Bobby Ghajar

Bobby is an intellectual property trial attorney with a practice across the US. Although he represents companies across a wide range of complex commercial litigation issues, his practice is primarily focused on advising companies in trademark, trade dress, copyright, right of publicity and false advertising litigation. He has handled dozens of high-stakes litigation and appellate matters for global brands, celebrities, and unicorn companies. Many of his cases have helped to shape and create legal precedent.

Bobby has successfully tried cases to jury and litigated on behalf of clients in temporary restraining order (TRO) and preliminary injunction proceedings and at summary judgment, and handled appeals before various appellate courts across the US. He also is experienced in all aspects of practice within the US Patent and Trademark Office (USPTO) and has argued before the Trademark Trial and Appeal Board. Complementing his litigation practice, Bobby has significant experience providing clients with creative and results-oriented counseling – ranging from clearance and prosecution in nearly 200 jurisdictions worldwide to the creation of brand guidelines and enforcement strategies. He brings unique experience in international trademark matters, having managed some of the largest international trademark portfolios, worked on litigations in dozens of countries, filed hundreds of trademark applications for his clients and settled numerous multi-jurisdictional disputes.

Bobby’s practice for internet companies involves advertising issues, defamation, take downs, enforcement in virtual worlds and social media, counseling on secondary liability, and domain name reclamation.

Year after year, the World Trademark Review (WTR) 1000 recognizes Bobby as one of the top trademark lawyers in California for both his trademark litigation and trademark counseling experience, and he is one of few attorneys ranked nationally in the Gold Tier for trademark litigation. WTR praises Bobby for being an “excellent, results-driven tactician,” noting that “those who have come up against him instantly gain respect for him.” He is also hailed for his “superb courtroom performances and a string of recent trial successes" with the publication recognizing that “he is a trial lawyer you turn to when you can’t afford to lose.”

The Daily Journal has annually recognized him as one of the top IP litigators in California for his copyright and trademark litigation. Among other accolades, he is ranked by Legal 500 as a leading trademark litigator, noted for being a "very strong advocate with great business acumen.”

Bobby is a member of the International Trademark Association and has served on several of its subcommittees. He speaks and writes extensively on intellectual property and internet issues, street art, fair use, AI, and other cutting-edge IP concerns. He has co-written treatises on right of publicity and trademark law, and he has been quoted as an expert in numerous entertainment and legal publications in the US and Canada.

Bobby’s representative matters include:

• First-chairing a two-week jury trial representing a multinational toy and game company and licensors in a long-running trademark infringement and unfair competition action, resulting in an $8.6 million verdict for his clients, and winning and defeating numerous summary judgment motions, including significant rulings dealing with fraud on the USPTO
• Winning dismissal of trademark infringement claims brought against Meta in Dfinity Foundation v. Meta Platforms relating to Meta’s corporate logo, which was recognized as one of the top trademark decisions of 2022 and reported in multiple publications
• Representing a global celebrity and company in defense of trademark infringement lawsuit brought against a skin care line
• Defeating a trademark infringement preliminary injunction brought against a national supplement company
• Defending a trademark infringement and false advertising claims brought against an online supplement company.
• Defeating a preliminary injunction motion against a top online workplace platform, defending that ruling on appeal to the US Court of Appeals for the Ninth Circuit and successfully resolving case
• Winning a precedential ruling in copyright infringement litigation against a cloud hosting company on claims of secondary liability, obtaining dismissal with prejudice and defeating motion for reconsideration
• Winning a pre-trial dismissal decision in trademark infringement lawsuit involving a historic appliance brand, securing a multimillion-dollar judgment and injunction, and defending against an emergency motion to stay the ruling pending appeal
• Representing a leading global beverage company in trademark litigation brought by a billion-dollar apparel brand
• Representing an online ecommerce platform in trademark infringement and class action cases, winning partial dismissal and favorable summary judgment rulings, and successfully resolving the case
• Representing a popular virtual reality hardware and software maker against claims of trademark infringement and obtaining summary judgment on behalf of the client, followed by dismissal of the multimillion-dollar damages request
• Representing a board game and book publisher in an appeal to the Ninth Circuit, arguing and winning a precedential decision reversing a district court ruling relating to the issue of trademark distinctiveness
• Representing a famous worldwide sports and apparel company, arguing and winning summary judgment, and obtaining dismissal of trademark and unfair competition claims that sought nearly eight-figure damages, followed by defeat of motion seeking summary judgment as to fraud counterclaims
• Representing a global toy and entertainment company in an appeal relating to opposition to a movie company’s application to register a trademark identical to the toy company’s claimed rights to several trademarks, and winning a precedential decision from the US Court of Appeals for the Federal Circuit for the client and preserving one of its key brands against a charge of abandonment
• Defeating an e-learning technology company’s TRO and preliminary injunction motion that threatened to prevent the launch of the client’s new computerized learning device, and winning summary judgment dismissing the majority of the plaintiff’s damages claim and forward confusion claim, as well as debunking a theory of “search engine” confusion
• Representing an international entertainment company in a breach of implied contract and copyright lawsuit seeking nearly nine-figure damages, winning motions to dismiss non-copyright claims and dismissal of individual defendant, and resolving the matter
• Representing a global clothing retailer in a multimillion-dollar victory against a competitor by co-chairing a team during the two-week jury trial to prevail on trademark, unfair competition and contract claims, leading to a jury award of $5.7 million for the client
• Representing an upscale beverage maker in relation to false advertising and Consumers Legal Remedies Act class action claims, and successfully resolving the issues on behalf of the client
• Representing an Australian company in a 28 USC §1782 (Request for Judicial Assistance) action, in one of the few cases challenging the reach of the content prohibitions of the Stored Communications Act with respect to a large ISP’s production of certain information relating to emails, and arguing for and obtaining partial relief
• Defending the inventors of a beverage concept and trademark in a breach of contract, conversion, unfair competition and trademark infringement case against celebrity plaintiffs and counter-defendants
• Representing a solar technology company against claims of false advertising and trademark infringement, and settling the case after filing a motion for summary judgment and a Daubert motion excluding the other party’s damages expert
• Representing an international computer company in TRO and preliminary injunction proceedings that sought to shut down a collaborative social media and music project by defeating the TRO, with the plaintiff subsequently dismissing the case
• Leading a team that defended a nonprofit entity in a trademark and trade name infringement case by defeating the preliminary injunction and the plaintiff’s motion for summary judgment, then winning a summary judgment dismissing all claims
• Defending a semiconductor company in a trademark and trade name infringement case involving secondary meaning and genericness issues, and obtaining dismissal with prejudice
• Obtaining on behalf a real estate developer, manager and broker a complete defense summary judgment on a national law firm plaintiff’s infringement, cybersquatting and dilution claims (one of the first under the Trademark Dilution Revision Act), along with a partial award of defendants’ attorneys’ fees and costs
• Serving as lead counsel on behalf of an international semiconductor company in a trademark infringement and dilution action, winning judgment against corporate and individual defendants, and defending that judgment on multiple appeals to the US Court of Appeals for the Eleventh Circuit
• Defending an international apparel company in a copyright and California right of publicity lawsuit, obtaining dismissal of certain claims on 12(b)(6) motion, and mediating the case to obtain a favorable settlement
• Successfully representing a natural beverage company in a forward and reverse confusion infringement and dilution lawsuit against large alcoholic beverage and vodka manufacturers by defeating summary judgment on dilution and infringement grounds, then obtaining several key pretrial rulings and a favorable settlement for the client
• Successfully representing a family-owned ophthalmologic products company in a forward and reverse confusion infringement lawsuit against a worldwide pharmaceutical and contact lens company, then mediating and obtaining a favorable settlement
• Winning key summary judgment rulings and obtaining a favorable settlement for a worldwide soft drink manufacturer in defense of a trademark and copyright infringement action involving a well-known logo
• Obtaining a settlement and a de facto injunction against a copycat energy beverage on behalf of a popular beverage manufacturer
• Defeating a motion for preliminary injunction brought by a multibillion-dollar lending institution against mortgage broker clients, leading to a favorable settlement after an early mediation
• Obtaining a favorable settlement for a Fortune 100 semiconductor manufacturer in a complex trademark infringement and dilution action
• Defending a global hotel chain in a trademark infringement action in a reverse confusion lawsuit, leading to a favorable settlement
• Representing a large apparel company in a lawsuit against a national retailer and clothing manufacturer in a trademark infringement lawsuit by favorably settling the case

Recent presentations

• "Responsible AI in Business: Ethical Challenges and Opportunities," USC Marshall School of Business, Neely Center for Ethical Leadership and Decision Making, Los Angeles, January 29, 2024 
• “How Foreign Law Influences U.S. Trademark Law,” PLI’s Intellectual Property Institute, San Francisco, November 3, 2023
• “AI and Intellectual Property Issues,” ACC New York, New York, NY, October 5, 2023
• “AI Talks, Intellectual Property,” Cooley Webinar, October 4, 2023
• “Legal Issues Surrounding AI,” Practising Law Institute Technotainment 2023, San Francisco, CA, October 2, 2023
• “Analog to AI: Using AI as a Shield Not a Sword,” IP-Con 2023: The Coming Vortex – The Convergence of AI, IP and Regulation, Redwood City, CA, September 29, 2023
• "Harnessing the Power of Generative AI: Legal and Policy Considerations,” Major, Lindsey and Africa Webinar, June 13, 2023
• "Surveys and Other Experts in Copyright Litigation," McCarthy LA Copyright Symposium, Los Angeles, March 16, 2023
• "The Augmented Author: Exploring the IP Implications of Generative AI," Cooley CLE Program, New York, March 9, 2023
• "The Augmented Author: Exploring the IP Implications of Generative AI, Cooley CLE Program, San Francisco, February 8, 2023
• “Extraterritorial Application of the Lanham Act: Enforcing Foreign Rights in the US and Enforcing US Rights Against Foreign Conduct,” Practising Law Institute (PLI) Intellectual Property Law Institute, New York, September 23, 2022
• “The Use of Empirical Evidence in Intellectual Property Cases,” IP-Con 2022: An Annual Symposium for the Progress of Science and Useful Arts, Phoenix, Arizona, March 17, 2022
• “Developments in Anti-Counterfeiting,” PLI Intellectual Property Law Institute, San Francisco, October 19, 2021
• “From Kitties to Kicks (and Everything in Between): NFT Challenges and Opportunities,” Lexology webinar, August 18, 2021
• “Tech Secrets and Security Risks,” Cooley CLE program, Santa Monica, California, November 1, 2019
• “What Is and Isn’t Registrable With the USPTO?” PLI Intellectual Property Law Institute, San Francisco, October 21, 2019
• “Hot-Button Issues in Trademark and Copyright Enforcement and Litigation,” Cooley CLE program, Santa Monica, California, April 10, 2019
• “Business Risk, Litigation & Technology: How to Gain a Competitive Advantage,” co-presented by Harvard Business School and Cooley, Santa Monica, California, October 25, 2018
• “Anticounterfeiting Updates,” PLI Intellectual Property Law Institute, San Francisco, October 22, 2018
• “Landmines in Trademark Litigation,” PLI Intellectual Property Law Institute, San Francisco, October 23, 2017
• “What You Should Know: Protecting Your IP Online,” Cooley CLE program, Santa Monica, California, October 10, 2017
• “Non-Monetary and Monetary Relief in Trademark Cases and Seeking Relief at the ITC,” with International Trade Commission Chief Administrative Law Judge Charles E. Bullock, AIPLA 2017 Spring Meeting, San Diego, May 18, 2017
• “Trademark Enforcement Practice Tips,” Cooley CLE program, Santa Monica, California, April 27, 2017
• “Impact of Changes to FRCP on Trademark Practice and Proposed Changes to TTAB Rules of Practice,” PLI Intellectual Property Law Institute, San Francisco, October 24 – 25, 2016
• “Successful Business Start Ups: The Necessity of An Experienced Attorney,” American Bar Association webinar, September 20, 2016
• “Street Art: The New Legal Landscape,” Beverly Hills Bar Association, September 8, 2016
• “ICANN! Learn Everything I Need to Know About Top Level Domains,” Beverly Hills Bar Association, November 13, 2014
• Co-presenter of “#EntertainMe: How to Protect IP Across Digital Platforms [Without Alienating Your Audience],” Technotainment2014: Distributing Content Across Multiple Platforms seminar, PLI, September 17, 2014
• “The New Domain Names: What You Need to Know About Generic Top Level Domains (gTLDs) and How it May Affect Your Clients,” Orange County Patent Law Association, May 22, 2014
• Annual Trademark Bootcamp – Preliminary Injunctive Relief and Dilution, Los Angeles Intellectual Property, October 24, 2013
• Moderator of “What Do I Gotta Do to be Famous Around Here? An Examination of Recent Trends in Federal Dilution Law,” 28th Annual Intellectual Property Law Conference, American Bar Association, April 4, 2013
• “Trends in Intellectual Property,” Client CLE program, January 2013
• “Fraud in IP Cases: Still Viable?” Client CLE program, 2011 – 2012

Recent publications 

• Co-author of “US Copyright Office Grants Limited Registration for AI-Generated Graphic Novel,” Cooley Alert, February 2023
• Co-author of “Purchasing NFTs? Watch Out for These IP Issues, Bloomberg Law (May 2022)
• Co-author of “Upcycled Goods: Considering When Restoration Crosses into Infringement,” IP Watchdog, March 2022
• Co-author of “Trademark Modernization Act Resolves Disparate Handling of Presumption of Irreparable Harm in Trademark Cases,” The Trademark Lawyer, December 2021
• Author of “Is Trademark Dilution Even Still A Thing?” Law360, June 2021
• Co-author of “NFTs Present Opportunities and Challenges for IP Rights Holders,” The Wrap PRO Insight, April 2021
• Co-author of “US Supreme Court Affirms ‘Generic.com’ Trademarks Eligible for Protection,” Cooley Alert, July 2020
• Author of “In Booking.com, Court Rejects Hard Rules and Dire Warnings,” Law360, July 2020
• Co-author of “2 Copyright Rulings Reveal Evolving Protection for Street Art,” Law360, May 2020
• Co-author of “Federal Circuit Rules Multicolor Designs on Product Packaging Eligible for Trademark Protection,” Cooley Alert, April 2020
• Co-author of “Supreme Court Rejects USPTO’s Attempt to Extract Legal Fees for District Court Appeals,” Cooley Alert, December 2019
• Co-author of “Supreme Court to Hear Dot-Com Trademark Issue,” Cooley Alert, November 2019
• Co-author of “Will the US Supreme Court Curtail the USPTO’s Fee Grab?” Daily Journal, November 2019
• Co-author of “Supreme Court Rules Copyright Owners Must Obtain Registration Before Suing,” Cooley Alert, March 2019
• Co-author of “SCOTUS to Decide If Ban on Scandalous Trademarks Is Unconstitutional,” Cooley Alert, January 2019
• Co-author of “How are Courts Analysing Issue Preclusion Post-B&B Hardware?” World Trademark Review, June 2017
• Co-author of “Supreme Court Creates New Test That Could Grant Broader Copyright Protection to Clothing Designs,” Cooley Alert, March 2017
• Co-author of “Long-anticipated TTAB Rule Changes are Coming,” Intellectual Property Magazine, February 2017
• Co-author of “Stars, Stripes and Copyright,” Intellectual Property Magazine, December 2016/January 2017
• Co-author of “Sound Recordings and the De Minimus Exception: A Circuit-by-Circuit Analysis,” Bloomberg BNA Patent, Trademark and Copyright Journal, December 2016
• Co-author of “Street Art: The Everlasting Divide Between Graffiti Art and Intellectual Property Protection,” Landslide, May/June 2015
• Co-author of “How Trade Mark Defendants are Winning from MedImmune,” Managing Intellectual Property, October 2013