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Anthony J. Malutta

LinkedIn
Partner
San Francisco,  CA  U.S.A.
Phone+1 415.273.7507

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Experience & Credentials
 

Practice Areas

  • Intellectual Property
  • Trademark
  • International Strategy
  • Copyright
  • Internet
  • Portfolio Strategy & Management
  • Trademark & Trade Dress Litigation
 
University University of California, Santa Barbara, B.A., Economics, 1993
 
Law SchoolSanta Clara University School of Law, J.D., 1997
 
Admitted1997, California; U.S. Supreme Court; U.S. Court of Appeals for the Ninth Circuit; U.S. District Court for the Central District of California; U.S. District Court for the Northern District of California; U.S. District Court for the Southern District of California; U.S. District Court for the District of Colorado
 
Biography

Anthony Malutta is Co-Leader of the firm's Trademark & Copyright Team. Mr. Malutta advises leading brand owners regarding the acquisition, use and enforcement of rights under U.S. and international trademark and copyright laws. Mr. Malutta has a focused specialization in the management of large global trademark portfolios. Complementing Mr. Malutta's brand counseling is his significant experience litigating intellectual property disputes in federal and state courts, as well as before the Trademark Trial and Appeal Board.

Mr. Malutta also maintains an active practice counseling clients on issues related to the Internet, including the development of comprehensive on-line brand protection plans, resolving domain name disputes, and advising clients regarding DMCA issues.

During law school Mr. Malutta spent a summer studying international commercial law at the University of Hong Kong. While studying in Hong Kong, he also gained broad exposure to Hong Kong's legal system through an internship with a local law firm.

Client Milestones

Mattel, Inc. v. Zappos.com, Inc., (C.D. Cal. 2006). Represented Zappos.com in a suit alleging infringement of the BARBIE trademark.

Flotsam of California v. Huntington Beach Conference and Visitor's Bureau, (N.D. Cal. 2006). Pro Bono representation of a small Santa Cruz retailer in defense of its right to use the geographically descriptive SURF CITY name.

Qwest Communications International Inc. v. Sonny Corporation, (W.D. Wash. 2006). Represented Qwest in a suit alleging trademark dilution caused by Defendant's use of the QWESTY trademark. Defendant's Motion to Dismiss for lack of personal jurisdiction denied. Qwest v. Sonny, 2006 U.S. Dist. LEXIS 29832 (W.D. Wash. 2006) (finding that a handful of sales of the product at issue into the jurisdiction sustained personal jurisdiction of an out of state defendant).

Dreyer's Grand Ice Cream, Inc. v. Unilever, (N.D. Cal. 2005) (T.T.A.B. 2005). Represented Dreyer's in co-pending District Court and TTAB proceedings regarding its SLOW CHURNED trademark.

Qwest Communications International Inc. v. Various Domain Name Infringers, (National Arbitration Forum 2003-2005). Successfully prosecuted over fifteen separate domain name arbitrations for Qwest.

Alstyle Apparel v. American Activewear, Inc., (C.D. Cal. 2005). Represented clothing manufacturer Alstyle in a trademark infringement action regarding a competitor's use of a similar mark.

Perfect 10, Inc. v. Visa International Service Association, MasterCard International, et al., 2004 U.S. Dist. LEXIS 27477 (N.D. Cal. 2004); aff'd 494 F.3d 788 (9th Cir. 2007), cert. denied, 128 S. Ct. 2871 (2008). Defended Visa in a suit alleging vicarious and contributory trademark and copyright liability for providing financial services to operators of websites that infringed plaintiff's copyrighted images. Motion to dismiss granted. Judgment affirmed on appeal.

Monster Cable Products, Inc. v. Ultralink, Inc., (N.D. Cal. 2003). Defended Ultralink in a trade dress and design patent case regarding audio/video cabling and related packaging.

Professional & Community Activities

American Intellectual Property Law Association (AIPLA)

Bar Association of San Francisco

California Lawyers for the Arts

International Anti-Counterfeiting Coalition

International Trademark Association (INTA)

INTA Anti-Counterfeiting Committee, 2010-present; Member, China Subcommittee

INTA Saul Lefkowitz Moot Court Committee: Member, Western Competition Sub-Committee, 2000-2006; Chair, Western Competition Sub-Committee, 2002-2003; Member, National Problem Sub-Committee, 2006-2009

San Francisco Intellectual Property Association

Industries

Consumer Products & Retail; Financial Services; Food, Beverage & Agriculture; Technology & Software; Transportation

Publications

08 August 2011, New gTLD Roll-Out at a Glance, Legal Alerts

04 August 2011, New. XXX Domains are Coming Soon: What Trademark Owners Need to Know to Opt-Out Now, Legal Alerts

30 March 2011, Internet Content Providers Beware: You Could End Up in New York, Legal Alerts

News

26 August 2011, Kilpatrick Townsend's Anthony Malutta to speak at the University of San Francisco Law School's Legal Writing Conference, In the News

Events

13 May 2004, Resolving International Domain Name Disputes Under the UDRP and ACPA, Events

 
ISLN913965373
 

Documents by this lawyer on Martindale.com

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New .XXX Domains are Coming Soon: What Trademark Owners Need to Know to Opt-Out Now
Stephen Feingold,Anthony J. Malutta,Daniel H. Marti,Judith A. Powell, August 19, 2011
Earlier this year, the Internet Corporation for Assigned Names and Numbers (ICANN) created a .XXX top-level domain (TLD) to be used on behalf of the adult entertainment community. As can be expected, many brand owners protested the planned roll-out of a sponsored .XXX TLD, and remain concerned over...
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Office Information

Anthony J. Malutta
Kilpatrick Townsend & Stockton LLP

San Francisco, CA 94111




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