Jim Johnson is a member of Sutherland's Intellectual Property Practice Group, where he manages the international enforcement of the trademarks and copyrights of some of the world's most famous and valuable brands. This includes filing oppositions and lawsuits to protect valuable intellectual property rights, counseling regarding protection of such rights, and also managing international portfolios. His practice also focuses on unfair competition and domain-name disputes. Jim regularly works with clients and investigators to identify infringing marks around the world and online. He challenges such infringing and counterfeit uses of trademarks through litigation and administrative procedures, and protects the marks by developing enforcement strategies and working with global customs departments and IP rights agencies. Jim also has an extensive background in managing international portfolios, negotiating and drafting settlement agreements, and preparing clearance opinion memos and strategies. He represents clients in proceedings before the Trademark Trial and Appeal Board and in litigation before the U.S. District Courts. Prior to joining Sutherland, Jim gained extensive trademark experience as in-house counsel for The Coca-Cola Company and Kellogg Company and as an examining attorney at the U.S. Patent and Trademark Office. Representative Experience Jim's extensive representative experience includes: · Filing suit against an infringer and subsequently negotiating a worldwide settlement agreement for a clothing manufacturer, stopping the infringement of its mark in a cost-effective manner. · Conducting an internal audit of an extensive trademark portfolio for a major consumer products manufacturer. · Successfully opposing the trademark application of a client's biggest competitor. · Conducting multinational trademark searches for a Fortune 500 company and developing an international clearance strategy. · Developing and executing a multinational strategy for stopping a trademark infringement. Professional Honors and Awards · Recognized by Chambers USA: Guide to Leading Business Lawyers in the area of intellectual property (2010, 2011) · Named one of the best minority intellectual property attorneys in America by The Minority Corporate Counsel Association, Diversity and the Bar (May/June 2003) Professional and Community Involvement · Member, American Bar Association · Chairman, Trademark Committee, State Bar of Georgia · Former Member, American Intellectual Property Law Association · Former Member, Board of Directors, International Trademark Association · Member, Public Advisory Committee, U.S. Patent and Trademark Office · Member, ALI-ABA Intellectual Property Advisory Panel · Member, Intellectual Property Owners Association · Member, OHIM Subcomittee, Trademark Office Practices Committee, International Trademark Association Recent Publications and Speaking Engagements · Co-author, "Safeguarding Trade Secrets Before, During and After a Reduction in Force," Partnering Perspectives (Summer 2010) · Co-author, "Has eBay Raised the Bid for Injunctions Under the Lanham Act?" Intellectual Property Today (May 1, 2009) · Co-author, "Safeguarding Trade Risk Secrets Before, During and After a Reduction in Force," Employment Litigation Reporter (April 7, 2009) · Co-author, "The Scope Of Fraud In Multiclass Registrations," IP Law 360 (April 2, 2009) · Author, "IP and SOX: Managing Intellectual Property Assets in Accordance with Sarbanes-Oxley," Intellectual Property & Technology Law Journal (February 2009) · Author, "The Year's Top Ten Events in Trademark Law: A Year of Change," Georgia IP Law Section Newsletter (Summer 2008) · Co-author, "Reviewing the Past Year's Top 10 Trademark Trends and an Analysis of Their Impact on 2008," Intellectual Property and Technology Law Journal (February 2008) · Co-author, "Ninth Circuit Addresses Standard for Proving Likelihood of Trademark Dilution," Lexology (January 10, 2008) · Co-author, "In Focus: Intellectual Property: 2007 Stands for Crucial Year for Trademark Law," The National Law Journal (January 2008) · Panelist, "The United States Patent and Trademark Office Current Developments, Initiatives and Challenges in 2011," INTA Trademark Administrators Conference (October 4, 2011) · Speaker, "Global Perspective on Cease and Desist Letters: How to Avoid Declaratory Judgment Actions and Unjustified Threats." IPO 2011 Annual Meeting (September 11-13, 2011) · Speaker, "Safeguarding Intellectual Property Rights Before, During and After a Reduction in Force," INTA Annual Meeting (May 14, 2011) · Speaker, "Trademark Law Update," 22nd Annual North American Entertainment, Sports and Intellectual Property Law Conference (November 4-8, 2010) · Moderator, "Managing Trademarks in Unmanageable Times - How Major Trademark Owners Protect Their Brands in the Face of Adversity," Georgia State University's 2010 Corporate Intellectual Property Institute (November 4-5, 2010) · Panelist, "Recent Updates in Trademark & Copyright Law," Atlanta IPO Association Annual Meeting 2010 (September 12-14, 2010) · Speaker, "Trademark and Copyright Strategies," Georgia Tech - College of Management (April 12, 2010) · Speaker, "In re Bose: Strategies for Trademark Prosecution Under the New Frauds Standard, N/A," Webinar (October 20, 2009) · Speaker, 2008 Corporate Intellectual Property Institute (October 28-29, 2008) · Speaker, Georgia State University College of Law Corporate IP Roundtable (September 9, 2008) · Speaker, "U.S. Trademark Dilution Revision Act: Has It Been an Effective Solution for Dilution?" INTA 2008 Annual Meeting (May 17-21, 2008) · Speaker, National Society of Black Engineers' 34th Annual Convention (March 19-23, 2008) Industries Consumer Products News Sutherland Attorneys, Practices Top Chambers USA 2011 Rankings
April 14, 2011 Sutherland Earns Top Chambers USA 2010 Rankings
July 7, 2010 Lawmakers Back USPTO Bid To Hold On To Fees
May 5, 2010 Reprinted with permission Intellectual Property Law360, http://www.law360.com Sutherland's James H. Johnson, Jr. to Testify Before House Judiciary Committee
May 4, 2010 Legal Alerts Legal Alert: XXX Domains: Prevention is Better than the Cure
September 6, 2011 Legal Alert: ICANN Formally Adopts New Generic Top-Level Domain Name Program, Postpones Application Period
June 20, 2011 Legal Alert: New Generic Top-Level Domain Name Application Procedures Are in the Home Stretch
June 14, 2011 Legal Alert: Federal Circuit Rejects Medinol Fraud Standard
August 31, 2009 Legal Alert: Trademark Public Advisory Committee Can Be Your Voice at the USPTO
July 8, 2009 Legal Alert: TTAB Continues to Ease Medinol Fraud Standard
June 3, 2009 Legal Alert: World Intellectual Property Organization Announces 2008 Was a Record Year for Cybersquatting Cases
March 26, 2009 Legal Alert: PRO-IP Act Promises Increased Focus on IP Rights and Expanded Counterfeiting Remedies
January 5, 2009 Legal Alert: Eleventh Circuit Finds Meta Tag Use Actionable Under the Lanham Act
April 25, 2008 Legal Alert: Ninth Circuit Addresses Standard for Proving Likelihood of Trademark Dilution
January 10, 2008 Publications Safeguarding Trade Secrets Before, During and After a Reduction in Force
Summer 2010 Partnering Perspectives Has eBay Raised the Bid for Injunctions Under the Lanham Act?
May 1, 2009 Reprinted with permission Intellectual Property Today Safeguarding Trade Secrets Before, During and After a Reduction in Force
April 7, 2009 Reprinted with permission Employment Litigation Reporter The Scope Of Fraud In Multiclass Registrations
April 2, 2009 Reprinted with permission IP Law 360, http://www.law360.com IP and Sox: Managing Intellectual Property Assets in Accordance with Sarbanes-Oxley
February 2009 Reprinted with permission Intellectual Property & Technology Law Journal The Year's Top Ten Events in Trademark Law: A Year of Change
Summer 2008 Reprinted with permission Georgia IP Law Section Newsletter Reviewing the Past Year's Top 10 Trademark Trends and an Analysis of Their Impact on 2008
February 2008 Reprinted with permission Intellectual Property and Technology Law Journal Ninth Circuit Addresses Standard for Proving Likelihood of Trademark Dilution
January 10, 2008 Reprinted with permission, Globe Business Publication, Appeared in Lexology In Focus: Intellectual Property: 2007 Stands for Crucial Year for Trademark Law
January 2008 The National Law Journal Weathering the Perfect Storm: Product Placement and Intellectual Property
This article explores different applications of intellectual property rights used in the media....
November 18, 2005 Reprinted with permission, Washington Legal Foundation Events INTA Trademark Administrators Conference
October 2-4, 2011 IPO 2011 Annual Meeting
September 11-13, 2011 International Trademark Association 2011 Annual Meeting
May 14-18, 2011 Fraud in Trademark Cases: Impact of the Bose Case
April 23, 2010 Trademark and Copyright Strategies
April 12, 2010 In re Bose: Strategies for Trademark Prosecution Under the New Fraud Standard, N/A
October 20, 2009 2008 Corporate Intellectual Property Institute
October 28-29, 2008 Georgia State University College of Law Corporate IP Roundtable
September 9, 2008 INTA 2008 Annual Meeting
May 17-21, 2008 National Society of Black Engineers' 34th Annual Convention
March 19-23, 2008 National Bar Association 82nd Annual Convention and Exhibits
July 28 - August 4, 2007 Hot Topics and Trends in Sports
April 19, 2007 from 2pm until 5:30pm 18th Annual Southern Regional Entertainment & Sports Law Conference
November 3, 2006 American Intellectual Property Law Association Spring 2006 Meeting
May 3-5, 2006 INTA Leadership Meeting
November 9-12, 2005 State Bar of Georgia Intellectual Property Law Section CLE Programs
March 17, 2005 INTA March Due Diligence Workshops
March 15, 2005 TechLaw Speaker Series
February 7, 2005 Public Charities in Georgia Seminar
January 25, 2005 Trademark Portfolio Acquisition and Protection Workshop
November 3, 2004 International Trademark Association 2004 Annual Meeting
May 1-5, 2004 Handling Intellectual Property Issues in Business Transactions 2004
April 1-2, 2004 Strategic Intellectual Property Planning
January 26-27, 2004 |