John M. Kim
Managing Principal
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John M. Kim is the Managing Principal of the firm.  John regularly advises clients on all aspects of trademark law, including registering trademarks and trade dress, managing worldwide trademark portfolios, policing efforts to protect trademarks in over 100 countries, and advising clients on licensing arrangements.

John’s experience spans a wide range of industries, including online gaming, computer software, hardware, medical device, pharmaceutical, biotechnology, cosmetics, food and beverage, entertainment, clothing and fashion, and diamond grading, just to name a few.  John has represented and handled the worldwide trademark portfolios of clients such as Zynga, JDA Software, Mitchell International, Hitachi, Johnson & Johnson, Allergan, Diversa, Verenium, Intelligent Beauty, Amarte, P.F. Changs, Souplantation, Dr. Seuss Enterprises, No Fear, Nixon, and the Gemological Institute of America.  As a result of the highly specialized nature of John’s practice and the broad range of industries that his clients are engaged in, John has handled virtually every type of trademark matter and dispute (both foreign and domestic).

Although John is well versed in all aspects of trademark law, his strength lies in his foreign trademark expertise.  John has filed for trademark protection in over 100 countries and has enforced his clients rights through opposition, cancellation and court action in nearly as many countries.  Given the diversity of his client base, John is called upon to deal with things as varied as shutting down factories manufacturing counterfeit goods in China, filing domain name disputes against cyber squatters in India, and seizing counterfeit or gray market goods imported into Europe.  The diversity and breadth of John’s trademark experience allows him to take a unique approach to trademark matters that most trademark practitioners cannot match.

Admissions

Education

• B.A. in Business Economics, University of California at Santa Barbara, 1993
• J.D. Santa Clara University School of Law, 1996

Representative Matters

• InBloom v. Salted Soul

  Represented plaintiff in a copyright infringement case where defendant sold inferior quality stickers using the same copyrighted designs. The action was settled favorable to our client shortly after filing the complaint.

• Eddie Van Halen v. California Board Sports, Inc.

  Represented defendant in a copyright infringement case regarding claims that defendant’s shoes used designs allegedly similar to plaintiff’s “Frankenstein” guitar design. The action was settled favorable to our client shortly after the filing of the complaint.

• 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. The action settled favorable to our client during the discovery phase.

• 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. The action was settled favorable to our 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 favorable to our client.