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Baker & Hostetler LLP

International Intellectual Property Return to Practice Areas & Industries

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Practice/Industry Group Overview

Baker Hostetler has long standing relationships and a strong network of associated quality Intellectual Property (IP) firms throughout the world. Through these relationships we coordinate the acquisition of patent, trademark and copyright registrations, prepare and draft agreements, and design and implement enforcement programs in more than 100 countries.

Our IP team includes a former Senior Investigative Attorney for the United States International Trade Commission (ITC) and we have successfully represented clients in "Section 337" investigations at the ITC. These proceedings are especially fast, complex and can lead to the issuance of orders that bar importation into the U.S. of items that infringe U.S. IP rights or otherwise unfairly compete. We record clients' trademarks and copyrights with U.S. Customs which we subsequently follow up with coordination programs at Customs offices. These programs are designed to educate Customs agents regarding clients' rights, products and authorized dealers to increase the likelihood that infringing goods will be seized at ports and borders.

Members of our team have also consulted on revisions and development of the IP laws for South Korea, Taiwan and Thailand, have served in the office of the Chief Senior Counsel for the Central Government of India, and regularly appear in actions before the ITC.

Leadership in Action

IP Litigation: Successfully represented one of the largest shirt manufacturers in the world accused of patent infringement

Client: Esquel Enterprises, Ltd. Of Wanchai, Hong Kong and Esquel Apparel, Inc. of New York, New York.

Type of Matter: ITC Section 337 Investigation.

Our Client's Challenge: Alleged infringement of claims in five different U.S. patents owned by TAL Apparel Limited of Hong Kong (and related entities).

The Goal: Ensure that client's products are not barred from the U.S. market.

Our Strategy: Rapidly gather evidence and present arguments on all issues.

Results: Successfully secured the withdrawal of all allegations of infringement against the Esquel companies.

Leadership in Action

International IP: Navigating stringent Mexican trademark laws

Client: A leading United States manufacturing company

Type of Matter: Trademark infringement lawsuit and cancellation action before the Mexican Institute of Industrial Property.

Our Client's Challenge: A former distributor's unlawful use and registration of the client's trademark.

The Goal: Stop the use, despite the defendant's claim to be the rightful trademark owner in Mexico.

Our Strategy: Work with local Mexican counsel to initiate and execute a raid on the former distributor's facility in Mexico to seize counterfeit product.

Results: Successfully navigated stringent Mexican trademark laws in strategizing future action, gathering acceptable evidence and advising the client, and seized the inventory of counterfeit goods and entered into settlement talks.

About our Intellectual Property Team

Our team of dedicated IP lawyers and patent agents have the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the ITC, the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).

Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology, and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.

Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.

About Baker Hostetler

Baker Hostetler lawyers help clients establish, maintain and protect market-leading positions across the United States and around the world. We offer clients the strength of 600+ lawyers in a full range of practices, a unique geographic platform including both the coasts and the center of the country, a deep knowledge of industry issues, and a 90-year track record of excellence and achievement.

For more information on our International Intellectual Property practice:

National Contact

John H. Weber
202.861.1526
jweber@bakerlaw.com

Cincinnati

William Appleton
513.929.3403
wappleton@bakerlaw.com

Cleveland

Thomas H. Shunk
216.861.7592
tshunk@bakerlaw.com

Deborah A.Wilcox
216.861.7864
dwilcox@bakerlaw.com

Columbus

Rosanne T. Yang
614.462.2684
ryang@bakerlaw.com

Costa Mesa

George T. Mooradian
714.966.8800
gmooradian@bakerlaw.com

Denver

Raymond L. Sutton
303.764.4103
rsutton@bakerlaw.com

Houston

Lisa H. Pennington
713.646.1303
lpennington@bakerlaw.com

Los Angeles

James E. Doroshow
310.442.8818
jdoroshow@bakerlaw.com

C. Dennis Loomis
310.442.8865
dloomis@bakerlaw.com

New York

Gerald J. Ferguson
212.589.4238
gferguson@bakerlaw.com

Orlando

G. Thomas Ball
407.649.4004
tball@bakerlaw.com

Washington, DC

Gary J. Rinkerman
202.861.1699
grinkerman@bakerlaw.com

Kenneth J. Sheehan
202.861.1682
ksheehan@bakerlaw.com