Parna Mehrbani

Parna Mehrbani

Partner

503.802.2170
parna.mehrbani@tonkon.com

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Services & Industries

Education

J.D., cum laude and summa cum honori in thesi, Lewis & Clark Law School, 2005

B.A., magna cum laude, University of Illinois at Urbana-Champaign, 2000

Bar & Court Admissions

Oregon State Bar
Washington State Bar Association
U.S. District Court, District of Oregon
U.S. District Court, Western District of Washington
U.S. District Court, District of Colorado

Parna is a partner at Tonkon Torp whose practice is focused on intellectual property, trademark registration and enforcement, and advising and litigating trademark portfolios for local, national, and international companies at all stages of growth. From clearance and prosecution to licensing and enforcement, her clients appreciate her comprehensive approach to protecting their intellectual property assets.

Parna works closely with clients on the development of new brands and lines of business. She has particular expertise in the apparel, footwear, consumer products, food and beverage, cannabis, and education services industries.

When World Trademark Review 1000 named Parna a Leading Trademark Professional, they noted her skill at securing and protecting trademark rights, and educating content teams on their use. She is valued by clients for her personable approach, strong work ethic, and ability to convert legal jargon into business language.

Beyond trademark law, Parna has broad experience in a wide array of intellectual property issues. These include copyright law, right of publicity, trade secret, licensing, false advertising, and intellectual property contracting. She also has particular experience in the use and enforcement of intellectual property online in e-commerce and social media contexts.

Parna is Co-Chair of Tonkon Torp’s Information Privacy & Security Practice Group, advising businesses on the management and security of personal data and the laws that regulate the collection, use, and protection of personal data.

Get to Know

The legal field is all about the details. So it may not be too surprising that Tonkon Torp partner Parna Mehrbani loves to lose herself in the intricate stitches found in hand knitting. Parna is self-taught, having taken up crochet and knitting at the age of seven. She holds two teaching certificates from the Craft Yarn Council of America, and has been an instructor since 2007. She previously taught classes at Portland’s Twisted Yarn Shop. Parna’s favorite part of teaching is encouraging and inspiring confidence in knitters, letting them know that yes, they are doing it right, and no, it doesn’t have to be perfect.

Representative Matters

Arbitration for Uniform Domain Name Dispute Resolution Policy

Regularly represent brand owners in Uniform Domain Name Dispute Resolution Policy arbitration proceedings against cyber squatters, which result in ownership and transfer of domain names to the brand owner.

Defend Trademark/Trade Dress Infringement Suit by Footwear Company

Represented various apparel and footwear manufacturers and retailers in lawsuits filed by an international footwear and clothing company alleging a variety of claims related to trademark and trade dress infringement.

FLIR Systems Inc. v. Sierra Media, Inc. and Fluke Corp.

Represented defendant manufacturer, distributor, and service provider of electronic test tools and software in a suit involving alleged trademark infringement, false advertising, and defamation. Part of trial team that obtained a favorable jury verdict on trademark infringement and false advertising counterclaims.

Heart, LLC v. Heart Pizza, LLC et al.

Represented Heart LLC, a Portland coffee roaster, in a trademark infringement and unfair competition suit against nearby restaurant Heart Pizza.

Licensing and Collaboration Agreements for Pendleton Woolen Mills

Represent Pendleton Woolen Mills, an Oregon-based textile and clothing company, in a broad array of license and collaboration agreements. Collaborators include brands such as Rogue Brewing, Calvin Klein, MLS/Portland Timbers, and Disney.

Meridian Transportation Resources, LLC v. Magic Carrier Resources LLC

Represented Meridian Transportation Resources, a private transportation and tourism company, in a preliminary injunction suit involving trademark and trade dress infringement.

Navigate Real Estate Branding and Advertising Issues

Advise and represent a Seattle-based real estate brokerage firm on comprehensive branding and advertising issues.

Pendleton Woolen Mills vs Pendleton Round-Up Association

Lead attorney for Pendleton Woolen Mills in a trademark infringement and unfair competition case before the U.S. District Court in Oregon. The case was settled favorably with a long-term agreement between both parties.

Representation in Trademark Infringement, Copyright Infringement, and Breach of Contract Suits

Represented companies in multiple industries including global nutritional products, maternity- and infant-related products, food and beverage, and footwear in suits involving alleged trademark infringement, copyright infringement, and breach of contract. Example cases include:

  • Baby Clothes Company v. Grow, Inc. et al.
  • Shardan International Marketing, Inc. v. Haband Company, Inc.
  • Adidas America, Inc. et al v. Herbalife International, Inc.
  • Golden Temple of Oregon, LLC v. Wai Lana Productions, LLC
  • L&A Designs LLC et al v. Xtreme ATVs, Inc. et al.
  • RE/MAX, LLCV v. TMT Development Co., Inc.
  • EGO Originals, Inc. v. Chico's FAS, Inc.

Right of Publicity Suit for Educational Book Publisher

Represented an educational book publisher responding to allegations of violation of publicity rights and copyright infringement. The matter was settled favorably.

Timely Settlement for Retail Client in Labeling Trademark Infringement Suit

In Barenbrug USA, Inc. v. Kmart Corporation, represented defendant retailer in a preliminary injunction suit involving labeling and alleged trademark infringement. Assisted in swift settlement before the start of "high season" for product sales.

Trademark Applications

Represent small and large companies in all aspects of application, prosecution, and maintenance of trademark applications in the U.S. Patent and Trademark Office.

Trademark Trial and Appeal Board Matters

Regularly represent clients in various industries in administrative litigation cases before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office. Successfully represented a local apparel and home products company in a TTAB opposition to enforce client’s right to continue using product designs it had used for more than 100 years.

Community Involvement & Activities

Partners in Diversity Leadership Council
2021-Present, Chair Emeritus
2020-2021, Chair
2019-2020, Vice Chair
2018-2019, Member

Portland Business Alliance
Board of Directors, Former Ex-Officio Member
Leadership Portland, Class of 2015

The Oregon Bench and Bar Commission on Professionalism
2018, Chair
2017, Vice Chair
2015-Present, Member

International Trademark Association
2018-Present, Unfair Competition Committee
2016-2017, Internet Committee, New gTLD Registries Issues and Metrics Subcommittee, Member
2014-2016, Enforcement Committee, Trade Names Subcommittee, Chair
2009-2016, Enforcement Committee, Trade Names Subcommittee, Member

Oregon State Bar
Intellectual Property Section
2020, Chair
2019, Vice Chair
2018, Secretary
2017, Treasurer
2013-2021, Executive Committee

Opportunities for Law in Oregon Planning Subcommittee
2007-2013, Member
Mentor Program (3 years)

Computer and Internet Law Section
2008-2010, Executive Committee

Advisory Committee on Diversity and Inclusion
2009, Secretary
2006-2008, Member

Oregon Women Lawyers
Member
2007-2009, Board of Directors, Queen’s Bench – Multnomah County Chapter

Oregon Minority Lawyers Association
Member
Former Member, Inspiring Minority Attorneys Towards Growth and Excellence “IMAGE” Planning Committee

Rock ‘n’ Roll Camp for Girls
2008-2013, Board of Directors
2009-2013, Chair

Lewis & Clark Law School Mentor Program
2006-2013, Mentor

Business for Culture & the Arts
Art of Leadership Program, Class of 2013

Oregon State Bar Leadership College
2009, Graduate

Gus J. Solomon Inn of Court
2006-2015, Member


Professional Memberships

International Trademark Association
Mulnomah Bar Association
Oregon Minority Lawyers Association
Oregon Women Lawyers

The Best Lawyers in America

2019-2022, Commercial Litigation
2018-2022, Litigation – Intellectual Property
2018-2022, Trademark Law

Chambers USA: America's Leading Lawyers

2016-2022, Intellectual Property

Read More

Super Lawyers

2021-2022, Top 25 Women Oregon Super Lawyers
2022, Top 50 Oregon Super Lawyers
2015-2022, Oregon Super Lawyer – Intellectual Property
2009-2014, Oregon Rising Star – Intellectual Property

Read More

World Trademark Review 1000

2013–2021, Leading Trademark Professional

Multnomah Bar Association

2021, Diversity Award

Daily Journal of Commerce, Oregon

2019, Woman of Vision
2011–2012, Up & Coming Lawyer

Oregon State Bar

2014, Rising Litigator Award, Litigation Section
2010, Individual Award Winner, Pro Bono Challenge
2006, 2008–2013, 2015–2016, Recognized, Pro Bono Honor Roll
2011, Honoree, Convocation on Equality

Portland Business Journal

2015, Woman of Influence

Benchmark Litigation

2018, 40 & Under Hot List

31 Tonkon Torp Attorneys Honored on 2022 Super Lawyers Lists

Thirty-one Tonkon Torp attorneys in 11 practice areas have been included in the 2022 Oregon Super Lawyers or Rising Stars

Chambers USA 2022 Ranks 28 Tonkon Torp Attorneys

Chambers USA has recognized 28 Tonkon Torp attorneys in eight practice areas in its Chambers USA 2022 Guide.

Parna Mehrbani Talks Imposterism in Legal Organizations

Tonkon Torp partner Parna Mehrbani was a panelist for a virtual workshop on Extinguishing Imposterism hosted by the Leadership Committee of Oregon Women Lawyers.

Tonkon HUB Flips the Script on Helping Underrepresented Business Owners

Tonkon HUB was born out of several conversations around diversity and inclusion, the desire to support a robust and diverse business community, and the search for specific, concrete ways Tonkon Torp could help business owners from marginalized and underrepresented communities.

Parna Mehrbani Speaks About Professionalism with the Deschutes County Bar Association

On December 1, Tonkon Torp partner Parna Mehrbani was a featured panelist at a program on professionalism hosted by the Deschutes County Bar Association.

All News Items

The Challenging State of Brand Protection in the Cannabis Industry

Trademark law in the U.S. protects “any word, name, symbol, or design, or any combination thereof, used in commerce” to identify one company’s goods or services from another, and to indicate the source of the goods or services. Protection is available for trademarks used in commerce (called “common law” rights) and heightened protections are available for marks that are used in commerce and registered.

Top 6 Ways to Protect a Cannabis Business Brand

As I previously discussed in my article and podcast published in the Portland Business Journal, U.S. federal trademark law does not currently extend to cannabis products. Because the required “use in commerce” of the cannabis plant and related products is illegal under the Controlled Substances Act, the marks are ineligible for federal registration.

Publications & Presentations

“What Does Professionalism Mean?” Deschutes County Bar Association, December 2021

“Going Beyond the Business Case for Diversity,” Oregon Business Magazine, September 2021

“This is the Way” Keynote Address, Opportunities for Law in Oregon, Oregon State Bar, August 2021

“Legal Considerations for Developing & Protecting Your Brand,” Oregon AF, Oregon Entrepreneurs Network, July 2021

“Identifying and Addressing Imposter Syndrome,” Law Firm Alliance, July 2021

“Diversity, Equity, and Inclusion for Employers,” Annual Labor & Employment Law Update, June 2021

Podcast, “How to Beat Imposter Syndrome,” Mentally Together, Episode 13, April 2021

“Intellectual Property Law for Startups,” TiE XL Oregon Bootcamp, April 2021, December 2020, June 2020, October 2018

Panelist, “Imposter Syndrome Discussion Series,” Oregon Women Lawyers, March 2021, February 2021

Panelist, “Best Practices for Identifying and Managing Intellectual Property Issues for Business Litigators,” Oregon State Bar Business Litigation Section, March 2021

“Imposter Syndrome,” Oregon District Attorneys Association, December 2020

“Privacy Law Review,” December 2020

“Compliance and Enforcement Update,” Greater Portland Compliance Association, October 2020

“Trademark Protection in the Cannabis Industry,” 2nd Annual Northwest Cannabis Law Institute, Oregon State Bar Cannabis Law Section, September 2020

“Legal Considerations for Protecting Your Product/Brand,” Oregon AF, Oregon Entrepreneurs Network, July 2020

Panelist, “Imposter Syndrome,” Oregon Women Lawyers Leadership Committee, July 2020

Moderator, “The State of Media and the Importance of Local Media,” Portland Business Alliance Annual Meeting, June 2020

“Top 6 Ways To Protect a Cannabis Business Brand,” Portland Business Journal, April 2020

“Trademark Law Review Year-in-Review”, Oregon State Bar Intellectual Property Section, February 2020

“FTC #Compliance for Social Media Advertising and Influencers,” Lewis & Clark Law School, February 2020

Podcast, “How Companies in the Cannabis Industry Should Obtain and Protect Their Trademarks,” Portland Business Journal, February 2020

Panelist, “Women Breaking Barriers in the Legal Field,” Business Law Week, University of Oregon Law School, January 2020

“CCPA Preview,” Oregon State Bar Business Law Section, December 2019

“Imposter Syndrome,” Lewis & Clark Law School, November 2019

“Trademark Protection in the Cannabis Industry,” October 2019

Panelist, “Advancing Women in Leadership,” Oregon State University, October 2019

“Introduction to the California Consumer Privacy Act,” September 2019

“The Challenging State of Brand Protection in the Cannabis Industry,” Portland Business Journal, September 2019

“California Consumer Privacy Act 2.0,” July 2019

“California Consumer Privacy Act Overview,” Oregon State Bar Business Law Section, June 2019

Panelist, “Women’s Forum”, Oregon Asian Pacific American Bar Association and Oregon Filipino American Law Association, May 2019

“IP for Food Industry Startups,” Oregon Entrepreneurs Network, Angel Food Conference & Education Series, May 2019

“Why Should Oregon Companies Care About California’s Privacy Law?” Portland Business Journal, May 2019

“California Consumer Privacy Act of 2018,” April 2019, February 2019

Panelist, “Center Stage: Standing Out & Speaking Up,” Portland Women in Leadership Symposium, March 2019

Copyright in the Craft Industry,” Tigard Knitting Guild, February 2019

“Professionalism 2018: What If I’m That Person?” Oregon State Bar Professionalism Commission, November 2018

“Copyright in the Craft Industry,” Puddletown Knitting Guild, September 2018

“Social Media and Websites – IP Pitfalls and Cautionary Tales,” September 2018

“Professionalism in Law,” Oregon State Bar, May 2018

“Candy Trademarking 101: What You Need to Know About Distinctiveness,” Confectionery News, December 2017

“The Slants Play SCOTUS: A Portland Band Defends its Trademark,” CLE Lewis & Clark Law School, Portland, Oregon, April 2017

“Fulfilling a Public Trust, The Professional Lawyer,” Oregon State Bar, March 2017

“Packaging, Licensing, and Labeling,” Lewis & Clark Law School, April 2016

“Why Plant Patenting Floats Free of GMO Crop Controversies,” Oregon Business Magazine, November 2014

“Combating Counterfeiting: How Owners Can Protect Their Brands,” Oregon Business Magazine, September 2014