Carlo F. Van den Bosch is the former co-chair of the firm's Intellectual Property Practice Group, which has been recognized by U.S. News & World Report with a National Tier 1 ranking.
Mr. Van den Bosch has been profiled as one of 75 Leading IP Litigators in California, and is recognized among the world's leading trademark professionals.
Mr. Van den Bosch has appeared before a variety of trial and appellate courts, including the United States Supreme Court, where he successfully argued a trademark matter to a unanimous decision in 2015.
•Intellectual Property, Legal 500, 2013, 2015
•Leading Trademark Professional, World Trademark Review 1000, 2013-2015
•Future Star, Benchmark Litigation, 2009-2015
•Top IP Litigator, Daily Journal, 2012, 2015
•75 Leading IP Litigators, Daily Journal, 2010
•Rising Star: Top 10 IP Attorneys Under 40, Law360, 2010
•Martindale-Hubbell - AV Peer Review Rating
•Southern California Super Lawyers, Intellectual Property Litigation, 2005-2015
Mr. Van den Bosch handles high-stakes IP litigation across many industries.
Mr. Van den Bosch successfully argued before the United States Supreme Court and obtained a unanimous decision on behalf of his client in a trademark infringement matter where the plaintiff sought damages in excess of $40 million. Hana Financial v. Hana Bank. 574 U.S. ___ (2015). The Supreme Court resolved a Circuit split involving the doctrine of trademark tacking in its first substantive trademark decision in nearly a decade.
Mr. Van den Bosch successfully argued the same matter before the Ninth Circuit Court of Appeals, 735 F.3d 1158 (9th Cir. 2013), after obtaining a unanimous jury verdict and final defense judgment in 2011 on three independent theories at trial-priority, laches, and unclean hands. Hana Financial, Inc. v. Hana Bank (C.D. Cal. Case No. CV07-1534-PA).
In Wyatt Technology Corp. v. Smithson, et al. (C.D. Cal. Case No. CV05-1309 DT), Mr. Van den Bosch represented the defendants in a high-tech intellectual property dispute involving dynamic light scattering technology used to measure the size and distribution of molecular particles in liquid solutions. Mr. Van den Bosch prevailed on summary judgment and secured an award of attorneys' fees and punitive damages for his clients.
In Taylor Made Golf Company, Inc. v. MJT Consulting Group, 265 F. Supp. 2d 732 (N.D. Tex. 2003), Mr. Van den Bosch successfully represented the plaintiff against a distributor of counterfeit merchandise.
Mr. Van den Bosch prevailed in a federal jury trial on behalf of the plaintiff in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), a seminal case in the area of domain name and meta tag infringement. The jury awarded actual and punitive damages, and the court awarded attorneys' fees.
Other representations include the successful defense of Disney and ABC in an infringement suit filed by the owner of comic strip characters, the representation of ESPN in a trademark and copyright infringement suit involving a reality television program, the representation of Fox in a trademark infringement suit over the name of one of its television networks, and the representation of The Gator Corporation in multidistrict trademark litigation involving pop-up Internet advertising.
Global Intellectual Property Portfolio Management
Mr. Van den Bosch manages an experienced trademark team that handles the global protection and enforcement of intellectual property portfolios. He designs long-term strategies for securing and maintaining maximum protection and value of intellectual property assets.
Mr. Van den Bosch's experience extends to corporate and transactional matters, including the negotiation and preparation of intellectual property and technology agreements.
Publications & News
•The Leading Intellectual Property Attorneys in California 2015
Daily Journal, April 22, 2015
•Supreme Court Update - Hana Financial v. Hana Bank
The National Law Review, February 2015
•Supreme Court Resolves Circuit Split on Trademark Tacking
The Recorder, January 23, 2015
•Sheppard Mullin Secures Trademark Win in U.S. Supreme Court
Daily Journal, January 22, 2015
•High Court Says Trademark Tacking Up To Juries
Law360, January 21, 2015
•Sheppard Mullin Team Argues U.S. Supreme Court Trademark Case for Hana Bank
December 3, 2014
•Vying for the Best in Intellectual Property
Daily Journal, February 9, 2011
•75 Leading IP Litigators
Partner Carlo Van den Bosch Named One of 75 Leading IP Litigators
Daily Journal, April 17, 2010
•Rising Star: Sheppard Mullin's Carlo Van den Bosch
Law360, April 1, 2010
•Meet Our New Leaders in Intellectual Property
April 4, 2007
Daily Journal, February 2000
•Brand Launch in the United States: How to Secure Trademark Rights and Avoid Litigation
March 11, 2015