J. Paul Williamson

pwilliamson@pirkeybarber.comDirect: (571) 395-4633

Paul began as a Trademark Examining Attorney for the U.S. Patent and Trademark Office (USPTO) and subsequently served as the Trademark Petitions and Special Projects Attorney for the U.S. Assistant Commissioner of Trademarks.  After five years with the USPTO, he moved into private practice where ever since he has concentrated on trademarks, copyrights and related unfair competition issues.

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Paul has handled all aspects of trademark litigation and Trademark Trial and Appeal Board practice.  In particular, he has been involved in hundreds of Board proceedings over his career.  Trademark prosecution and enforcement, both domestic and international, are also an important part of his practice, along with counseling clients on trademark portfolio management, the policing and enforcing of trademark rights, and trademark licensing issues.

Paul’s work has been for clients in a wide variety of industries with varied product and service offerings, including semiconductors, computer hardware and software, online information, telecommunications, paper, publications, industrial products and equipment, clothing, food, restaurant, pharmaceutical, and insurance and financial services.

Paul received a B.S. in Aeronautical Engineering from Purdue University and a J.D. from The University of Illinois School of Law.

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“He is one of the finer trademark practitioners in the United States and I have nothing but the utmost respect for him.”

World Trademark Review's WTR 1000 (2017)

“His mantelpiece is adorned with client service awards - a testament to his unswerving commitment to the cause of the brand owner.”

WORLD TRADEMARK REVIEW'S WTR 1000 (2016)

“Williamson is a 'great strategist' who specializes in dispensing guidance 'in a practical manner that is always applicable to the business.' ”

WORLD TRADEMARK REVIEW'S WTR 1000 (2015)

EDUCATIONAL BACKGROUND

  • J.D., The University of Illinois School of Law
  • B.S., Purdue University

HONORS

  • WTR 1000 The World’s Leading Trademark Professionals, World Trademark Review (2015 – 2017)
  • Who’s Who Legal: The International Who’s Who of Trademark Lawyers, Law Business Research Ltd. (2002-2013, 2015-2016)
  • International Law Office’s Client Choice Award in the District of Columbia (2014)
  • Guide to the World’s Leading Trademark Practitioners, Euromoney Legal Media Group (2004 – Present)
  • “Washington D.C. & Baltimore’s Top Rated Lawyers,” LexisNexis Martindale-Hubbell Publications (2012)
  • Martindale-Hubbell AV Preeminent® Peer Review Rated 5.0*

* AV®, BV®, AV Preeminent® and BV Distinguished® are registered certification marks of MH SUB I, LLC, used in accordance with the Martindale-Hubbell certification procedures, standards and policies.

PROFESSIONAL ACTIVITIES AND MEMBERSHIPS

    • International Trademark Association (INTA)
      • Emerging Issues Subcommittee, Issues Policy Committee (2002-2005)
      • Trademark Clearance Subcommittee, Emerging Issues Committee (2006-2007)
      • Issues Identification Subcommittee, Emerging Issues Committee (2010-2011)
      • Enforcement Committee, Trademark Policy Advocacy, Team Leader (2014-2015)
      • Trademark Enforcement Policy Advocacy, Task Force Leader (2016-2017)
    • American Intellectual Property Law Association (AIPLA)
    • American Bar Association
    • State Bar of Virginia
    • State Bar of Texas
    • State Bar of Illinois
    • Bar of the District of Columbia

SPEECHES AND PUBLICATIONS

  • Co-Presenter, “How to Protect a Creative Work,” National Press Club, Washington, D.C., April 2015
  • Co-author, “Trademark Clearance Opinion (Outside Counsel),” Practical Law Company, December 2014
  • Co-author, “Uniform Domain Name Procedure (UDRP) Complaint,” Practical Law Company, September 2014
  • Co-author with Tara Vold, “Trademark Searching and Clearance,” Practical Law Company, October 2011, updated 2016
  • Co-author with Tara Vold, “Trademark Owners: USPTO Promulgates Request for Comments on ‘Bullying’ Trademark Litigation Tactics,” Fulbright Briefing, November 18, 2010
  • Co-author with Tara Vold, “Supreme Court Holds That Federal Court Retains Jurisdiction Over Unregistered Copyrights Even Where Registration Precondition Is Not Met,” Fulbright & Jaworski L.L.P. Briefing, March 11, 2010
  • Co-author with Tara Vold, “Claims of Fraud Before the U.S. TTAB: Looking Forward,” International Trademark Association Bulletin, Vol. 64 No. 23, December 15, 2009
  • Co-author, “Program IV: Global Intellectual Property: Trademark, Copyright and Internet Highlights,” The Embassy Row Series, September 16, 2008