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Managing Principal
jkim@ipla.com
John Kim grew up in Southern California and has lived here most of his life. John graduated from U.C. Santa Barbara with a Business-Economics degree and obtained his law degree from Santa Clara University School of Law, where he was awarded the High Tech Law Certificate recognizing his completion of a rigorous curriculum of IP studies.
John has handled all aspects of trademark law, including clearance, filing and prosecution of trademarks, trademark oppositions and cancellations, licensing and litigation. John has also handled numerous domain name disputes and has negotiated the purchase and sale of countless domain names. John’s copyright experience is equally extensive and he has worked with companies such as Dr. Seuss Enterprises and Gemological Institute of America in handling their copyright issues.
John was previously associated with Gray Cary (now DLA Piper) where he supervised the trademark and copyright department in the San Diego office. John has spoken extensively in the areas of trademark and copyright law and has handled and seen just about every situation imaginable. For example, John was part of a team of lawyers who filed complaints for trademark counterfeiting in the U.S., Italy and Israel against an Israeli national who was selling diamonds with counterfeit diamond grading reports. John’s diverse background allows him to approach intellectual property matters with the knowledge it takes to effectively advise clients regarding their IP rights and to quickly resolve difficult IP disputes.
| Bar Admissions |
| • California Bar |
| • United States District Court for the Southern District of California |
| • United States District Court for the Central District of California |
| • United States District Court for the Northern District of California |
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| Education |
| • Juris Doctor, Santa Clara University School of Law, 1996. |
| • Bachelor of Arts in Business Economics, University of California at Santa Barbara, 1993. |
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| Awards |
| John was awarded Top Trademark Attorney – San Diego in 2007, 2008, and 2010. |
| • San Diego Source's Top Attorneys of 2010 [link] |
| • San Diego Source's Top Attorneys of 2008 [link] |
| • San Diego Source's Top Attorneys of 2007 [link] |
| Recent Transactional Matters [Expand] |
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Currently handling the prosecution and enforcement of all Zynga game marks, including FarmVille, PetVille, FishVille, Mafia Wars, Treasure Isle, and FrontierVille. Zynga is the largest social gaming company in the world and FarmVille is the largest game played on the internet boasting more than 200 million monthly users.
Assumed responsibility for and handled the worldwide trademark portfolio of Den-Mat Holdings, one of the largest and most well known dental products companies in the world. Den-Mat owns or has owned such brands as Lumineers and Rembrandt.
Assumed responsibility for and handled the worldwide trademark portfolio of Mentor Corporation, the largest manufacturer of breast implants in the world.
Handled, organized and streamlined the worldwide trademark portfolio of Inamed Corporation, the second largest manufacturer of breast implants in the world. Inamed Corporation was sold to Allergan in one of the largest medical device acquisitions of this decade.
Handled, organized and streamlined the worldwide trademark and copyright portfolio of Dr. Seuss Enterprises, the owner of numerous famous children’s books, as well as merchandise and license rights to such books.
Negotiated the sale of iradio.com to Motorola for an amount four times higher than expected by the client.
Represented Dermstore in the sale of its online skin care business to large online retailer, Intelligent Beauty. |
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| Recent Litigation Matters [Expand] |
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DKN Hotels v. Raffles Ltd
Represented plaintiff in a trademark infringement case where the defendant claimed senior rights to the “Raffles” mark in the United States due to the alleged fame of the mark in Singapore without any proof of prior use in the United States. Settlement of dispute in favor of client during the discovery phase.
Product Partners v. Intelligent Beauty
Represented defendant in a trademark infringement case involving the mark Beauty Fix. Settlement of dispute in favor of client before discovery was initiated.
Directo Hispanic v. Directo Hispano
Represented plaintiff in trademark infringement case involving the nearly identical mark Directo Hispano used in connection with similar advertising and marketing services. Settlement of dispute in favor of client before discovery was initiated.
adidas v. California Board Sports, Inc.
Represented defendant in a trademark infringement case involving a claim by adidas that it owned the exclusive right to the design of two, three and four stripes on shoes. Settlement of dispute in favor of client immediately after complaint was filed.
California Board Sports, Inc. v. Vans, Inc.
Represented plaintiff in a Declaratory Relief action seeking a declaration from the court that Vans, Inc. did not own the exclusive right to the design of a black and white checkerboard for use on action sports shoes. Settlement of dispute in favor of client before trial.
Gemological Institute of America v. Moti Weisbrot, et. al
Represented plaintiff in a multi-country counterfeiting enforcement action involving counterfeit diamond grading reports that spanned three countries and involved multiple defendants. Successful seizure of counterfeit diamond grading reports and diamonds and immediate settlement with defendants in favor of client. |
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