North Tampa Bar Association Monthly CLE - September 2020

North Tampa Bar Association Monthly CLE 

This Month's Speaker: 

JIM MATULIS

will be speaking on the topic:

Trademark Law: What Your Clients Need You To Know

Speaker Biography

• Certified in Intellectual Property by the Florida Bar since 2007
• Selected four times by peers as the Tampa-area Lawyer of the Year  in intellectual property law areas, including Intellectual Property Litigation (2016 & 2019) and Trademark Law (2013 & 2017) via The Best Lawyers in America® peer voting. 
• Selected by peers in the specialty areas of Intellectual Property Law (2011-2019); Intellectual Property Litigation (2013-2019); Commercial Litigation (2015-2019); Trademark Law (2013-2019); and Copyright Law (2014, 2016-2019) via The Best Lawyers in America®  peer voting.
• Selected to Florida Trend Magazine's Legal Elite for Intellectual Property, 2011.
• Selected to Super Lawyers, featuring selected Intellectual Property Law attorneys from across the United States, for every year since 2010.
• Selected to "Tampa's Best Lawyers® 2010" in the specialty of Intellectual Property Law.
• Rated "AV Preeminent 5.0 out of 5" by Martindale Hubbell and  10.0 out of 10 by Avvo.com

​
Lead counsel, co-counsel, and active local counsel on numerous intellectual property and business disputes since 2000, including the following representative sample:

• Patent infringement plaintiff in suit involving mechanical theft deterrent systems for in-store displays of electronic devices
• Patent infringement plaintiff in suit involving mechanical safety tool used in railroad industry
• Declaratory judgement plaintiff in suit filed in response to patentee’s claims of infringement involving mechanical device for boat navigation
• Patent infringement plaintiff in suit involving process for repairing sinkholes
• Patent infringement defendant in suit involving mechanical device for preventing theft of fuel
• Patent infringement defendant in suit involving computer software
• Employer in suit against former employee and new employer for breach of restrictive covenants, trade secrets, tortious interference, and unfair competition relating to dental insurance claims processing services
• Plaintiff for employer in suit against former independent contractor and new employer for breach of restrictive covenants, unfair competition, and tortious interference relating to outdoor lighting products
• Trademark infringement plaintiff in suit against internet-based competitor relating to outdoor lighting products
• Trademark infringement plaintiff in suit against competitor relating to brokerage services
• Trademark infringement / counterfeiting defendant owners/operators of flea market relating to tenants’ sales of Coach-branded products
• Trademark infringement / counterfeiting defendant owner/operator of retail store selling smoking-related accessories
• Trademark infringement / counterfeiting defendant owners/operators of retail store selling Hello Kitty-branded products
• Plaintiff owners/operators of fitness chain in suit seeking declaratory judgement of non-infringement of 12 registered trademarks, 50 copyrights, trade dress, and breach of multiple settlement agreements
• Copyright infringement defendant owner of retail business in suit relating to computer software
  
• Trademark infringement defendant owner/operator of Amazon-based store in suit relating to sale of live marine animals
• Unfair competition / antitrust defendant owners/operators of Amazon-based store relating to sale of hair care products
• Copyright infringement plaintiff in suit against competitor relating to sale of decorative cross designs​
• Corporate dissolution defendant in suit alleging breach of fiduciary duty
  

Arbitrator in intellectual property disputes
Fee expert witness in suits relating to intellectual property

• trade secrets
• restrictive covenants
• patent litigation
• misappropriation of idea
  

Liability expert witness regarding standard of care in IP cases

​​​Mediator in numerous IP cases since 2012

• ​Vice-Chair, Florida Bar Intellectual Property Section, 2019-2020.
• Co-Chair, Mediation and Arbitration Section, Hillsborough County Bar Association, 2018-2019.
• Co-Chair, Intellectual Property Section, Hillsborough County Bar Association, 2009-2011.
• Committee Chair, 9th Annual Intellectual Property Law Symposium, Florida Bar Intellectual Property Committee, St. Petersburg Beach, FL, April, 2018.
• American Intellectual Property Law Association: Patent Litigation Committee; Trademark Litigation Committee; Contributing Author to Case Summary Updates, 2005.
• ​The Florida Bar: Business Law Section, Intellectual Property Committee, Computer & Technology Law Committee; Alternative Dispute Resolution Section; Entertainment, Arts, & Sports Section; General Practice Section; Trial Lawyers Section.

• Presenter, Overview of Intellectual Property, Jim Moran Institute for Global Leadership, Florida State University, 2019
• Presenter, Intellectual Property Law for Lawyers, North Tampa Bar Association, 2019
• Author, Your Difficult Mediation Client...Help Me Help You!, Lawyer Magazine, January 2018
• Co-Presenter, along with Magistrate Judge Paul Pizzo (MDFla), Mediating Intellectual Property Cases,  Hillsborough County Bar Association, October, 2017
• Presenter, 2017 Trademark Law Year in Review - Florida Bar Intellectual Property Committee's 8th Annual IP Symposium, March 2017
• Author, War in the Amazon Jungle, Lawyer Magazine, January 2017
• Author, Turning Your Mediator into a Decisionmaker: Can't You Just Decide for Us?, January 2017
• Presenter, Legitimate Business Interests in Noncompetition Agreements and Other Restrictive Covenants – What It Really Takes, Hillsborough County Bar Association - Intellectual Property Section CLE, May 2013
• Hey Trademark License, Put on Some Clothes!...Or Else, Lawyer Magazine, May 2013
• Quoted in Engineer Seeks $2 Million for BP Oil Spill Solutions,Tampa Bay Business Journal, April 2012
• Author, Patent Reform: What Passage of the America Invents Act Means, Tampa Bay Business Journal, March 2012
• Guest Columnist, Patent Reform Ideas Would Be Welcome in IP Heavy Bay Area Market, Tampa Bay Business Journal, August 2011
• Author, Attack of the Trolls 2 - Rise of the False Patent Marking Troll, Lawyer Magazine (November 2010)
• Featured, Law Certification Sends Clients a Signal: Expertise Practiced Here, Tampa Bay Business Journal, June 2010
• Author, The Real Cost to Your Client to Register Copyright in Their Website, Lawyer Magazine (August 2009)
• Presenter, Copyright Damages: or, How I Lost the Company to a Programmer, Photographer, Author,…; Association of Corporate Counsel Meeting, West-Central Florida Chapter, 2008
• Quoted in Inside Counsel Magazine, June 2008 article, Workers Rights: Employees' Inventions May Lead to Patent Battles with Employers
• Contributing Author, The Journal, Update on Commercial Litigation Case Law, The Florida Bar Association Business Law Section, 2008
• Author, A Step by-Step Look at the Patent Litigation Process, Inside the Minds Series of Books for C-level Professionals, hardback published by Aspatore Books, 2007
• Contributing Author, Annual Trademark Law Update, American Intellectual Property Law Association, 2005
• Author, Pre-Grant Publications of Patent Applications, The Lawyer, 2003
• Author, Intellectual Property Alert - New Domain Name Registration Opportunities Are Coming, The Lawyer, 2001
• Author, Having Your Cake and Eating It Too, 16 Trial Advocate Quarterly Winter 1997 (Winner “Best Article 1996-1997” Award)

• Florida State Courts
• U.S. District Court, Middle District of Florida
• U.S. District Court, Northern District of Florida
• U.S. District Court, Southern District of Florida
• United States Supreme Court
• United States Patent and Trademark Office
• U.S. District Court, Eastern District of Michigan

• Board Member, Carrollwood Day School (2012-2015)