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Paul Van Slyke practices intellectual property, advertising, and related litigation and arbitration matters. An experienced litigator and trial lawyer, Mr. Van Slyke litigates and counsels clients in trademark, trade dress, advertising, copyright, domain name and unfair competition matters. He is a well-respected member of several national legal committees and has experience in bench and jury trials before numerous state and federal courts throughout the United States for major U.S. companies. He has also obtained preliminary injunctive relief in dozens of cases.
Mr. Van Slyke has significant experience in anti-counterfeiting litigation and has obtained seizures of counterfeit computer software and luxury merchandise for Fortune 100 companies. In addition, he provides a full range of services for Internet domain names, including litigation under the Anti-Cybersquatting Act, domain name arbitrations under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and transactions involving domain names. He also practices regularly before the Trademark Trial and Appeal Board in trademark opposition and cancellation actions. Mr. Van Slyke has been selected by his lawyer peers for inclusion in "Best Lawyers in America" 2012 for Litigation - Intellectual Property and Trademark Law. He is also listed in Who's Who Legal: Texas (Int'l Bar Assn.) and in World Trademark Review’s WTR 1000 as one of the world's preeminent lawyers in trademark law. He is also certified as AV Preeminent™ by Martindale as a testament that his lawyer peers rank him at the highest level of professional excellence. He was also named the 2012 Houston Trademark Law Lawyer of the Year by Best Lawyers.
Education
- J.D., Southern Methodist University School of Law, 1969
- B.S., The University of Texas at Austin, 1964
Bar Admissions
Admitted To Practice
- U.S. Court of Appeals for the Fifth Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Northern District of Texas
- U.S. District Court for the Southern District of Texas
- U.S. District Court for the Western District of Texas
- U.S. Patent and Trademark Office
Representative Experience
Litigation
- Represented a NASDAQ-listed publisher in a right of publicity/privacy and breach of contract suit.
- Representted a Fortune 100 software vendor in a series of suits involving counterfeit computer software against dozens of counterfeiters. The court granted seizure orders, asset freeze orders, preliminary injunctions and awards of damages.
- Represented a major publisher of stock market information on a Web site in defense of a patent infringement action.
- Represented the largest manufacturer of orthodontic products in the USA in a suit for patent infringement matter. The Court ordered a preliminary injunction.
- Represented a frozen beverage vendor in the jury trial in defense of a trademark infringement action. The Court awarded insignificant damages while the plaintiff sought millions in damages.
- Tried a trademark infringement and dilution case for a major prestigious jeweler. The court granted a permanent injunction.
- Represented a major retail chain in the trial of a copyright infringement claim. The Court granted a take nothing judgment against the client.
- Represented many clients in domain name arbitrations and Anti-Cybersquatting Act cases to obtain transfer of pirated domain names.
- Represented major large city daily newspaper in a court action and obtained transfer of a pirated domain name.
Advertising & Marketing
- Represented a major sugar marketer and distributor with counseling on substantiation of advertising claims on food packaging and compliance with Food and Drug Administration (FDA) regulations on low calorie claims.
- Represented a educational publishing and seminar firm with counseling on substantiation of advertising claims.
- Represented a major rice food manufacturer and marketer with counseling on substantiation of advertising claims on food packaging.
- Represented a major food manufacturer and marketer with counseling on substantiation of advertising claims on food packaging and compliance with FDA regulations on health claims.
- Representing a seminar company in drafting promotional rules for referral of friends as customers without violating rights of privacy.
Anti-Counterfeiting
- Represented a major oil company against formerly authorized dealers for injunctive relief and damages for substituting and selling counterfeit petroleum products to customers under the leading company’s name and brands.
- Represented a financial services subsidiary of a public company by developing and executing a program for combating Internet counterfeiting of educational course materials and DVDs.
- Represented a Fortune 500 international software company in a series of suits involving counterfeit computer software against dozens of counterfeiters. The court granted seizure orders, asset freeze orders, preliminary injunctions and awards of damages and attorneys’ fees.
- Represented a publisher in designing and operating a service to monitor auctions on eBay for counterfeit merchandise and to use the eBay Vero program to obtain removal of auctions for counterfeit merchandise.
- Represented a leading international computer corporation in a lawsuit against computer software vendors for selling counterfeit computer software through authorized and unauthorized retailers.
Copyright & Media
- Represented an online publisher in providing advice on the issues surrounding the use of former employee names and photographs in marketing.
Copyright Registration
- Represented a publisher in registering with the U.S. Copyright Office copyright claims to original text, artwork and photographs in a website.
- Represented a publisher in registering with the U.S. Copyright Office claims to original computer databases.
Digital Millennium Copyright Act Matters
- Represented an insurance claims management company in giving notice under the Digital Millennium Copyright Act (DMCA) that caused removal of defamatory text and artwork from blogs and websites.
- Represented a national food mix manufacturer in drafting DMCA provisions for a website to shield the website operator for copyright liability for content posted by visitors and customers.
Internet, Social Media & Cybersquatting
- Represented an online educational publisher in a Anti-Cybersquatting suit after losing a UDRP arbitration on the same domain names.
- Represented a publisher in series of Ant-Cybersquatting suits and obtained transfer of the disputed domain names.
- Represented an online seminar company in a series of UDRP arbitrations resulting in an order of transfer of domain names.
- Represented an educational website operator in a UDRP arbitration and obtained transfer of several disputed domain names.
- Represented an oil tool manufacturer in an Anti-Cybersquatting action and obtained an order of transfer of the disputed domain name.
Litigation
- Represented a major retail chain at trial in the defense of a copyright infringement claim. The court granted a take nothing judgment against the client.
- Represented a publisher in litigation of a series of keyword advertising suits where the plaintiff’s trademark was used to trigger advertising placement purchased on Google.
- Represented major national agri-business in litigation of a keyword advertising suit where the plaintiff’s trademark was used to trigger advertising placement purchased on Google.
- Represented a famous jeweler in a trademark infringement and dilution case. The court granted a preliminary injunction that ended the case.
- Represented a major metropolitan newspaper against an online newspaper in a trademark infringement case and obtained a preliminary injunction against infringement that ended the case.
- Represented an agricultural conglomerate in a suit for breach of a settlement agreement and for trademark infringement and unfair competition.
- Represented a leading agri-business conglomerate in a trademark opposition trial before the Trademark Trial and Appeal Board (TTAB) and obtained a judgment denying registration.
- Represented a national food manufacturer in a trademark opposition trial before the TTAB and obtained judgment denying registration.
Publications & Presentations
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Contributor,
"TCA’s AdMark Buzz,"
Locke Lord LLP
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Co-Author,
"
Locke Lord QuickStudy: Court Rules Website Operator Not Liable Without Specific Knowledge of Copyright Infringement
,"
Locke Lord
(January 25, 2012)
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Contributor,
"Legal Strategies in Social Media,"
Locke Lord Brochure
(January 24, 2012)
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Co-Author,
"
Locke Lord QuickStudy: Social Media Site Ownership - Who Controls Your Account?
,"
Locke Lord
(January 23, 2012)
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Co-Author,
"Texas' New Trademark Act,"
Texas Bar Journal, Vol. 74 No. 11
(December 2011)
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Co-Author,
"
Locke Lord QuickStudy: NAD Approves Using Promotion to Increase Facebook “Likes” For Marketing
,"
Locke Lord
(December 14, 2011)
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Co-Author,
"
Locke Lord QuickStudy: Scope Broadens for Regulation of Online Data Collection for Behavioral Advertising
,"
Locke Lord
(December 13, 2011)
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Co-Author,
"
Locke Lord QuickStudy: New California Law More Restrictive Than FTC Guides on Environmental Claims
,"
Locke Lord
(December 9, 2011)
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Author,
"
Locke Lord QuickStudy: Senate May Delay ICANN From Global Expansion of Internet Addresses
,"
Locke Lord
(December 5, 2011)
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Co-Author,
"
Locke Lord QuickStudy: New Court Order May Substantially Lower e-Discovery Cost in Trademark & Advertising Litigation
,"
Locke Lord
(December 1, 2011)
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Co-Author,
"
Locke Lord QuickStudy: Congressmen Ask FTC to Investigate Secret Use of Supercookies for Behavioral Advertising
,"
Locke Lord
(November 30, 2011)
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Presenter,
"
Locke Lord: Your Social Media Professionals
,"
Locke Lord
(November 2011)
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Co-Author,
"Locke Lord QuickStudy: Think Your Ad or Package Claims Have Adequate Substantiation?,"
Locke Lord
(October 24, 2011)
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Co-Author,
"Locke Lord QuickStudy: Trademark Applicant’s Failure to Submit Written Proof of Intent to Use May Be Fatal,"
Locke Lord
(October 18, 2011)
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Co-Author,
"Locke Lord QuickStudy: Stark Copyright Lesson for Software Companies in Recent First Circuit Decision,"
Locke Lord
(September 16, 2011)
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Co-Author,
"Locke Lord QuickStudy: Betty Boop No Longer Threat to Detroit LIONS, Princeton TIGERS, or Yogi BEAR — Oh My!,"
Locke Lord
(August 24, 2011)
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Co-Author,
"Locke Lord QuickStudy: Texas Adopts Landmark Trademark Legislation,"
Locke Lord
(July 21, 2011)
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Co-Author,
"Locke Lord QuickStudy: FTC Considers Updating Online Advertising Guide,"
Locke Lord
(June 21, 2011)
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Co-Author,
"Locke Lord QuickStudy: “Trust But Verify” – Ronald Reagan’s Cold War Advice Applies to Trademark Licensing,"
Locke Lord
(May 12, 2011)
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Co-Author,
"Locke Lord's QuickStudy: Ninth Circuit Becomes First Appeals Court to Address If Google and Bing Advertising Programs Likely to Cause Confusion,"
Locke Lord
(March 14, 2011)
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Co-Author,
"Locke Lord's QuickStudy: Ninth Circuit “BETTY BOOP” Decision Threatens Sports Logo, College and Character Licensing,"
Locke Lord
(February 25, 2011)
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Contributor,
"Looking Ahead 2011: Trademark, Copyright and Advertising,"
Locke Lord
(January 26, 2011)
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Co-Author,
"Locke Lord's QuickStudy: Asian Domain Name and Keyword Scams – They’re Back!,"
Locke Lord
(January 20, 2011)
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Co-Author,
"Case Study: MDY Industries V. Blizzard,"
Law360
(January 4, 2011)
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Co-Author,
"Client Alert: Digital Millennium Copyright Act,"
Locke Lord
(December 16, 2010)
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Co-Author,
"Client Alert: FTC Unveils Proposed New Guides for Environmental Marketing Claims,"
Locke Lord
(October 13, 2010)
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Co-Author,
"Halt to brand owners’ ability to stop counterfeiting on eBay,"
Intellectual Property Magazine article discussing 2d Circuit’s trademark counterfeiting decision in the Tiffany v. eBay case)
(June 2010)
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Co-Author,
"Client Alert: SMS “Text Message” Advertisers Beware,"
Locke Lord
(June 10, 2010)
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Co-Author,
"Client Alert: Second Circuit Limits Brand Owners’ Ability to Stop Counterfeiting on eBay,"
Locke Lord
(April 8, 2010)
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Co-Author,
"Client Alert: Sellers and Buyers of Wholesale Petroleum Products Beware: Newly Effective FTC Energy Market Manipulation Rule Creates Potential Liability,"
Locke Lord
(November 5, 2009)
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Co-Author,
"Client Alert: New FTC Guidelines - “Results May Vary,” Social Media Marketing and Celebrity Endorsements,"
Locke Lord
(October 15, 2009)
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Co-Author,
"Client Alert: Immediate Action: Well-known Brand Names and Trademarks are in Jeopardy on Facebook,"
Locke Lord
(June 11, 2009)
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Co-Author,
"Client Alert: Class Action Suits Against Google’s AdWords Program May Have Dramatic Effect on Trademark Owners,"
Locke Lord
(June 9, 2009)
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Co-Author,
"Internet Domain Name Security,"
Locke, Liddell & Sapp
(May 1, 2001)
Events
- International Trademark Association (INTA) 2011 Annual Meeting (May 14-18, 2011)
- MDY v. Blizzard (February 18, 2011)
- Advertising and Marketing Law: Emerging and Hot Topics (January 27, 2011)
- "Trademarks and Unfair Trade Practices," Business Torts Institute 2010 Dallas, TX (October 28-29, 2010)
- 2010 Advertising and Marketing Law: Emerging and Hot Topics New York, NY (May 13, 2010)
- "Internet Advertising Law Green Deceptive Advertising Law," The Essentials of Advertising & Marketing Law (Chicago, 2009) Chicago, IL (September 13, 2010)
- "Internet Advertising," The Essentials of Advertising & Marketing Law (Dallas, 2009) Dallas, TX (May 6, 2009)
Professional History
- Partner, Locke Lord LLP (1996 - Present)
- Former Shareholder, Pravel, Hewitt, Kimball & Krieger, Houston, Texas (1987 - 1996)
- Former Shareholder, Arnold, White & Durkee, Houston, Texas (1968 - 1987)
- Diploma, National Institute for Trial Advocacy, Basic and Advanced
Professional Affiliations & Achievements
- Former Division Chair, Trademark & Unfair Competition Division, American Bar Association
- Former Chair, Intellectual Property Litigation Committee, IPL Section, State Bar of Texas
- Former Co-Chair, Trademark Litigation Committee, ABA Intellectual Property Section
- Former President, Houston Intellectual Property Law Association
- Former Co-Chair, Internet and E-Commerce Litigation Committee, ABA Litigation Section
- Member, Copyright Society of the USA
- Firm Designee to the International Trademark Association
- Former Chair, Anti-Counterfeiting Committee, International Trademark Association
- Former Chair, Right of Publicity Committee, International Trademark Association
- Life Fellow, Texas Bar Foundation
- Life Fellow, Houston Bar Foundation
- Listed, Who's Who Legal: Texas 2009 and 2008 (Int'l Bar Assn.) as one of the world's preeminent lawyers in trademark law
- Named, World Trademark Review’s WTR 1000
- Received AV Preeminent™ peer review rating from Martindale-Hubbell
- Named, The Best Lawyers in America (2012)
- Named, 2012 Trademark Law Lawyer of the Year by Best Lawyers
Community Leadership
- Active Member of the Board of Stewards, Chapelwood United Methodist Church
- Member, Advisory Board, Neuhaus Education Center
- Cubmaster, Cub Scout Pack 704, Houston, Texas
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