John C. Baum

John C. Baum concentrates on trademark and copyright enforcement, prosecution, and litigation. He specializes in counseling brand-intensive businesses in trademark selection and enforcement as part of their overall business and marketing strategies.

He has experience working with clients in a variety of fields, including: apparel and fashion; biotech research and development; business, accounting, insurance, and public relations services; computer hardware, software, SaaS / PaaS, and devices; electronics and electrical engineering and manufacturing; foods and nutrition; fuels and green energy; gaming and entertainment; hospitality; internet infrastructure technology; livestock and pet products; pharmaceuticals; and retailing.

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Mr. Baum has developed strategies and coordinated large-scale trademark enforcement efforts involving hundreds of concurrent policing matters for several world-class marquee brands. He has coordinated trademark infringement and counterfeit raid actions in Hong Kong and mainland China, where a client’s successful trademark policing efforts were the subject of a television special, partially funded by Chinese government sources.  He has been involved with scores of oppositions and cancellations in Trademark Offices in the U.S. and globally. Mr. Baum’s practice includes administrative proceedings with United States Customs and Border Protection relating to the protection of United States intellectual property rights and gray market goods. He has testified as an expert witness on U.S. trademark practice and procedure.

Mr. Baum’s copyright practice includes registration and litigation of infringements ranging from graphic designs on fabrics to software code and internet website content. His counseling to a client, a plaintiff-oriented law firm, on registering its online marketing materials resulted in a substantial award of monetary damages and attorneys’ fees and led the Ninth Circuit Court of Appeals to affirm a significant decision on the law of venue in Brayton Purcell LLP v. Recordon & Recordon, 361 F. Supp. 2d 1135 – Dist. Court, ND California 2005 and 606 F. 3d 1124 – Court of Appeals, 9th Circuit 2010.

He received his JD (Order of Barristers) from the University of California in 1993, finished PhD coursework at The University of Chicago in 1986, obtained an MA from the University of Chicago in 1984, and completed a BA at Sarah Lawrence College in 1983.  He has been an active supporter of the International Trademark Association’s Saul Lefkowitz National Moot Court Competition in trademark and unfair competition for more than thirty years, is a past natIonal chair and was a member of the winning team at Nationals in the inaugural year of the competition.  He is an avid sailor and competes at the national level, with first-place finishes in recent years in races on San Francisco Bay.

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EDUCATIONAL BACKGROUND

  • 1993 J.D., University of California, Order of Barristers
  • 1986 Ph.D. coursework, The University of Chicago
  • 1984 M.A., The University of Chicago
  • 1983 B.A., Sarah Lawrence College

PROFESSIONAL ACTIVITIES AND MEMBERSHIP

  • International Trademark Association
  • Lefkowitz National Moot Court Competition
  • American Bar Association
  • International Anti-Counterfeiting Coalition (past member)
  • San Francisco Bar Association
  • San Francisco Intellectual Property Law Association

SPEECHES AND PUBLICATIONS

  • Speaker, International Trademark Association 2012 Annual Meeting: “Product Configuration and Anti-Counterfeiting Enforcement Through U.S. Customs.”  (May 2012 – Washington, D.C.), with Noel M. Cook
  • Author, “U.S. Customs and Intellectual Property Right Protection.” Daily Law Journal, March 7, 2012
  • Co-Author, “White House Announces New Anti-Counterfeiting Recommendations to Congress.” OWE IP Notes, March 2011, with Kathleen Letourneau
  • Author, “ICE and Manhattan U.S. Attorney Seize Multiple Internet Domains and Related Assets for Online Copyright Violations in Initiative to Combat Online Counterfeiting and Piracy.” Townsend IP Update, July 2010
  • Author, “White House Releases 2010 Joint Strategic Plan on IP Enforcement to Fight Counterfeiting and Piracy.” Townsend IP Update, June 2010
  • Panelist, International Anti-Counterfeiting Coalition 2010 Annual Meeting: “Protecting Non-Traditional Marks” (May 2010 – Boston, MA), panelist with in-house counsel from Levi’s, Adidas, and John Deere
  • Author, “Draft Anti-Counterfeiting Trade Agreement (ACTA) Signals A Potential Significant Increase In IP Protection At International Borders.” Townsend IP Update, April 2010
  • Co-Author, “Mark Your Produce: Trademarks and New Plant Variety Protection,” San Francisco Daily Journal, September 2004, with Elizabeth R. Gosse
  • Author, “Do You Really Know It When You See It? Definitions of “Bad Faith” in Recent ICANN Domain Name Dispute Proceedings,” San Francisco Intellectual Property Law Association, January 2002

REPRESENTATIVE CASES

  • Apple Computer, Inc. v. Grasso, USDC, Northern District – CA (Trademark, Declaratory Relief); resolved for client/plaintiff
  • Dolby Laboratories v. Dolby Enterprise, USDC, Northern District – CA (Trademark); resolved for client/plaintiff
  • CATC v. Catalyst, USDC, Northern District – CA (Trade Dress, Trademark, Copyright); settled after trial for client/defendant
  • NEIEP v. Bay Area Rapid Transit (BART), USDC, Northern District – CA (Copyright infringement); settled for client/plaintiff
  • eToys v. ETNA. USDC, Central District – CA (Declaratory Relief – service mark infringement and unfair competition) (parallel case for affirmative relief filed in New York); settled for client with assignment of challenger’s rights after motion to dismiss challenger’s New York case filed
  • Duggan’s Funeral Service v. Duggan’s Serra Mortuary, TTAB, District Court, California Superior Court (Cancellation and service mark infringement); application for temporary restraining order and motion for preliminary injunction successfully overcome. Case remanded and fees awarded
  • Monterey County Bank v. Monterey Bay Bank, California Superior Court, Salinas (Service mark infringement and unfair competition); application for temporary restraining order and motion for preliminary injunction overcome. Settled
  • The Bath & Beyond v. Bed Bath & Beyond. USDC, Northern District – CA (Trademark infringement); judgment entered and permanent injunction issued, subsequent finding of contempt with award of all fees and expenses. (42 USPQ2d 1308)
  • Chung Kai Industries, Inc. v. Dayton Hudson, USDC, Northern District – CA (Copyright infringement and unfair competition); Settled for client/plaintiff
  • In re Venquest Trading. Inc., US Customs Service, Port of San Francisco Seizure Case No, 96-2809-00881 (Administrative proceedings and appeal relating to importation of piratical copies in violation of the Copyright Act)

ADMISSIONS

State Bar of California