Overview

Jonathan Thomas is a senior associate in the Intellectual Property group of Mayer Brown's New York office.  For nearly a decade, Jonathan has been providing global companies and individuals alike with cost-effective advice and results in complex, high-stakes litigations, transactions, due diligence, and more.  Super Lawyers recognized Jonathan in 2018 and 2019 as a New York Metro Rising Star in the field of Intellectual Property. 

Litigation, Dispute Resolution

Jonathan has successfully represented clients in advertising, business torts, contract, copyright, class action, cybersquatting, patent, trademark, trade dress, trade secret, and unfair competition cases in numerous federal and state courts.  He also frequently represents clients in arbitrations and Uniform Dispute Resolution Proceedings, as well as before the Trademark Trial and Appeal Board, and the WIPO Arbitration and Mediation Center.

As recent examples of Jonathan’s successful litigation and dispute-resolution practice, in 2019, he

  • Successfully defended the entity responsible for producing the world-famous WOODSTOCK Music and Art Fairs against the issuance of a preliminary injunction; successfully argued against the defendant’s motion for summary judgment concerning a zone-of-natural-expansion theory; and successfully argued for the striking of the defendant’s expert report.
  • Prevailed at summary judgment on behalf of one of the world’s largest music-streaming services in a copyright litigation. 
  • Successfully briefed and argued in favor of enforcing a validity and “no-challenge” provision in a trademark Settlement and License Agreement on behalf of one of the world’s largest juice brands.

Counseling, Strategy, Prosecution, and Brand Management

In addition to successfully representing clients in court, Jonathan works hand-in-hand with clients to minimize the risk of litigation occurring.  He regularly counsels clients on advertising, copyright, domain name, trademark, and trade dress availability, clearance, and selection matters.  Jonathan also assists clients with developing internal intellectual-property guidelines and practices.  To help clients enforce and strengthen their brands, Jonathan works with clients to establish “watch” services, and counsels them on all aspects of intellectual property prosecution and maintenance.  He also manages the global intellectual property portfolios of numerous companies.

Transactions, Licensing

Jonathan’s practice includes the licensing of domestic and international intellectual-property rights, including copyrights, technical know-how, trademarks, and trade dress.

Contests, Sweepstakes, and Promotions

Clients regularly seek Jonathan’s advice on the laws and regulations governing contests, sweepstakes, and promotions throughout the United States.  His work in this practice area ranges from advising clients on the Terms and Conditions governing their contests, sweepstakes, and, promotions, to the placement of in-store promotional displays.

Due Diligence, Investigations

Jonathan’s practice also includes conducting intellectual-property due diligence in connection with mergers and acquisitions, and internal investigations concerning potential fraud and other malfeasance. 

Experience

  • Nespresso USA, Inc. v. Williams-Sonoma, Inc. (S.D.N.Y.)  Representing Nespresso USA in Section 43(a) trade-dress infringement, unfair competition, and false-advertising case concerning retailer’s competing espresso capsules, packaging, and machines.
  • Rodriguez-Marquez, et al. v. Google LLC, Spotify, USA Inc., et al. (D.P.R.).  Representing Google and Spotify in copyright-infringement lawsuit concerning musical composition.
  • Roman Scanlon, et al. v. Curtis International Ltd. and Technicolor SA (E.D. Cal.).  Representing trademark owner and exclusive licensee in putative false-advertising class action concerning lumens terminology.
  • Goya Foods, Inc. v. P-ink Ventures, Inc. (D. Del.)  Representing Goya in Lanham Act trademark infringement, trademark dilution, and unfair competition case concerning third party’s “Goya-Move” mobile application. 
  • Goya Foods, Inc. v. <goya.net>, et al. (E.D. Va.)  Representing Goya in ACPA in rem cybersquatting case concerning international entity’s registration and use of domain names. 
  • Osem Food Indus. Ltd., et al. v. Zetov, Inc. (S.D.N.Y.)  Representing owner of BAMBA-brand snacks in Lanham Act trademark infringement and unfair competition case against former distributor. 
  • Epson America, Inc. v. Curtis International Ltd. and Technicolor SA (C.D. Cal.).  Represented trademark owner and exclusive licensee in Section 43(a)(1)(B) false-advertising case concerning lumens terminology. 
  • Capri Sun GmbH v. American Beverage Corporation,  ___ F. Supp. 3d ___, 2019 WL 5558481 (S.D.N.Y. Oct. 29, 2019).  Representing owner of CAPRI-SUN brand juice drinks in breach-of-contract, and Lanham Act trademark infringement and unfair competition, case against former licensee.  Successfully briefed and argued motion concerning whether validity and “no-challenge” provision in parties’ license and settlement agreement estopped defendant/former licensee from challenging the validity of Capri Sun’s iconic, pouch-design trademark. 
  • Woodstock Ventures LC v. Woodstock Roots, LLC, 387 F. Supp. 3d 306 (S.D.N.Y. 2019).  Represented entity responsible for producing world-famous WOODSTOCK Music and Art Fairs.  Successfully defended against issuance of preliminary injunction sought by defendant; successfully argued against defendant’s motion for summary judgment based on zone-of-natural-expansion theory; and successfully argued in favor of striking defendant’s expert report. 
  • Sitney v. Spotify USA, Inc., 2019 WL 5555682 (D. Md. Oct. 28, 2019).  Prevailed at summary judgment on behalf of Spotify in copyright-infringement lawsuit concerning sound recordings. 
  • Horizon Group USA, Inc. v. Tri-Coastal Design Group, Inc., 2019 WL 9490908 (D.N.J.).  Successfully opposed defendant’s motion to dismiss in case concerning product-packaging trade dress.
  • JL Beverage Co., LLC v. Beam, Inc., 318 F. Supp. 2d 1188 (D. Nev. 2018).  Prevailed at trial on behalf of Beam, Inc. and related companies in Lanham Act trademark infringement case concerning theories of forward and reverse confusion. 
  • Lianna Kabbash, et al. v. The Jewelry Channel USA, Inc. dba Shop LC, 2017 WL 2473262 (W.D. Tex. June 7, 2017).  Successfully defeated class-certification bid in putative false-advertising case concerning terminology used for “Estimated Retail Value” of jewelry products. 
  • Pinterest, Inc. v. Pintrips, Inc., 140 F. Supp. 3d 997 (N.D. Cal. 2015).  Prevailed at trial on behalf of Pintrips against plaintiff’s Lanham Act claims, and Pintrips’ classic fair-use defense.
  • New World Solutions, Inc. v. NameMedia, Inc., 150 F. Supp. 3d 287 (S.D.N.Y. 2015).  Prevailed at summary judgment on behalf of digital real-estate company in Lanham Act trademark infringement and cybersquatting lawsuit. 
  • BWP Media USA, Inc. v. Gossip Cop Media, LLC, 87 F. Supp. 3d 499 (S.D.N.Y. 2015).  Obtained dismissal at pleadings stage based on plaintiff’s failure to satisfy § 411(a)’s pre-suit registration requirement. 
  • Amscan, Inc. v. Shutter Shades, Inc., U.S. Dist. LEXIS 180647 (S.D.N.Y. April 30, 2015).  Prevailed at summary judgement in Declaratory Judgment action concerning invalidity of defendant’s patent and trademark for slotted-glass eyewear. 
  • Pecorino, et al v. Vutec Corp., et al., 6 F. Supp. 3d 217 (E.D.N.Y. 2013).  Successfully opposed defendant’s motion for summary judgment based on theory of laches. 
  • Ritani, LLC v. Harout Aghjayan, et al., 970 F. Supp. 2d 232 (S.D.N.Y. 2013).  Obtained dismissal at pleadings stage on behalf of jewelry manufacturer in case brought against former employee; successfully argued against fee award under § 505 of the Copyright Act.

Education

Ohio State University, JD, cum laude
Chief Articles Editor, Entrepreneurial Business Law Journal

University of Kentucky, BA, magna cum laude, Secondary Education
Four-year member of varsity cross-country and track teams 

Admissions

  • New York