Todd Bontemps is a Partner in our Intellectual Property group with particular expertise in intellectual property protection and strategic branding, both domestically and internationally.  For over twenty years, his practice has focused on trademark, copyright, domain name, product packaging and advertising matters.  Mr. Bontemps helps clients with a wide array of brand counseling, including new name, logo, and corporate tagline clearance, worldwide registration, trademark, copyright and domain name licensing and transfers, and targeted enforcement against infringers and cybersquatters.

He has significant experience with trademark, copyright, and related branding and licensing issues throughout the software, high-tech, life sciences, medical device, pharmaceutical, and consumer product/services retail industries.

Representative Experience

Trademark

  • Online and brick-and-mortar trademark clearance, registration, licensing, policing, and enforcement.
  • Enforcement actions include US District Court lawsuits and TTAB opposition and cancellation actions.

Internet and Domain Names

  • Assists clients with Internet domain name registration, acquisition, and enforcement.
  • Successfully tracked, identified, and stopped online trademark infringers, cybersquatters, product counterfeiters, and celebrity defamers.
  • Prevailed in UDRP domain name disputes (on behalf of plaintiffs and defendants).
  • Successfully stopped unauthorized online sales of multiple distilled spirit product lines, yoga and fitness wear, and equestrian riding boots.

Counterfeiting

  • Enforcement matters resulting in successfully seizing and destroying counterfeit products include computer software, a wide array of computer hardware and computer peripherals, women’s footwear, clothing, jewelry, and motor oil.

Honors & Awards

  • Pro Bono Achievement Award, 2014 (Cooley LLP)
  • Wavemaker Award (2007) Surfrider Foundation
  • Eagle Scout; Past Scoutmaster for US Scouts living in London

Publications and Speeches

  • “Chewing Virtuous Chicken” presentation on international branding issues, Berkeley Center For Law & Technology (Boalt Hall), 2016
  • “Individualized Online China Marketing Campaigns and Associated IP Enforcement Risks,” International Bar Association Asia Forum in Hong Kong, 2009
  • Guest lecturer on legal branding issues for marketers, Stanford University Graduate School of Business, 2007
  • “Color as A Trademark in The United States” (paper and presentation), Institute of Trade Mark Attorneys International Meeting, London, 2006
  • “Co-Branding: Managing the Opportunity,” (paper and presentation with R.W. Boad), INTA Annual Meeting, Atlanta, 2004

Civic Involvement

Over the past several years, Mr. Bontemps is proud to have assisted many dynamic organizations devoted to important community, national, and global causes, including:

  • World Affairs Council
  • Surfrider Foundation
  • Protect Our Winters
  • Jazz & Democracy Project

Memberships and Affiliations

  • American Bar Association
  • International Trademark Association
  • MARQUES – The Association of European Trade Mark Owners
  • Institute of Trade Mark Attorneys (UK)

Education

Santa Clara University School of Law, JD, 1992

University of California, Los Angeles, BA, English, 1987

Previous Experience

  • Cooley, LLP (Palo Alto)
  • British Petroleum, Group Trade Marks, Attorney (London)

Areas of Practice

Admissions

  • California

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