: Reverse Domain Name Hijacking, Mutant Copyrights, and Other Mysterious Creatures of the Trademark World," Texas Intellectual Property Law Journal, Winter 2004
  • "Recent Developments in Trademark Law: Disrobing Trade Dress, Confounding Dilution, and Condemning Cybersquatting," Texas Intellectual Property Law Journal, Winter 2002
  • "Recent Developments in Trademark Law: Cybersquatters Run for Cover, While Copycats Breathe a Sigh of Relief," Texas Intellectual Property Law Journal, Winter 2001
  • "How to do a Trademark Dilution Survey (or Perhaps How Not to do One)," The Trademark Reporter, May/June 1999
  • "Treaties Bring Changes to U.S. Trademark Law and Practice," AIPLA Quarterly Journal, GATT Symposium Issue, Summer/Fall 1994
  • "The Franchise Trademark Handbook - Developing and Protecting Your Trademarks and Service Marks," ABA Forum on Franchising, 1994
  • "Recent Developments in Trademark Law," Texas Intellectual Property Law Journal, Fall 1994
  • "Recovery of Profits Under the Lanham Act: Are the District Courts Doing Their Job?" The Trademark Reporter, March/April 1992

Speeches

  • "Advanced Tips for TTAB Practice," Midwest Intellectual Property Institute, Minneapolis, Minnesota, September 18, 2014
  • "The Year in Trademark Law," Midwest Intellectual Property Institute, Minneapolis, Minnesota, September 18, 2014
  • “Preliminary Injunctions:  To Use or Not to Use Might Haunt Your Case,” AIPLA Online CLE, March 5, 2014
  • “The Limits of Trademark Registrability:  Acquired Distinctiveness, Branding and Corporate Agreements,” ABPI XXXII International Congress on Intellectual Property, São Paulo, Brazil, August 28, 2012
  • “Update on U.S. Trademark Law,” AIPLA/TWPAA Joint Seminar, Taipei, Taiwan, April 23, 2012
  • “Protection of Geographic Designations in the United States,” AIPLA/APRAM Joint Meeting, Paris, France, March 6, 2012
  • "Trademark Fraud on the USPTO – A New Landscape," ABA-CLE Teleconference/Webcast, September 30, 2009
  • "Patent, Trademark and Copyright: Hot Topics from 2008," AIPLA Live Online Seminar, November 5, 2008
  • "Year in Review – Trademarks," AIPLA Annual Meeting, Washington, D.C., October 25, 2008
  • "Trademark Dilution," 23rd Annual Institute on Intellectual Property Law, HIPLA/UHLC, Galveston, Texas, October 5, 2007
  • "A Practitioner's Perspective on Surveys Under the TDRA," AIPLA Spring Meeting, Boston, Massachusetts, May 10, 2007
  • "Trademark Dilution: New Angles After the Trademark Dilution Revision Act of 2006 and Why You Should Care," AIPLA Live Online Seminar, March 9, 2007
  • "Proving Claims (and Defenses) Under the New Federal Trademark Dilution Statute," 20th Annual Intellectual Property Law Course, State Bar of Texas, Dallas, Texas, March 1, 2007
  • "Amendments to Dilution Law in U.S.," AIPLA Spring Meeting, May 2006
  • "H.R. 683: Trademark Dilution Revisions Act," Fordham Intellectual Property, Media & Entertainment Law Journal Symposium, November 2005
  • "Trademark Case Law Update," 41st Annual Program on Intellectual Property Law, Institute for Law and Technology of the Center for American and International Law, November 2003
  • Panelist, "Dastar: Narrowing Opinion, Broad Implications," Intellectual Property Lawcast, Vol. IX, No. 7, June 2003
  • "Uncovering Victoria’s Secret - Perspectives on Dilution from Litigators and the Bench," AIPLA Mid-Winter Institute, January 2003
  • "Trade Dress Protection: Wal-Mart, TrafFix, and the Future," 40th Annual Program on Intellectual Property Law, Institute for Law and Technology of the Center for American and International Law, November 2002
  • "Recent Developments in the Use of Dilution Surveys: Implications of the Victoria's Secret Case," 15th Annual Symposium on Intellectual Property Law and the Corporate Client, Corporate Counsel Center of Northwestern University School of Law, October 2002
  • "Trademark Law Update," IPO Annual Meeting, November 2001
  • "Trademark Legislation Update," 38th Annual Institute on Patent Law, Southwestern Legal Foundation, November 2000
  • "Trademark Law Update," 16th Annual Institute on Intellectual Property Law, HIPLA-UHLC, October 2000
  • "Trademark Law Update," Annual Convention Intellectual Property Law Section Seminar, State Bar of Texas, June 2000
  • "How to Design Dilution Surveys," AIPLA Annual Meeting, October 1998
  • "Comparative and False Advertising," Professional Development, Intellectual Property Law for the Non-IP Specialist, State Bar of Texas, March 1997
  • "Proving Likelihood of Confusion in the Fifth Circuit," 9th Annual Intellectual Property Law Institute, HIPLA-UHLC, October 1993
  • "False Advertising: What Is It and What Are Its Consequences?" Selected Topics for the New and Non-Specialist, Intellectual Property Law Institute, State Bar of Texas, March 1993
  • "Monetary Recovery in Trademark Cases," AIPLA Annual Meeting, October 1990

Published Cases

  • Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, 110 U.S.P.Q. 2d 1182 (TTAB 2014)
  • Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 U.S.P.Q.2d 1949 (TTAB 2014)
  • In re Bose Corp., 580 F.3d 1240, 91 U.S.P.Q. 2d 1938 (Fed. Cir. 2009) (counsel for amicus curiae AIPLA)
  • Board of Regents, The University of Texas System, on behalf of The University of Texas at Austin v. KST Electric, Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008)
  • 3M Co. v. Icuiti Corp., 2006 WL 1579816 (D. Minn. 2006)
  • 3M Co. v. Intertape Polymer Group, Inc., 423 F.Supp.2d 958 (D. Minn. 2006)
  • Ingram Micro Inc. v. TESSCO Communications, Inc., 62 U.S.P.Q.2d 1861 (C.D. Cal. 2002)
  • Kellogg Co. v. Exxon Corp., 50 U.S.P.Q.2d 1499 (W.D. Tenn. 1998), rev’d and remanded, 209 F.3d 562, 54 U.S.P.Q.2d 1413 (6th Cir.), cert. denied, 121 S.Ct. 340 (2000), on remand, 192 F. Supp. 2d 790, 59 U.S.P.Q.2d 1551 (W.D. Tenn. 2001)
  • Southeastern Louisiana Entertainment, L.L.C. v. Hollywood Entertainment Corp., 56 U.S.P.Q. 2d 1688 (E.D. La. 2000)
  • Westchester Media Co. v. PRL USA Holdings, Inc., 214 F.3d 658, 55 U.S.P.Q.2d 1225 (5th Cir. 2000)
  • 3M Co. v. Beautone Specialties Co., Ltd., 82 F. Supp.2d 997, 53 U.S.P.Q.2d 1878 (D. Minn. 2000)
  • Quiksilver, Inc. v. Academy Corp., 1998 WL 874929 (N.D. Tex. 1998)
  • 3M Co. v. Taylor, 21 F. Supp. 2d 1003, 48 U.S.P.Q.2d 1701 (D. Minn. 1998)
  • 3M Co. v. Dole, 1997 TTAB LEXIS 125 (TTAB 1997)
  • All Video, Inc. v. Hollywood Entertainment Corp., 929 F. Supp. 262, 40 U.S.P.Q.2d 1130 (E.D. Mich. 1996)
  • Burger King Corp. v. Pilgrim’s Pride Corp., 22 U.S.P.Q.2d 1626 (S.D. Fla. 1992), aff’d, 15 F.3d 166 (11th Cir. 1994)
  • MDT Corp. v. New York Stock Exchange, Inc., 858 F. Supp. 1028, 30 U.S.P.Q.2d 1849 (C.D. Cal. 1994)
  • CJC Holdings, Inc. d/b/a ArtCarved v. Wright & Lato, Inc., 979 F.2d 60 (5th Cir. 1992)
  • Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc., 951 F.2d 684, 21 U.S.P.Q.2d 1641 (5th Cir. 1992)