Practice Expertise

  • Franchising, Licensing and Distribution
  • 3D Printing
  • Advertising and Marketing Litigation
  • Advertising Litigation

Areas of Practice

  • 3D Printing
  • Advertising and Marketing Litigation
  • Advertising Litigation
  • Franchising, Licensing and Distribution
  • AI, Metaverse, and Emerging Technologies
  • Fourth Circuit Practice (US Court of Appeals ...
  • Global Outsourcing and Technology
  • Intellectual Property
  • Intellectual Property and Technology ...
  • Intellectual Property Litigation
  • Licensing and Technology Transfer
  • Licensing, Technology Transfer and ...
  • Litigation
  • Outsourcing, Technology and Commercial ...
  • Patent Litigation
  • Retail
  • Software Audits
  • Trade Secrets
  • Trade Secrets Counseling and Litigation
  • Trademark – Non-Contentious
  • Trademark Counseling and Litigation
  • Trademark Proceedings
  • Trademarks
  • View More

Profile

John Gary has a broad-based intellectual property and software litigation practice.

John Gary is co-head of the firm’s intellectual property group. His practice has a particular emphasis on brand protection; software audits; online enforcement, including domain name counseling and litigation under the Uniform Domain Name Dispute Resolution Policy (UDRP); trade secret protection; licensing of intellectual property assets; and litigation under the Lanham Act and the Copyright Act. He is recognized as an industry leader by numerous rankings and other publications, including Chambers USA, Legal 500 United States, and Best Lawyers. Clients have told Chambers USA that he “provides a very strong service” (2023) and Legal 500 USA that he is “always informative, helpful, and clear” (2023).  World Trademark Review 1000 notes that he “has a solid head on his shoulders and knows how to get things done” (2023) and has said he exhibits “keen awareness of the evolving social media scene and the issues it presents for innovative brand owners” (2022).

John Gary is admitted to practice before the United States Supreme Court, the Fourth and Eleventh Circuit Courts of Appeals, the US District Courts for the Eastern and Western Districts of Virginia and the US District Courts for the Northern, Middle and Southern Districts of Florida. He served as a judicial clerk for the Honorable Susan C. Bucklew in the Middle District of Florida from 1995 to 1997.

Relevant Experience

  • Developed, implemented, and managed global trademark prosecution, maintenance, and enforcement programs for Fortune 1000 companies, including major financial institutions, retailers, a major airline, and a chemical company, under both hourly and alternative fee arrangements.
  • Assisted well-known academic medical institution in co-branding transaction involving the use of proprietary cancer treatment technology.
  • Served as trademark counsel to the board of an IP holding company for a Fortune 1000 company.
  • Represented numerous Fortune 1000 companies in brand protection disputes, including trials in federal court, injunction hearings, mediations, and proceedings before the Trademark Trial and Appeal Board (TTAB).
  • Developed, implemented and managed online enforcement program for major financial institution, including strategy for social media.
  • Counseled numerous software licensees on software audit issues resulting in savings in excess of $150 million.
  • Represented major retailer in litigation of copyright infringement and breach of contract matter arising from a software audit, reaching favorable settlement.
  • Represented major gaming software vendor in copyright infringement and breach of contract matter, obtaining favorable jury verdict after three-week trial.
  • Developed holistic and client-specific trade secret protection and overall intellectual property protection programs for Fortune 200 company, and provided training and follow-up for implementation and maintenance. Programs included physical safeguards, premises controls, computer-use policies, document management procedures, and policies governing employees and visitors.
  • Regularly counsels clients on proactive and reactive trade secret and other intellectual property protection, including cases involving information security and business partner agreements.
  • Regularly counsels major retailer on advertising issues.

Bar Admissions

  • District of Columbia
  • Florida
  • Virginia

Education
BA, Davidson College, 1990

Areas of Practice

  • 3D Printing
  • Advertising and Marketing Litigation
  • Advertising Litigation
  • Franchising, Licensing and Distribution
  • AI, Metaverse, and Emerging Technologies
  • Fourth Circuit Practice (US Court of Appeals for the Fourth Circuit)
  • Global Outsourcing and Technology
  • Intellectual Property
  • Intellectual Property and Technology Transactions
  • Intellectual Property Litigation
  • Licensing and Technology Transfer
  • Licensing, Technology Transfer and Monetization
  • Litigation
  • Outsourcing, Technology and Commercial Contracting
  • Patent Litigation
  • Retail
  • Software Audits
  • Trade Secrets
  • Trade Secrets Counseling and Litigation
  • Trademark – Non-Contentious
  • Trademark Counseling and Litigation
  • Trademark Proceedings
  • Trademarks

Professional Career

Significant Accomplishments
  • Trademarks/Brand Protection: Represented numerous clients in trademark disputes, including trials in federal courts, injunction hearings, mediations, and proceedings before the Trademark Trial and Appeal Board. Participates in the creation, implementation, and enforcement of brand strategy. Provides advice regarding trademark portfolios and trademark management, including prosecution of trademark applications for registration with the US Patent & Trademark Office and elsewhere. Representative clients have included major grocer, do-it-yourself lawn company, franchisors, major airlines, consumer goods manufacturers and distributors, and banking and financial institutions. 
  • False Advertising: Represented clients in false advertising disputes, including trials in federal courts, and injunctive hearings and mediation. Provides advice to clients regarding advertising materials and propriety of advertising claims under the Lanham Act, FTC regulations, "Little FTC Acts" and the National Advertising Division (NAD) of the Council of Better Business Bureaus. Have written advertising manuals/guidelines for clients. Representative clients have included major retail chains, manufacturers and marketers of lawn and garden products, consumer goods manufacturers and distributors, and banking and financial institutions. 
  • Copyright Protection and Enforcement: Represented numerous clients in the prosecution and enforcement of copyrights, including at trial in federal courts, injunctive hearings and mediation. Copyright clients have included major retail chains, advertising agencies, financial and banking institutions, and major airlines. 
  • Trade Secrets Litigation: Handled several trade secrets litigation matters (often including allegations of breach of confidentiality or nondisclosure agreements), including successful summary judgment proceedings and handling of fast-track, complex cases involving requests for preliminary and permanent injunctive relief. 
  • Pro Bono Representation: Handled prosecution and defense of several pro bono lawsuits and ADR proceedings. Have performed at least 100 hours of pro bono work per year for the past 11 years.


Professional Associations
  • Member, The International Trademark Association (INTA)


Articles

  • Adventures in Software Audits, Part Two: How Business Context Affects the Bottom Line, Security Boulevard
  • Preparing for Software License Audits, Bloomberg Law
  • Five Reasons Why You Should be Monitoring These Four Artificial Intelligence Cases, LegalTech News
  • Key Readiness Tactics for a Software Audit, Part One: Software Audit Steps and Management, American Bar Association’s Business Law Today
  • Adventures in Software Audits, Part One: How Software License Terms Drive Audit Resolution, Security Boulevard
  • 2016 Eastern District of Virginia Intellectual Property Year in Review
  • 2015 Eastern District of Virginia Intellectual Property Year in Review
  • 2012 Eastern District of Virginia Intellectual Property Year In Review
  • Trump’s Trademark Registrations Reveal Breadth of His Brand Strategy, BNA's Patent, Trademark & Copyright Journal
  • Adventures in Software Audits, Part Three: The Paradigm Battle, Security Boulevard
  • Pitfalls Of Attorney AI Use In Brief Prep Has Judges On Alert, Law360
  • 2014 Eastern District of Virginia Intellectual Property Year In Review
  • Key Readiness Tactics for a Software Audit, Part Two: Contractual Strategies to Mitigate Risk, Business Law Today
  • 2019 Retail Industry Year in Review

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