Intellectual Property

Intellectual property assets can underpin a company’s success in virtually any industry.

Tonkon Torp’s IP lawyers are skilled in the law of trademarks, copyrights, trade secrets, and patents, and they enjoy helping clients develop, protect, and strategically exploit those assets. Our intellectual property practice encompasses the full range of counseling and compliance services, as well as litigation expertise.

We work with exceptional local, national, and international patent prosecution firms when our clients need technical patent advice.

Counseling & Transactions

Tonkon Torp attorneys help clients protect and leverage intellectual property assets at all stages of growth. Our advising and transactional services include:

  • Identifying and protecting trademarks, service marks, and copyrights
  • Negotiating technology transfer and licensing agreements relating to patents, trademarks, know-how, and copyrighted works
  • Negotiating software development and licensing agreements
  • Developing copyright compliance programs, including with respect to open source code
  • Performing due diligence of intellectual property assets in merger and acquisition transactions
  • Protecting inventions, creations, and trade secrets through intellectual property assignments, nondisclosure, and non-compete agreements
  • Developing privacy policies

Litigation

Tonkon Torp attorneys advocate fiercely on behalf of our clients in intellectual property matters. We defend clients accused of misappropriation of trade secrets or patent, trademark, or copyright infringement. We assert claims on behalf of clients whose trade secrets have been misappropriated or whose intellectual property rights have been infringed.

Our experienced litigators are ready to help resolve disputes through negotiation, mediation, litigation, and/or arbitration. When fast action is needed, our attorneys have extensive experience seeking injunctive relief to prevent the inappropriate release or use of intellectual property assets. Tonkon Torp’s IP litigation attorneys are also adept at negotiating satisfactory settlements of ongoing license agreements without compromising our clients’ business relationships.

Our intellectual property litigation practice includes:

  • Patent, trademark, and copyright infringement and trade secret misappropriation
  • Contract and commercial disputes arising from technology transfer or licensing agreements
  • Domain name disputes, nationally and internationally
  • Enforcement of non-compete and nondisclosure agreements through injunctions, trials, and appeals
  • Trademark Trial and Appeal Board trials and appeals
  • Patent Trial and Appeal Board trials and appeals

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Services + Industries

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Partner
Alex
Tinker
503.802.5734
alex.tinker@tonkon.com
Litigation Paralegal
Amanda
Ulrich
503.802.2106
amanda.ulrich@tonkon.com
Of Counsel
Joseph
Voboril
503.802.2009
joe.voboril@tonkon.com
Associate
Alexandria
Wagner-Jakubiak
503.802.5748
alexandria.wagner@tonkon.com
Labor & Employment Paralegal
Caryl
Walker
503.802.2105
caryl.walker@tonkon.com
Of Counsel
Michele
Wasson
503.802.2111
michele.wasson@tonkon.com
3549
Partner
Frank
Weiss
503.802.2051
frank.weiss@tonkon.com
3503, 3539, 3541, 3545, 3547, 3551
Partner
Steven
Wilker
503.802.2040
steven.wilker@tonkon.com
Partner
Michael
Willes
503.802.5737
michael.willes@tonkon.com
Associate
Lindsay
Willson
503.802.5751
lindsay.willson@tonkon.com
Partner
Jeffrey
Woodcox
503.802.2039
jeffrey.woodcox@tonkon.com
Partner
Zachary
Wright
503.802.2041
zach.wright@tonkon.com
Immigration Paralegal
Roger
Wykes
503.802.2096
roger.wykes@tonkon.com

Tonkon Torp Helps Malarkey Roofing Company Construct a Billion-Plus Sale Strategy

Tonkon Torp guided client Herbert Malarkey Roofing Company through a successful $1.35 billion stock sale to Switzerland-based Holcim Group, one of the world’s largest building products companies. The deal secured a place as one of Oregon’s largest M&A transactions in 2021.

Tonkon Torp Leads CamelBak to Victory at the Patent Trial and Appeal Board and Federal Circuit

Tonkon Torp has won a significant patent case for its client, CamelBak Products. CamelBak, based in Petaluma, California and founded in 1989, invented the hands-free hydration category and is the global leader in personal hydration gear. In November 2014, CamelBak was sued for patent infringement on a lid assembly for a beverage container that included cleaning features.

Tonkon Torp Brings Attorney Power to Renewable Energy Transaction

Tonkon Torp client Enel Green Power North America (EGPNA) is the North American subsidiary of one of the largest corporations in the world, the Italian electricity company Enel S.p.A. Here’s how we helped EGPNA in a renewable energy acquisition.

Tonkon Torp Represents Vestas in Acquisition of UpWind Solutions

Tonkon Torp represented its client Vestas, the world’s largest manufacturer of wind turbines, in the acquisition of UpWind Solutions, Inc., an independent service provider for wind power plants in nine US states. The $60 million acquisition furthers Vestas’s strategic objectives for its North America service business.

Tonkon Torp Wins Intellectual Property Judgment for AXTS and Rainier Arms

Jon Stride, lead trial lawyer for Tonkon Torp’s Intellectual Property Practice Group, successfully pursued trademark infringement and counterfeiting claims on behalf of AXTS (Salem, OR) and Rainier Arms. AXTS manufactures high-quality after-market firearm parts. It co-brands the RAPTOR charging handle part for AR 15 rifles with Rainier Arms (Auburn, WA) which is sold throughout the United States.

Representative Matters

Represented Client and Irish Software Firm Developing Custom Insurance Application Process

Worked with client and Irish software development firm in the customization of an innovative, streamlined insurance application process for use in a multi-insurance carrier environment.

Represented Client Developing Turnkey Software Delivery System

Worked with client in developing new turnkey model for the delivery of software as a service for national and international clients.

Negotiated Master Services Agreement for Software Company

Represented a NASDAQ-listed software company in negotiating a master service agreement with a NYSE-listed social networking company.

Represented Multi-National Water Filtration Company in Development Agreement

Represented a multi-national water filtration company in drafting and negotiating a joint development agreement with a U.S.-based chemical technologies company for the development of new water filtration systems.

Startup Collaboration Agreements for Prospective Partners

Represented a startup client in drafting and negotiating collaboration agreements with prospective partners for the purpose of marketing and commercializing new patents and technologies.

Endorsement Agreement

Drafted and negotiated an agreement involving the endorsement services of a reputable, well-known industry expert for a client engaged in manufacturing and selling consumer products.

Advised Drone Technology Company on Trademark Matters

Advised startup drone technology company, SkyWard, on trademark protection issues, and subsequently filed applications with the USPTO for entire portfolio of trademarks.

Master Services Agreement for Technology Client

Negotiated Master Services Agreement for technology client's provision of software development, support and consulting services to ABC.

USPTO Trademark Trial and Appeal Board

Represented Sunstone Circuits, a manufacturing and design company in the printed circuit board industry, in the successful resolution and settlement of a trademark dispute before the USPTO Trademark Trial and Appeal Board.

Trademark Dispute Resolution

Represented a national provider of senior living and assisted living facilities in the resolution of a trademark dispute concerning the unique name of a local senior living facility.

Represented Applicant at USPTO Trademark Trial and Appeal Board

Successfully represented trademark applicant Fresh Hemp Foods Ltd. in an opposition proceeding before the USPTO's Trademark Trial and Appeal Board.

Defended Pet Toy Manufacturer

Successfully defended pet toy manufacturer against a motion for temporary restraining order and preliminary injunction based upon allegations of trademark infringement.

Purchase of Websites and Online Businesses

Represented purchaser in acquiring websites and online businesses with known intellectual property, licensing, and regulatory compliance issues related to information privacy, security, and consumer protection matters; assisted purchaser in correcting such issues post-closing.

Counterfeiting and Patent Infringement Matter

Representing a Japanese manufacturer of office supplies against a U.S. retailer and Chinese manufacturer in a counterfeiting and design patent infringement matter.

Defense of Distributor Accused of Copyright and Trademark Infringement

Representing a U.S. distributor accused of infringing copyrights and trademarks arising from the purchase and importation of products from a Chinese manufacturer who was licensed to make and sell the products.

Somarakis, Inc. v. Dekker Vacuum Technologies

Representing an international manufacturer of industrial vacuum pumps against a competitor for misappropriating the client's trade secrets and using the trade secrets to interfere with the client's business. The case is filed in the United States District Court for the Middle District of Florida.

Trade Secrets

Tonkon Torp defended a client from accusations of trade secret misappropriation, ultimately obtaining a complete victory for the client on appeal. Short of trial, the Tonkon Team also helped defend a local manufacturer against a competitor’s claims for misappropriation of trade secrets and breach of a license agreement, knocking out a substantial portion of the competitor’s claims on summary judgment, and enabling the case to settle.

Trade Dress

When a local company expanded into a new market, a competitor accused the client of infringing on the competitor’s trade dress, helped defend the client’s packaging, prevailing on summary judgment, and then helping to defend the decision successfully on appeal.

Services + Industries

Services + Industries

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We encourage you to contact us if you have further questions about our firm or our experience. For your protection, we cannot represent you until we know that doing so will not create a conflict of interest. Accordingly, please do not send us any confidential or secret information about any matter that may involve you until you receive a written statement from us that we represent you (an engagement letter).

If after browsing this web site you are unsure which lawyer you should contact, please call us at 503.221.1440.