Mr. Baum concentrates on trademark and copyright prosecution, licensing and litigation. He specializes in counseling established brand-intensive businesses in trademark selection and enforcement as part of their overall business and marketing strategies.
He has developed strategies and coordinated large-scale trademark policing efforts involving hundreds of concurrent policing matters for several world-class marquee brands. He has coordinated trademark infringement and counterfeit raid actions in Hong Kong and mainland China, where a client’s successful trademark policing efforts were the subject of a television special, partially funded by Chinese government sources. His domestic practice includes administrative proceedings with United States Customs and Border Protection relating to the protection of United States intellectual property rights and gray market goods. Mr. Baum has testified as an expert witness on U.S. trademark practice and procedure.
He has been active on INTA’s Lefkowitz Moot Court Competition Committee in trademark and unfair competition law for nearly twenty years and was the 2007-2008 National Chair of the committee. Prior to entering the field of law, he was an art museum and rare book curator for the University of Chicago.
Mr. Baum’s representative clients include Apple Inc., Delta Dental of California, San Diego County Water Authority, Seattle Genetics, Solazyme, Inc., The University of California, City of Vacaville, and Wynn Resorts.
Selected Litigation
• Apple Computer, Inc. v. Grasso, USDC, Northern District – CA (Trademark, Declaratory Relief); resolved for client.
• Dolby Laboratories v. Dolby Enterprise, USDC, Northern District – CA (Trademark); resolved for client.
• CATC v. Catalyst, USDC, Northern District – CA (Trade Dress, Trademark, Copyright); settled after trial.
• NEIEP v. Bay Area Rapid Transit (BART), USDC, Northern District – CA (Copyright infringement); settled.
• Pet Warehouse v. Pets.com, (ICANN – WIPO); administration decision for client/respondent.
• eToys v. ETNA, USDC, Central District – CA (Declaratory Relief - service mark infringement and unfair competition) (parallel case for affirmative relief filed in New York); settled for client with assignment of challenger’s rights after motion to dismiss challenger’s New York case filed.
• Duggan’s Funeral Service v. Duggan’s Serra Mortuary, TTAB, District Court, California Superior Court (Cancellation and service mark infringement); application for temporary restraining order and motion for preliminary injunction successfully overcome. Case remanded and fees awarded.
• Monterey County Bank v. Monterey Bay Bank, California Superior Court, Salinas (Service mark infringement and unfair competition); application for temporary restraining order and motion for preliminary injunction overcome. Settled.
• The Bath & Beyond v. Bed Bath & Beyond, USDC, Northern District – CA (Trademark infringement); judgment entered and permanent injunction issued, subsequent finding of contempt with award of all fees and expenses. (42 USPQ2d 1308).
• Chung Kai Industries, Inc. v. Dayton Hudson, USDC, Northern District – CA (Copyright infringement and unfair competition); settled.
• In re Venquest Trading, Inc., U.S. Customs Service, Port of San Francisco Seizure Case No. 96-2809-00881 (Administrative proceedings and appeal relating to importation of piratical copies in violation of the Copyright Act).
Publications
“ICE and Manhattan U.S. Attorney Seize Multiple Internet Domains and Related Assets for Online Copyright Violations in Initiative to Combat Online Counterfeiting and Piracy.” Townsend IP Update, July 2010.
“White House Releases 2010 Joint Strategic Plan on IP Enforcement to Fight Counterfeiting and Piracy.” Townsend IP Update, June 2010.
“Draft Anti-Counterfeiting Trade Agreement (ACTA) Signals A Potential Significant Increase In IP Protection At International Borders.” Townsend IP Update, April 2010.
“Mark Your Produce: Trademarks and New Plant Variety Protection,” San Francisco Daily Journal, September 2004, with Elizabeth R. Gosse.
“Do You Really Know It When You See It? Definitions of “Bad Faith” in Recent ICANN Domain Name Dispute Proceedings,” San Francisco Intellectual Property Law Association, January 2002.