Bruno W. Tarabichi

Bruno W. Tarabichi
Partner

Email: btarabichi@owenstarabichi.com
Tel: 408-298-8204
Fax: 408-521-2203

Envisioning a more client-centric and cost-effective approach to providing intellectual property and related business legal services, Mr. Tarabichi founded Owens Tarabichi LLP with Mr. Owens in February of 2008.

Practice Description

Mr. Tarabichi’s practice focuses on intellectual property counseling, prosecution, and litigation. A non-exhaustive listing of Mr. Tarabichi’s areas of expertise is set forth below.

Anticounterfeiting

Implementing strategic anticounterfeiting programs
Intelligence gathering through private investigators, customs agencies, local counsel, etc.
Using branding technologies to identify counterfeit products
Coordinating criminal and civil actions, customs actions, and ex parte search and seizure orders

Copyright

Registering copyrighted works
Acquiring and licensing content
Counseling regarding infringement and liability and providing opinions of counsel
Copyright litigation

Domain Names

Litigating domain name cybersquatting and theft cases
Negotiating domain name purchases
Maintaining domain name portfolios
Uniform Dispute Resolution Proceedings (UDRP)

Internet and Website

Preparing terms of use and privacy policies for websites
Counseling regarding Digital Millenium Copyright Act (DMCA)
Counseling regarding Communications Decency Act (CDA), and
Counseling regarding Controlling the Assault of Non-Solicited Pornography and Marketing Act (CAN-SPAM) issues

Trademark

Creating and selecting trademarks
Clearing trademarks and providing availability opinions
Registering trademarks and maintaining domestic and international trademark portfolios
Trademark enforcement and litigation

Trade Secret

Trade secret protection programs
Preparing and reviewing employment and confidentiality agreements
Developing employee handbooks, company policies, marking schemes, etc.
Trade secret litigation

Career Retrospect

Morgan, Lewis & Bockius LLP, 2004–2008. In January of 2004, Mr. Tarabichi joined Morgan, Lewis & Bockius LLP, a general practice firm with over 1,300 attorneys in 22 offices worldwide. As an attorney in Morgan Lewis’ intellectual property practice group in the Palo Alto, California office, Mr. Tarabichi managed the domestic and international trademark and domain name portfolios for various Fortune 500 companies; litigated a variety of intellectual property disputes before United States federal district courts, California state courts, and the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board; conducted intellectual property due diligence reviews for multi-million dollar corporate acquisitions; structured and negotiated intellectual property assignments and licensing deals; and generally advised clients on copyright, Internet, trademark, trade secret, and unfair competition matters. While at Morgan Lewis, Mr. Tarabichi represented the following significant clients (among others): Agilent Technologies, Inc., Avago Technologies, Inc., Cisco Systems, Inc., Con-way Inc. (formerly CNF Inc.), Dentsply International Inc., Finisar Corporation, National Association of Securities Dealers, Inc., Nationwide Mutual Insurance Company, and Philips Lumileds Lighting Company, LLC.

Pennie & Edmonds LLP, 2001–2003. In October of 2001, Mr. Tarabichi joined Pennie & Edmonds LLP, a 200 attorney intellectual property boutique law firm with a history dating back to 1883. As an attorney in Pennie & Edmonds’ trademark and copyright practice group in the Palo Alto, California office, Mr. Tarabichi managed the domestic and international trademark portfolios for various Fortune 500 companies and litigated a variety of intellectual property disputes before United States federal district courts, California state courts, and the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. While at Pennie & Edmonds, Mr. Tarabichi represented the following significant clients (among others): Con-way Inc. (formerly CNF Inc.), Finisar Corporation, InterTrust Technologies Corporation, and Philips Lumileds Lighting Company, LLC.

Education

University of California, Hastings College of the Law

Juris Doctor, 2001
Hastings Law Journal, 1999–2001

University of California, San Diego

Bachelor of Arts, Economics, 1998

Bar Admissions

The State Bar of California, 2001

Court Admissions

Federal.

United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Ninth Circuit
United States District Court for the Northern District of California
United States District Court for the Central District of California
United States District Court for the Southern District of California

State.

All California state courts

Significant Representations

Business and Corporate

Natural Proteins, LLC v. Ocean Protein, LLC (California Superior Court, Santa Clara County 2010)
Representing Natural Proteins, LLC in a lawsuit involving breach of contract claims
Silicon Test Labs, Inc. v. Fernando (California Superior Court, Santa Clara County 2008-2010)
Represented Silicon Test Labs and Silicon Test Solutions in a lawsuit involving theft of corporate funds, defamation, interference with economic advantage, breach of contract, and shareholder derivative claims

Solin v. National Association of Securities Dealers, Inc. (Southern District of New York 2005-2006)
Represented NASD in a copyright infringement lawsuit involving whether arbitration awards are copyrightable, obtaining a dismissal of the case for NASD
Vita Zahnfabrik H. Rauter GmbH v. Dentsply International Inc. (Central District of California 2004-2007)
Represented Dentsply International in a copyright infringement lawsuit involving dental shade designations, obtaining a dismissal of the copyright claim

Domain Names.

Express Media Group, LLC v. Express Corporation (Northern District of California 2006-2007)
Represented Express Media Group in a domain name lawsuit involving the theft of the www.express.com domain name, obtaining an order granting summary judgment and returning the domain name to Express Media Group
Con-way Inc. v. Manila Industries (Northern District of California 2005-2007)
Represented Con-way in a domain name lawsuit involving Manila Industries’ unauthorized registration of several domain names containing Con-way’s trademarks, securing the transfer of the domain names to Con-way and a damages payment for Con-way
CNF Inc. v. THECNF.COM (Northern District of California 2005-2007)
Represented CNF in a domain name lawsuit involving cybersquatting and infringement upon CNF’s CNF trademark, securing the transfer of the www.thecnf.com domain name to CNF
CNF Inc. v. FREIGHT.COM (Northern District of California 2004-2005)
Represented CNF in a domain name lawsuit involving the theft of the www.freight.com domain name, obtaining an order returning the domain name to CNF

Patent.

Clip Ventures LLC v. Ronco Acquisition Corporation (Northern District of California 2010)
Represented Clip Ventures in a patent false marking lawsuit involving knives, obtaining favorable settlement
Clip Ventures LLC v. Flex-O-Glass, Inc. (Northern District of California 2010)
Represented Clip Ventures in a patent false marking lawsuit involving shelf liners, obtaining favorable settlement
Clip Ventures LLC v. Newell Operating Company (Northern District of California 2010)
Represented Clip Ventures in a patent false marking lawsuit involving paint edgers, obtaining favorable settlement
j2 Global Communications, Inc. v. Savetz Publishing, Inc. (Northern District of California 2008-2009)
Represented Savetz Publishing in a patent infringement lawsuit involving electronic faxing
Congoleum Corporation v. Patrick Industries, Inc. (District of New Jersey 2006-2007)
Represented Congoleum Corporation in a patent infringement lawsuit involving coated flooring substrates causing a withdrawal of the accused product from the U.S. market
Vita Zahnfabrik H. Rauter GmbH v. Dentsply International Inc. (Central District of California 2004-2007)
Represented Dentsply International in a patent infringement lawsuit involving dental shade guides and tooth restorations, obtaining a finding of non-infringement on summary judgment
InterTrust Technologies Corporation v. Microsoft Corporation (Northern District of California 2001-2004)
Represented InterTrust Technologies against Microsoft in a patent infringement lawsuit involving digital rights management, securing a $440 million settlement for InterTrust Technologies

Trademark.

Edun Apparel Limited v. Axel Gothe (Trademark Trial and Appeal Board 2010)
Represented Axel Gothe, negotiated dismissal of opposition
MyShape, Inc. v. Athletetech Apparel Group (Trademark Trial and Appeal Board 2008-2010)
Represented Athletetech Apparel Group, prevailing on motion for judgment
SabreMark Limited Partnership v. Don Reed (Trademark Trial and Appeal Board 2009-2010)
Represented Mr. Reed in TTAB Opposition No. 91191252, negotiating favorable settlement and withdrawal of opposition
Tele-Tracking Technologies, Inc. v. Parsec Automation Corp. (Trademark Trial and Appeal Board 2008-2010)
Represented Parsec Automation in TTAB Opposition No. 91187231, negotiating favorable settlement and withdrawal of opposition
Nell E. Langford v. Kevin P. Rice (Trademark Trial and Appeal Board 2008-2010)
Represented Mr. Rice in TTAB Opposition No. 91186262, prevailing on a motion for judgment
McDonald’s Corporation v. MCLAB (Trademark Trial and Appeal Board 2008-2010)
Represented MCLAB in TTAB Opposition No. 91184532 and successfully negotiated a mutually satisfactory settlement
Premier Organics, Inc. v. Blue Mountain Organics, LLC (Northern District of California 2009)
Represented Blue Mountain Organics in a trademark infringement lawsuit involving the BETTER THAN ROASTED trademark in connection with organic nuts and butters
Pacific World Corporation v. Seng Wong (Trademark Trial and Appeal Board 2008-2009)
Represented Mr. Wong in TTAB Opposition No. 91187733, obtaining dismissal of opposition
MeHype, LLC v. Brabus Ventures Corporation (Trademark Trial and Appeal Board 2008-2009)
Represented Brabus Ventures in TTAB Opposition No. 91187573, obtaining dismissal of opposition
Rockin’ Products LLC v. Russell Sillery (Trademark Trial and Appeal Board 2008-2009)
Represented Mr. Sillery in TTAB Opposition No. 91187514, negotiating favorable settlement
Trumba Corporation v. DoCircle, Inc. (Trademark Trial and Appeal Board 2008-2009)
Represented DoCircle in TTAB Opposition No. 91186997, negotiating a favorable settlement
G-Star Raw Denim Kft. v. Raw K9 Inc. (Trademark Trial and Appeal Board 2008-2009)
Represented Raw K9 in TTAB Opposition Nos. 91185906 and 91185914, negotiating favorable settlement
Hakan Bjorkstedt v. Axel Gothe (Trademark Trial and Appeal Board 2008-2009)
Represented Axel Gothe in TTAB Opposition No. 91184714, negotiating a favorable settlement
American Automobile Association, Inc. v. AAAAutoExport, Inc. (Trademark Trial and Appeal Board 2008-2009)
Represented AAAAutoExport in TTAB Opposition No. 91183547 and successfully negotiated a mutually satisfactory settlement
Beardsley Avenue Associates, LLC v. Real Life Ink (Trademark Trial and Appeal Board 2008-2009)
Represented Real Life Ink in TTAB Opposition No. 91184255, prevailing on a motion for judgment
Centre de Traitement v. Michelle Lazar, Inc. (Trademark Trial and Appeal Board 2008)
Represented Michelle Lazar in TTAB Cancellation No. 92049427 and successfully obtained a dismissal of the cancellation proceeding
Freightdata Software, Inc. v. Freightdata 2000 Ltd. (Trademark Trial and Appeal Board 2008)
Represented Freightdata 2000 in TTAB Cancellation No. 92049308 and successfully negotiated a mutually satisfactory settlement
Sexy Hair Concepts, LLC v. TIC International Trading, Inc. (Trademark Trial and Appeal Board 2008)
Represented TIC International Trading in TTAB Opposition No. 91184095 and successfully negotiated a mutually satisfactory settlement
In re Finisar Corporation (Federal Circuit Court of Appeals 2007)
Argued before the United States Court of Appeals for the Federal Circuit in a rare appeal from a refusal to register by the United States Patent and Trademark Office
CNF Inc. v. Conway World Transport, Inc. (Northern District of California 2005)
Represented CNF in a trademark infringement lawsuit involving Conway World Transport’s unauthorized use of CNF’s CON-WAY trademark, securing Conway World Transport’s agreement to cease using the CONWAY designation
JVW Corporation v. Jordan (Northern District of California 2001-2002)
Represented winemaker Ehren Jordan in a trademark infringement lawsuit involving a dispute over use of the JORDAN trademark in connection with wines, obtaining a favorable settlement for Ehren Jordan

Trade Secret.

Connet & Company v. Uhrig et al. (Northern District of California 2008-2009)
Represented Ms. Young against claims for trade secret misappropriation and breach of contract
SFI v. Mishin (California Superior Court, Santa Barbara County 2003-2007)
Represented Agilent Technologies and Avago Technologies in a trade secret misappropriation lawsuit involving FBAR sputtering technology that generated an oft-cited, precedential Ninth Circuit opinion, securing a dismissal of software-related trade secret misappropriation claims and obtaining a favorable settlement for Agilent and Avago