Paul C. Van Slyke

Partner

2800 JPMorgan Chase Tower
600 Travis
Houston, Texas 77002
Phone: (713) 226-1406
Fax: (713) 229-2516
pvanslyke@lockelord.com

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Paul Van Slyke focuses his practice on litigation, regulatory compliance and counseling in matters of intellectual property, trademarks, cyber law, advertising and marketing.

In his litigation practice, Paul has acted as lead trial counsel and tried cases to verdict and judgment. He has obtained, presented courtroom evidence for and defended against preliminary injunction motions in hundreds of trademark, copyright, trade secret and covenant-not-to-compete cases in federal and state trial courts. In addition, he has represented large and small companies as lead trial counsel in bench and jury trials before numerous state and federal district trial and appeals courts across the United States.

Paul has significant experience in anti-counterfeiting litigation and has obtained preliminary injunctions, asset freeze orders and asset seizure orders involving counterfeit computer software and luxury merchandise for Fortune 100 companies. He has also litigated cases for trademark, trade dress, copyright, patent and design patent infringement, patent ownership and unfair competition matters. In addition, he has represented brand owners in many Internet marketing law suits involving use of trademarks as search key words and in advertising text.

Further, Paul has litigated cases under the Anti-Cybersquatting-Consumer Protection Act (ACPA) in trial courts and domain name arbitrations under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Paul also practices regularly before the Trademark Trial and Appeal Board (TTAB) in trademark opposition and cancellation actions. In addition, Paul has experience as lead trial counsel in a lawsuit involving the right of publicity and privacy of an ex-employee in a federal district court. He has experience as lead trial counsel with appeals from the TTAB for a trial de novo before a Federal District court.

In his advertising and marketing counseling and regulatory practice, Paul has experience in:

Counseling clients on legal of websites, traditional advertising, digital advertising and substantiation of advertising claims under Federal Trade Commission (FTC) guides and rules, State privacy, fraud and consumer protection law and State Deceptive Trade Practice law.
Counseling clients on green and environmental marketing claims under the guides and regulations of the FTC and the Environmental Protection Agency (EPA).
Counseling clients on compliance for consumer products with safety regulations of, and responding to consumer safety complaints to, the United States Consumer Product Safety Commission (CPSC).
Counseling clients on drafting of corporate social media policies.

In his trademark counseling practice, Paul has significant experience in:

Clearance of trademarks before commercial use.
Trademark registration and prosecution.
Foreign trademark filing, both national and Madrid Protocol.
Trademark and trade dress licensing.
Brand management.
Analysis and management of trademark portfolios.
Counseling on insurance coverage for trademark infringement and copyright infringement litigation claims under advertising injury coverage in Comprehensive General Liability Insurance Policies.

In his copyright counseling practice, Paul has experience in:

Preparing take-down notices for copyright-infringing elements on websites under the Digital Millennium Copyright Act (DMCA).
Registering with the U.S. Copyright Office copyright claims for original text, actions and photographs in websites.
Drafting software license agreements.

In his cyber law practice, Paul has experience with:

Obtaining take down of websites and web pages that contain disparaging and defamatory content.
Drafting terms of use agreements.
Drafting privacy agreements.
Advising on requirements and technologies for protecting the personally identifiable information of consumers.
Advising on do not track regulations.
Advising on website compliance with industry guidelines and federal and state laws and regulations.

Paul is experienced in due diligence investigations and indemnification of intellectual property rights and liabilities in mergers, acquisitions and loan financing transactions. He also advises clients on freedom to operate and non-infringement of patent, copyright and trademark rights of third parties.

Paul’s practice covers a broad spectrum of technologies and industries, including petroleum exploration and production, manufacturing, oilfield tools and oilfield processes, computer software and computer hardware. He also has experience with media, publishing, banking and retailing and a wide variety of consumer products and services including clothing, food, alcoholic beverages, jewelry, air fresheners, motor oil, gasoline and automotive aftermarket products.

Before attending law school, Paul was an engineer at a research and development center in the patent and licensing division of a major oil company where he obtained a background in the acquisition of patent rights for developments in petroleum exploration, well logging and production technologies.

Education

J.D., Southern Methodist University School of Law, 1969
B.S., The University of Texas at Austin, 1964

Bar Admissions

Texas, 1967

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 and Arbitration

A private company with an iconic brand as lead trial counsel in a trademark infringement suit and false designation under the Lanham Act against a restaurant that was using the iconic brand as a food brand. After a preliminary injunction hearing, obtained a settlement resolution ending infringing use of the iconic brand.
A Fortune 100 international software company as lead trial counsel in a series of suits involving counterfeit computer software against dozens of counterfeiters. Obtained seizure orders, asset freeze orders, preliminary injunctions and awards of damages and attorneys’ fees for the client.
A publisher as lead trial counsel in a right of publicity, privacy and breach of contract suit in Federal District Court in Utah. Obtained a settlement and persuaded an insurance company to pay the settlement amount under advertising injury insurance coverage.
A Fortune 100 software vendor as lead trial counsel in a series of suits in Federal District courts involving counterfeit computer software against dozens of counterfeiters. Obtained seizure orders, asset freeze orders, preliminary injunctions and awards of damages for the client.
An importer of spirits from Mexico as lead trial counsel in a copyright infringement suit involving a label photograph and an unregistered foreign copyright in Federal District Court.
A major Internet publisher of stock market information as lead trial counsel of a patent infringement action in California Federal District Court.
The largest manufacturer of orthodontic products in the United States as lead trial counsel in prosecution of a suit for patent infringement matter in Delaware Federal District Court. Obtained a preliminary injunction against infringement for the client.
A frozen beverage vendor as lead trial counsel in a jury trial in the defense of a trademark infringement action in Federal District Court.
A major retail clothing chain as trail counsel in the trial and defense of a copyright infringement claim in Federal District Court. Obtained a take nothing judgment for the client.
Numerous companies as trial counsel in domain name arbitrations and Anti-Cybersquatting Act cases in Federal District courts in Arizona and Virginia to obtain transfer of pirated domain names.
A major large city daily newspaper as trial counsel in a Texas Federal Court action for trademark infringement and domain name cybersquatting. Obtained a preliminary injunction and an order of transfer of a pirated domain name for the client.
A major retail clothing chain as lead trial counsel in a trial in the defense of a copyright infringement claim. Obtained a take nothing judgment for the client.
A publisher in litigation as lead trial counsel in a series of keyword advertising suits in Federal District Courts across the United States where the client’s trademark was used to trigger advertising placement purchased on Google.
A major national agri-business as lead trial counsel in a keyword advertising suit where the client’s trademark was used to trigger advertising placement purchased on Google. Obtained a preliminary injunction for the client.
A famous jeweler as lead trial counsel in a trademark infringement and dilution case in Federal District Court. Obtained a preliminary injunction that ended the case for the client.
A major metropolitan daily newspaper as lead trial counsel in a suit against an online newspaper in a trademark infringement case in Federal District Court. Obtained a preliminary injunction against infringement that ended the case for the client.
A non-profit education foundation as lead trial counsel in a copyright infringement action in Federal District Court involving plagiarism of curriculum materials.
An agricultural conglomerate as lead trial counsel in a suit for breach of a settlement agreement and for trademark infringement and unfair competition in California Federal District Court.

Litigation Before the Trademark Trial and Appeal Board (TTAB)

A leading agri-business conglomerate as lead trial counsel in a trademark opposition trial before the TTAB. Obtained a judgment denying registration of the competitor’s trademark for the client.
A national food manufacturer as lead trial counsel in a trademark opposition trial before the TTAB. Obtained a judgment denying registration of the competitor’s trademark for the client.

Advertising & Marketing Counseling

A major sugar marketer and distributer as counsel on substantiation of advertising claims on food packaging and compliance with the Food and Drug Administration (FDA) regulations on low calorie claims.
A major Japanese electronics company as counsel on green and environmental advertising and compliance with the guides and regulations of the FTC and the EPA.
An educational publisher as counsel on advertising compliance and substantiation of advertising claims.
A major rice food manufacturer and marketer as counsel on advertising compliance and substantiation of advertising claims on food packaging.
A major food manufacturer and marketer as counsel on advertising on substantiation of advertising claims on food packaging and compliance with FDA regulations for health claims.
A seminar company in drafting promotional rules for referral of friends as customers without violating rights of privacy.

Anti-Counterfeiting Counseling

A major international oil company as lead trial counsel in numerous suits against formerly authorized dealers for injunctive relief and damages for substituting and selling counterfeit petroleum products to customers under the major oil company’s brands.
A financial services subsidiary of a public company as counsel in developing and implementing a program for combating Internet counterfeiting of educational course materials and DVDs.
A publisher as counsel in designing and operating a service for monitoring Internet auctions on eBay for counterfeit merchandise and use of the eBay Vero program to obtain removal of auctions for counterfeit merchandise.

Copyright Registration and Digital Millennium Copyright Act (DMCA) Matters

A publisher in registering with the U.S. Copyright Office copyright claims to original text, artwork and photographs in a website.
A publisher in registering with the U.S. Copyright Office claims to original computer databases.
A governmental agency in registering with the U.S. Copyright Office copyright claims to original text, artwork and photographs in a website.
An insurance claims management company in giving notice under the DMCA that caused removal of defamatory text and artwork from blogs and websites.
An online publisher as counsel to provide advice on the issues surrounding the use of former employee names and photographs in marketing.
A national food mix manufacturer in drafting DMCA provisions for a website to shield the website operator from copyright liability for content posted by visitors and customers.

Articles

Case Study: MDY Industries V. Blizzard — 1/4/2011

Wholesale Petroleum Products Buyers and Sellers Beware: New FTC Energy Market Manipulation Rule Creates Potential Liability — 12/31/2009

Wholesale Petroleum Buyers, Sellers — Beware — 12/1/2009

Implications Of Google AdWords Class Actions — 7/30/2009

Disparagement and Misinformation on the Internet: Litigation Remedies — 5/17/2001

Trends in Internet Litigation — 9/16/1999

Press Release

Best Lawyers Recognizes Five Locke Lord Attorneys – Four in Houston and One in Sacramento – as Lawyers of the Year — 10/14/2011

77 Locke Lord Attorneys From 10 U.S. Offices Recognized in Latest Best Lawyers in America 2012 Edition — 9/9/2011

World Trademark Review 1000 Names Locke Lord's Texas Offices, Houston Attorneys Thomas L. Casagrande and Paul Van Slyke as Leaders Among Trademark Practices — 5/16/2011

Locke Lord Bissell & Liddell Builds on Advertising Team Successes; Creates Separate, Full-Service Trademark, Copyright and Advertising Group — 10/19/2010

Eight Locke Liddell & Sapp Attorneys Named in Who's Who Legal as Among Texas' Finest — 9/17/2007

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

Selected, 2012 Houston Trademark Law Lawyer of the Year by Best Lawyers in America
Selected for World Trademark Review’s WTR 1000 as one of the world’s preeminent lawyers in trademark law
Selected for Best Lawyers in America (2012) for both Intellectual Property Litigation and Trademark Law
Selected for Who's Who Legal: Texas 2009 and 2008 by the International Bar Association
Holds AV Preeminent™ peer review rating from Martindale-Hubbell for the highest professional standards
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

Community Leadership

Active Member of the Board of Stewards, Chapelwood United Methodist Church
Member, Board of Directors, Neuhaus Education Center (Research, publishing and education for elementary school reading teachers)
Cubmaster, Cub Scout Pack 704, Boy Scouts of America
Order of the Arrow Advisor, Boy Scout Troop 641, Boy Scouts of America