Meet the Team

John Kim bio image

John M. Kim

MANAGING PARTNER

John is recognized as one of the leading authorities on US trademark law. As the Founder and Managing Partner of IPLA, John manages the global trademark portfolios for some of the largest and most recognized brands in the world. Throughout his nearly 30 year career, he has worked with clients in every major industry including WhatsApp, Vuori, Airbnb, Dr. Seuss, PF Chang’s, The Gemological Institute of America, Snapchat, Salesforce, Clorox, Allbirds, NBCUniversal, Allergan, Atlassian, and Target. John’s industry knowledge and global portfolio management for clients in such wide ranging industries has resulted in unique approaches to clearance, prosecution, and enforcement that have become a hallmark of his practice.

John has been recognized several times by the WTR for his ability to deliver extraordinary results and impressive international trademark capabilities. He has handled every known type of trademark and domain name matter in both large and small jurisdictions around the world. Although he is well versed in all aspects of trademark law, John’s strengths lie in his foreign prosecution and litigation experience. He has filed for trademark protection in over 180 countries and has enforced his clients’ rights through opposition, cancellation, and litigation in nearly as many countries. John enjoys spending his free time golfing, skiing, and traveling internationally with his wife, son, and daughter.

Recognitions

  • Recognized by World Trademark Review (WTR 1000) in 2022-2025 for excellence in trademark law.
  • Super Lawyers (2021-2024)
  • Top Trademark Attorney – San Diego (2007-2015)

Admissions

  • The State Bar of California
  • 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 Eastern District of California
  • United States District Court for the Northern District of California

Education

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

Associations and Memberships

  • International Trademark Association

Notable Federal Court Litigation Matters

  • Signal Technology Foundation v. J2 Cloud Services, LLC 2:24cv6168 (C.D. Cal 2024)
    • Secured worldwide rebrand for Plaintiff shortly after formal litigation was initiated.
  • Amarte USA Holdings, Inc. v. ISDIN 2:23cv7392 (C.D. Cal. 2023)
    • Secured favorable settlement for Plaintiff in trademark dispute involving skincare products.
  • Amarte USA Holdings, Inc. v. Kendo, Marc Jacobs, Sephora, Neiman Marcus 3:22cv8958 (N.D. Cal. 2022)
    • Representing Plaintiff in ongoing dispute over the use of the EYECONIC trademark for cosmetics; currently pending before the Ninth Circuit Court of Appeals.
  • Westmont Living v. Retirement Unlimited et al. 3:22cv811 (E.D.Va. 2022); 23-2248 (4th Cir. 2023)
    • Representing Plaintiff at the trial and appellate levels; secured reversal of summary judgment on appeal.
  • Amarte USA Holdings, Inc. v. Ascendant Beauty, Sephora, JLO Holdings 3:21cv1993 (N.D. Cal. 2021)
    • Secured favorable settlement for Plaintiff which included rebrand of cosmetics products bearing client’s WONDER CREAM trademark.
  • Royal 4 Systems, Inc. v. Wise Systems, Inc. 3:19cv00350 (S.D. Cal. 2019)
    • Represented Plaintiff in trademark infringement case where Defendant used the identical WISE trademark in connection with supply chain management software directly competitive with our client. This action settled favorably shortly after the Early Neutral Evaluation conference.
  • Unity IPR ApS v. FCS Racing Simulation B.V. 3:17cv06470 (N.D. Cal. 2017)
    • Represented Plaintiff in trademark infringement case where Defendant’s logo looked confusingly similar to Plaintiff’s logo. This case settled favorably shortly after the litigation started.
  • 3 Ratones Ciegos, LLC v. Mucha Lucha Libre Taco Shop 1 LLC 3:16cv02035 (S.D. Cal. 2016)
    • Represented Plaintiff in trademark infringement case regarding Defendant’s use of MUCHA LUCHA LIBRE TACO SHOP which infringed Plaintiff’s LUCHA LIBRE mark for restaurant services. There was a global settlement for both this case in California and a sister case in Arizona that was favorable to our client.
  • Salon Supply Store, LLC v. Creative Nail Design, Inc. 3:14cv01083 (S.D. Cal. 2014)
    • Represented Plaintiff in declaratory relief case for non-infringement and for genericness of the term SHELLAC for nail polish against Revlon, which acquired Creative Nail Design. Also represented counterclaim defendant in counterclaim for trademark infringement filed by Revlon. This case saw multiple motions to dismiss, motions to strike, special motion to strike (Anti-SLAPP), and other pleadings stage motions filed by Defendant which we successfully defensed. Our offensive strategy of filing a claim for genericness turned the leverage in this case to our client’s favor and was a primary driver of the favorable settlement. The dispute ultimately settled shortly after the pleadings stage motions were defensed.
  • Van Halen v. California Board Sports, Inc. 3:09cv02280 (S.D. Cal. 2009)
    • Represented Defendant in copyright infringement action regarding claims that Defendant’s shoes used designs/colors allegedly similar to Plaintiff’s “FRANKENSTEIN” guitar design/colors. This case settled favorably during the Early Neutral Evaluation conference.
  • California Board Sports, Inc. v. G.H. Dijkmans Beheer B.V. 3:09cv02280 (S.D. Cal. 2009)
    • Represented Plaintiff in declaratory relief action for non-infringement of the BRONX mark on shoes. Also represented counterclaim defendant in counterclaim for trademark infringement brought by Defendant. This case settled favorably prior to trial.
  • Anaheim Raffles Inn LLC v. Raffles International Limited 8:08cv01399 (C.D. Cal. 2008)
    • Represented Plaintiff in declaratory judgement action for non-infringement and non-dilution of the RAFFLES trademark following a cease and desist letter from a junior user, Raffles L’Ermitage Beverly Hills, which was associated with the Raffles Hotel in Singapore. We also represented the counterclaim defendant in the counterclaim for trademark infringement filed by Defendant. This case included the novel issue of tacking prior rights from the RAFFLES hotel in Singapore to the new use of RAFFLES in Beverly Hills. The dispute settled favorably on the eve of trial after extensive discovery and depositions in several countries throughout Asia.
  • Product Partners, LLC v. Intelligent Beauty, Inc. 2:08cv07704 (C.D. Cal. 2008)
    • Represented Defendant in trademark infringement action where Plaintiff claimed our client’s use of BEAUTY FIX in connection with sales and promotion of skin care, cosmetic, and hair care products infringed their GET YOUR BEAUTY FIX mark. The case settled favorably prior trial.
  • California Board Sports, Inc. v. Vans, Inc. 3:06cv02365 (S.D. Cal. 2006)
    • Represented Plaintiff in declaratory judgment action for non-infringement and non-dilution of Vans’ iconic checkerboard design trademark. Also represented counterclaim Defendant against Vans’ counterclaim for trademark infringement. A motion for summary judgment was filed by our client arguing that the checkerboard design could not be protected as a trademark since it was a common design used on footwear. This case settled shortly after the motion for summary judgement.
  • Douglas E Barnhart v. Deb Construction Inc 3:05cv00297 (S.D. Cal. 2005)
    • Represented Plaintiff in trademark infringement action where Defendant used a similar “deb” logo without authorization. This case settled favorably shortly after discovery commenced.
  • Gemological Institute of America, Inc. v. Moti Weisbrot 1:03cv02358 (N.D. Ill. 2003); Gemological Institute of America, Inc. v. Todd Douglas Jacobs 1:03cv02013 (N.D. Ill. 2003); concurrent litigation in Israel and Italy.
    • Represented Plaintiff in multi-jurisdictional litigation against international ring of counterfeiters selling flawed and worthless diamonds using counterfeit GIA diamond grading reports. The action included coordinated law enforcement seizures in Illinois, Israel and Italy resulting in the seizure of hundreds of counterfeit grading reports, admissions of guilt and jail sentences for several defendants.
  • Cartier International v. Elliot Lazarus 2:03cv04069 (2002)
    • Represented Defendant following raid by US Marshall seizing counterfeit wall clocks. The action settled favorably after the seizure order was executed and before further litigation.
  • Numerous cases for Lorillard Tobacco (2001 to 2004)
    • Represented Plaintiff Lorillard in anti-counterfeiting actions against sellers of counterfeit Newport, Old Gold, Kent and other Lorillard tobacco brands. Prepared ex-parte seizure requests and executed seizure orders through law enforcement.
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