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Attorney Profiles

R. Joseph Trojan 
Beverly Hills, California
Owner
phone (310) 777-8399
fax (310) 777-8348
email Email Me

Mr. Trojan is a registered patent attorney with twenty years experience obtaining patents and trademarks throughout the world for his clients. He is also a trial lawyer with extensive experience successfully litigating patents, trademarks, and trade dress cases throughout the United States, and successfully arguing appeals before the Ninth Circuit Court of Appeals and the Federal Circuit Court of Appeals in Washington, D.C. With respect to licensing, Mr. Trojan has negotiated complex multinational patent licenses for his clients and has developed effective licensing strategies for monetizing entire patent portfolios.

Representative Cases:

Akazawa v. Link New Technology Intern., Inc., 520 F.3d 1354 (Fed. Cir. 2008)
International patent case holding that Japanese law controls ownership of a United States patent when the owner of the patent is Japanese.


Slip Track Systems, Inc. v. Metal Lite, Inc., 304 F.3d 1256 (Fed. Cir. 2002)
Clarified rules for resolving patent ownership disputes when two inventors claim to have invented the same invention.
   
Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337 (Fed. Cir. 1998)
Established that a jury trial in district court is the proper forum for resolving fights between inventors over who was the first to invent when both have obtained a patent for the same invention rather than a reexamination proceeding in the Patent Office.


Sengoku Works, Ltd. v. RMC International., Ltd., 96 F.3d 1217 (9th Cir. 1996)
Holding that between a foreign manufacturer and United States distributor, trademark rights are presumed to be owned by the foreign manufacturer.


Murray v. Cable National Broadcasting Co., 86 F.3d 858 (9th Cir. 1996)
Holding that the Ninth Circuit does not recognize reverse confusion claims in trademark cases.


T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996)
Seminal decision establishing the Federal Circuit's test for analogous use in trademark ownership disputes.


Ocean Garden, Inc. v. Marktrade Co., Inc., 953 F.2d 500, (9th Cir. 1991)
On the brief only: retained to prepare portion of brief addressing extraterritorial jurisdiction.

Areas of Practice:
Patents
Trademarks
Bar Admissions:
California, 1988
U.S. District Court Central District of California
U.S. District Court Northern District of California
U.S. District Court District of Arizona
U.S. Court of Appeals 2nd Circuit
U.S. Court of Appeals 9th Circuit
U.S. Court of Appeals Federal Circuit
U.S. Patent and Trademark Office
U.S. Supreme Court
Education:
Loyola Law School, Los Angeles, California, 1988
J.D.
Honors: American Jurisprudence Award in Patent Law
Honors: Jessup International Moot Court Competition, Honolulu, Hawaii, 1987


University of Southern California, Los Angeles, California, 1985
B.S.
Major:  Biological Sciences/Molecular Biology Program


Representative Cases:
Akazawa v. Link New Technology Intern., Inc.,, 2008 WL 834400 (Fed. Cir. 2008)
Slip Track Systems, Inc. v. Metal Lite, Inc., 304 F.3d 1256 (C.A. Fed. 2002)
Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337 (C.A. Fed. 1998)
Sengoku Works, Ltd. v. RMC International, Ltd., 96 F.3d 1217 (C.A. 9th 1996)
Murray v. Cable National Broadcasting Co., 86 F.3d 858 (C.A. 9th 1996)
T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (C.A. Fed. 1996)
Intel Corp. v. Terabyte International, Inc., 6 F.3d 614 (C.A. 9th 1993)
Ocean Garden, Inc. v. Marktrade Co., Inc., 953 F.2d 500 (C.A. 9th 1991)
Professional Associations and Memberships:
American Bar Association, Intellectual Property and Litigations


American Intellectual Property Law Association