Barry has over 20 years experience in intellectual property law and counseling, particularly handling domestic and international representation in trademark matters. Barry manages the intellectual property portfolios for numerous companies with respect to: selection, clearance and registration of trademark applications; enforcement of trademark, trade name, trade dress, copyright, trade secret and unfair competition litigation in federal court; opposition and cancellation proceedings before the Trademark Trial and Appeal Board; ICANN domain name disputes; and effective dispute resolution.
Transactional aspects of his practice emphasize IP counseling, handling of demand matters, rendering legal opinions and developing strategic trademark registration and enforcement policies and management of international trademark portfolios. He frequently counsels clients on use of copyright protection strategies, enforcement of copyright rights, licensing, commercial agreements and transactions, franchising and administrative law matters, including customs enforcement issues.
Barry practices intellectual property law across a large number of the region’s important business sectors including: information technology, software, telecommunications, defense contracting, media content, lifestyle and consumer products, action sports, financial institutions, real estate projects, service, travel and tourism, nutritional supplement and food industries.
Barry is admitted before the Supreme Court of California, all California Courts, and the Southern and Central US District Courts.
Prior to joining Procopio, Barry was a partner in the intellectual property firm of Brown, Martin, Haller & McClain LLP.
- Represents clients in infringement analysis, trademark litigation in the Federal Courts, and in Oppositions and Cancellations before the Trademark Trial and Appeal Board.
- Represents public company plaintiff in service mark infringement, cyber-piracy and unfair competition action against unlawful use of marks including use of marks as domain names.
- Defends trade dress, trademark and design patent infringement actions against manufacturers in Federal Court.
- Counsels franchisors in obtaining and maintaining portfolios of intellectual property worldwide; drafted and obtained state approvals for Uniform Franchise Offering Circulars (UFOC).
- Represents clients as plaintiff in software copyright infringement actions in Federal Court.
- Licenses and subsequent sales of a trademark to a major beverage company.
- Represents clients in seizure action against manufacturers, distributors and retailers selling infringing video games, filed concurrently in multiple districts of multiple states.
- Manages strategic trademark portfolios for clients, including worldwide trademark monitoring to identify conflicting applications and potential infringement, requiring enforcement action through active network of foreign counsel to provide quick cost-effective action.
- Uses traditional trademark actions, the Federal Anticybersquatting Consumer Protection Act and ICANN proceedings under the Uniform Domain Name Dispute Resolution Policy to enjoin use of and compel the transfer of domain names infringing registered trademarks.
- Establishes intellectual property audits and programs for managing trademark portfolios of many companies in diverse product areas, from clothing to software and from telecommunications to entertainment and educational services.
- Performs due diligence and transfer documentation in intellectual property sales and acquisitions.
- Negotiates and drafts numerous license agreements regarding the intellectual property rights of both public and private companies. Broad experience in drafting commercial agreements including: Non-Disclosure and Non-Competition Agreements, Independent Contractor and Consultant Agreements, Employee Agreements, Sales Representative Agreements, Distribution Agreements, Dealer Agreements and Exclusive Dealing Agreements.