Intellectual Property Law
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
When disputes arise in this area, clients turn to our Intellectual Property Litigation team.

Attorneys

Paralegals

Lisa  Gabel

Lisa Gabel

Intellectual Property Paralegal

503.802.2173
lisa.gabel@tonkon.com
Renee  Peck

Renee Peck

Intellectual Property Paralegal

503.802.2197
renee.peck@tonkon.com

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.

Advised Drone Technology Company on Trademark Matters

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

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.

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.

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.

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.

Master Services Agreement for Technology Client

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

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.

Purchase of Websites and Online Businesses

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

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.

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.

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.

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.

Start-Up Collaboration Agreements for Prospective Partners

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

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.

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.

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…
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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…
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Supreme Court Eliminates Obstacle to Declaratory Relief in Patent Cases

If you are a party to a patent license agreement, the U.S. Supreme Court just made it easier to go to court to test the validity of the patent or whether a licensed product would actually infringe the patent.
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26 Tonkon Torp Attorneys Honored on 2021 Super Lawyers Lists

Twenty-six Tonkon Torp attorneys in nine practice areas have been included in the 2021 Oregon Super Lawyers or Rising Stars lists.
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Parna Mehrbani Presents the Case for a Diverse Workforce

Partner Parna Mehrbani was the closing speaker at Tonkon Torp’s Annual Labor & Employment Event, held virtually on June 9. Parna focused her talk on recommendations for what employers can do to encourage inclusiveness and retain employees of color.
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Chambers USA 2021 Ranks 23 Tonkon Torp Attorneys

Chambers USA has recognized 23 Tonkon Torp attorneys in seven practice areas in its Chambers USA 2021 guide.
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Parna Mehrbani Honored with Multnomah Bar Association Diversity Award

On May 19, Tonkon Torp partner Parna Mehrbani was honored with the 2021 Multnomah Bar Association (MBA) Diversity Award in recognition of her commitment to fostering and promoting diversity, equity, and inclusion (DEI) in the legal profession.
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Parna Mehrbani Speaks about Imposter Syndrome on Mentally Together Podcast

Tonkon Torp attorney Parna Mehrbani was the featured guest on Episode 13 of Mentally Together, a podcast hosted by Portland media personality Cassidy Quinn.
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Josh Smith Talks Technology Licensing and Transfers for OBI

Tonkon Torp partner Josh Smith was a featured speaker at a recent educational program hosted by Oregon Bioscience Incubator (OBI). The program focused on technology licensing and transfers from educational and other institutions.
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Tonkon Torp Attorneys Share Expertise with Entrepreneurs at TiE XL Boot Camp

Tonkon Torp attorneys Clay Creps, Tyler Harkness, and Parna Mehrbani were instructors at the April 13 session of the TIE XL Boot Camp.
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Parna Mehrbani Outlines IP Issues for Business Litigators

On March 16, Tonkon Torp partner Parna Mehrbani was a featured panelist at an event hosted by the Oregon State Bar Business Litigation Section.
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Parna Mehrbani Leads Discussion Series on Imposter Syndrome for Lawyers and Law Students

Tonkon Torp partner Parna Mehrbani facilitated another four-part discussion series on Imposter Syndrome hosted by Oregon Women Lawyers.
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Erickson and Mehrbani Named to 2021 WTR 1000 by World Trademark Review

Tonkon Torp partners Chris Erickson and Parna Mehrbani were selected for inclusion in the 2021 WTR 1000.
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