Backofen, Mark

Mark Backofen


Partner

 

Overview

Mark Backofen has over 10 years of experience in all aspects of intellectual property, including patents, trademarks, copyrights and trade secrets, both in litigation as well as their preparation and prosecution. Mark's broad experience allows the issue to be addressed from both a litigation as well as transactional viewpoint. He has been involved in litigation in Federal Courts in Texas, Washington, D.C., and New York as well as administrative proceedings in the U.S. Patent and Trademark Office.

Mark is experienced in preparing and prosecuting patents and trademarks, both in the United States as well as worldwide, in the chemical, mechanical and medical device fields. Additionally, Mark advises clients regarding intellectual property issues in connection with corporate transactions, licensing (both national and international), infringement/validity opinions and design around programs.

Representative Experience

Mark's representative experience includes:

  • Represented a medical device manufacturer through verdict and appeal in asserting patent and trade secret infringement against various competitors
  • Defended major oil company against claims of patent infringement and theft of trade secrets
  • Represented various startup companies in developing their patent and trademark estates as well as adequately protecting their trade secrets and other confidential information
  • Represented numerous companies in designing and implementing a global patent filing and protection program
  • Represented a major entertainment company in defending trademark and copyright litigation involving one of its major movie franchises
  • Represented various companies in licensing patents, trademarks and software, both nationally and internationally
  • Represented a nonprofit museum regarding the acquisition and licensing of various works
  • Represented a major manufacturer in various cancellation and opposition proceedings before the Trademark Trial and Appeal Board
  • Represented a trademark licensee in connection with the bankruptcy petition of a well-known trademark licensor resulting in the preferred bidder obtaining the related trademark portfolio and helped negotiate a partial sale of the trademarks from the successful bidder
  • Advised a distribution company regarding various patent and copyright issues relating to the importation of fashion bags, luggage and other products
  • Represented a national nonprofit organization in connection with registering copyrights in secure tests that are not publicly available as well as a related infringement suit
  • Advised numerous companies in connection with various corporate transactions and negotiated purchase terms and representations relating to intellectual property, including in the energy, manufacturing, fashion, services and software industries

Reported Decisions

Mark’s reported decisions include:

  • Textron Innovations v. American Eurocopter, 4:09cv377 (N.D.Tex. 2011) (Ft. Worth Div.) (patent infringement)
  • Retractable Technology, Inc. v. Becton Dickinson, 2:07cv250 (E.D.Tex. 2009) (J. Folsom, Marshall Div.) (patent infringement)
  • Retractable Technologies, Inc. v. OMI, 6:08cv120 (E.D.Tex. 2009) (J. Davis, Tyler Div.) (patent and trade secret infringement)
  • American Heart Association v. Stafford, 3:08-CV-1460 (N.D.Tex. 2008) (Dallas Div.) (copyright and trademark infringement)
  • American Safety Razor Co. v. Dorco USA, 9:07cv229 (E.D.Tex. 2007) (J. Clark, Beaumont Div.) (patent, copyright, trademark and false advertising)
  • Cozby v. Disney Enter., 4:06cv547 (N.D.Tex. 2006) (Ft. Worth Div.) (copyright and trademark infringement)
  • Olivadoti v. Brampton, 05cv9627, (S.D.N.Y. 2005) (trade secret, fraud and unfair competition)
  • Maxma v. ConocoPhilips, 2:03cv421 (E.D.Tex. 2003) (J. Ward, Marshall Div.) (patent and trade secret infringement)

Professional Affiliations and Recognitions

  • IP Section Member, State Bar of Texas
  • IP Section Member, Dallas Bar Association
  • American Intellectual Property Law Association
    • Patent Law Committee
    • Chemical Practice Committee
  • Patent Misuse Committee, Intellectual Property Owners Association
  • Dallas Association of Young Lawyers