John M. Kim
John has been recognized by the WTR for his ability to deliver extraordinary results and for his impressive international trademark capabilities. John’s experience spans a wide range of industries from social media to ecommerce to consumer products to entertainment and he has handled virtually every known type of trademark matter and domain name dispute 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, particularly in China where he has litigated numerous trademark, copyright, and domain name disputes over the years. He has filed for trademark protection in over 180 countries and has enforced his clients’ rights through opposition, cancellation, and court action in nearly as many countries. John speaks Spanish and Korean and enjoys spending his free time skiing, mountain biking, and golfing with his wife, son, and daughter.
Notable Federal Court Litigation Matters
- (1) Numerous cases for Lorillard Tobacco (2001 to 2004)
Represented Plaintiff Lorillard in multiple ex-parte seizure requests against liquor stores and other sellers of counterfeit Newport, Old Gold, Kent and other Lorillard tobacco brands. Prepared and filed ex-parte seizure requests and coordinated/executed seizure orders through law enforcement.
- (2) 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 for damages.
- (3) 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 resolved favorably to our client with coordinated law enforcement seizures in Illinois, Israel and Italy resulting in the seizure of counterfeit grading reports, admissions of guilt and jail sentences for several defendants.
- (4) Douglas E Barnhart v. Deb Construction Inc 3:05cv00297 (S.D. Cal. 2005)
Represented Plaintiff in trademark infringement case where Defendant used a similar “deb” logo without authorization. This case settled favorably to our client shortly after discovery commenced.
- (5) California Board Sports, Inc. v. Vans, Inc. 3:06cv02365 (S.D. Cal. 2006)
Represented Plaintiff in declaratory judgment case for non-infringement or dilution of Vans’ iconic checkerboard design trademark following a cease and desist letter from Vans. 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 favorably to our client shortly after the motion for summary judgement.
- (6) Product Partners, LLC v. Intelligent Beauty, Inc. 2:08cv07704 (C.D. Cal. 2008)
Represented Defendant in trademark infringement case 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 to our client prior trial.
- (7) Anaheim Raffles Inn LLC v. Raffles International Limited 8:08cv01399 (C.D. Cal. 2008)
Represented Plaintiff in declaratory relief case for non-infringement or 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 was a potential precedent setting case because Defendant claimed that the RAFFLES trademark used exclusively in Singapore prior to our client’s first use in 1985 was world famous, which carried into the United States and conferred trademark rights in the US without actual use or registration. This case settled favorably to our client on the eve of trial after extensive discovery and depositions in several countries throughout Asia.
- (8) California Board Sports, Inc. v. G.H. Dijkmans Beheer B.V. 3:09cv02280 (S.D. Cal. 2009)
Represented Plaintiff in declaratory relief case 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 to our client prior to trial.
- (9) Van Halen v. California Board Sports, Inc. 3:09cv02280 (S.D. Cal. 2009)
Represented Defendant in copyright infringement case regarding claims that Defendant’s shoes used designs/colors allegedly similar to Plaintiff’s “FRANKENSTEIN” guitar design/colors. This case settled favorably to our client with insurance contribution during the Early Neutral Evaluation conference.
- (10) 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 were all successfully defensed by our client. Following the failure of these pleadings stage motions, Revlon requested a settlement meeting at its headquarters in New York City. This case ultimately settled very favorably to our client at that meeting. 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 to our client.
- (11) 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 CA and a sister case in AZ that was favorable to our client.
- (12) 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 to our client shortly after the litigation started.
- (13) 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 to our client shortly after the Early Neutral Evaluation conference.
- (14) Amarte USA Holdings, Inc. v. G.L.E.D Cosmetics US LTD 3:20cv00768 (S.D. Cal. 2020)
Representing Plaintiff in case of intentional trademark infringement where Defendant is using the identical HYDROLIFT mark for the sale of identical anti-aging creams and has positioned itself as the top Google result ahead of our client’s HYDROLIFT product. This case involves defendants in the US, UK and Israel requiring special service of process. The complaint was recently filed and foreign defendants are in the process of being served.