Jonathan W. Thomas

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Biography

Jonathan W. Thomas represents clients in complex litigations, transactions, due diligence, and advisory matters related to intellectual property. He litigates trademark, trade secret, advertising, and copyright disputes throughout the country. Jonathan’s IP litigation experience spans from trials and arbitrations, to temporary restraining orders, summary judgment, and motions to dismiss. He also represents clients in putative false-advertising class actions; in arbitrations; in Uniform Dispute Resolution Proceedings; before the Trademark Trial and Appeal Board, and at the WIPO Arbitration and Mediation Center. Jonathan is the U.S. Litigation Taskforce Chair of the International Trademark Association’s Non-Traditional Marks Committee.

In addition to working on intellectual property disputes, Jonathan manages global intellectual property portfolios and handles the licensing of domestic and international intellectual property rights, including copyrights, technical expertise, trademarks, and trade dress. He also conducts intellectual property due diligence for mergers and acquisitions and internal investigations concerning potential fraud and other malfeasance. Jonathan works with clients to minimize their business risk by counseling them on advertising, copyright, domain name, trademark, and trade dress matters, and assists with developing internal intellectual property guidelines and practices. Additionally, Jonathan advises clients on laws and regulations governing contests, sweepstakes, and promotions throughout the United States, from terms and conditions to in-store promotional displays.

Concentrations

•Trademark litigation
•Trade secret litigation
•Copyright litigation
•Advertising litigation
•Class-action defense
•IP counseling, due diligence, enforcement, licensing, prosecution, and transactions

Recognition & Leadership

Awards & Accolades

•Listed, Super Lawyers magazine, New York Metro Super Lawyers, “Rising Stars,” 2018-2025

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Areas of Practice (6)

  • Intellectual Property & Technology
  • Copyright Registration & Licensing
  • Intellectual Property Litigation
  • Trade Secrets
  • Trademark & Brand Management
  • Retail

Education & Credentials

University Attended:
University of Kentucky, B.A., magna cum laude; Four-year member of varsity cross-country and track-and-field teams, 2007
Law School Attended:
Ohio State University, Michael E. Mortiz College of Law, J.D., cum laude; Chief Editor, Ohio State Entrepreneurial Business Law Journal, 2011
Year of First Admission:
2012
Admission:
2012, New York
Memberships:

Professional & Community Involvement

•Member, International Trademark Association, Present
•U.S. Litigation Taskforce Chair, Non-Traditional Marks Committee, 2024-2025

Reported Cases:
Experience: Representative Matters: Obtained temporary restraining order and preliminary injunction against former U.S. distributor of PAPER SHOOT-brand cameras in 32, 43(a) trademark and false-advertising action.; Obtained dismissal of complaint against YouTube in a 32, 43(a) trademark and false-advertising action.; Obtained precedential temporary restraining order and preliminary injunction for 3M in a trademark and false-advertising action concerning price-gouging of PPE during COVID-19.; Defeated preliminary injunctions sought against organizers of WOODSTOCK festival in a 32, 43(a) trademark action.; Defeated summary judgment sought against Capri Sun in a breach-of-contract and 32 trademark action.; Represented Capri Sun in international arbitration, including conducting direct and cross-examinations at hearing.; Defeated putative false-advertising class action under California law on behalf of Shop LC concerning price discounts.; Obtained dismissal of putative false-advertising class action under California law on behalf of RCA concerning product-specification claims.; Struck three putative-expert reports submitted against Blue Bottle Coffee in a 32, 43(a) trademark and trade-dress action.; Recovered numerous domain names for Goya Foods in a 43(d)(2) in rem proceeding.; Represented Property Markets Group in trademark action concerning E11EVEN -branded real-estate developments.; Represented Goya Foods in an NAD proceeding concerning product-substantiation claims.; Represented Nespresso USA, Inc. in a 43(a) trade-dress action against Williams-Sonoma.; Represented Nespresso USA, Inc. in a 32, 43(a) trademark and trade-dress action against Peet's Coffee.; Represented Nestle in A 32 trademark actions concerning PERSONA NUTRITION-branded vitamins and supplements.; Represented Curtis International Ltd. In A 43(a) false-advertising action brought by Epson America concerning lumens ratings.; Represented the Tournament of Roses Association against the City of Pasadena in A 32 trademark action concerning the ROSE BOWL marks.; Prevailed at trial on behalf of Pintrips in a trademark action.; Prevailed at trial on behalf of Beam Suntory in a trademark action.; The above representations were handled by Mr. Thomas prior to his joining Greenberg Traurig, LLP.
ISLN:
1000417532

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www.gtlaw.com/en/professionals/t/thomas-jonathan-w

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