Jonathan Thomas is a Partner in the Intellectual Property group of Mayer Brown's New York office. For over 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 has continuously recognized Jonathan as a New York Metro Rising Star in the field of Intellectual Property since 2018.
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, he:
- Obtained a precedential TRO/PI for 3M in a Lanham Act case concerning the use of the famous “3M” marks in connection with price-gouging of PPE during COVID-19.
- Defeated a summary-judgment motion brought against Capri Sun in a Lanham Act case concerning the use of Capri Sun’s distinctive, stand-up juice pouch.
- Obtained dismissal of a Complaint against Google and Spotify at the pleadings stage for failure to state a claim for copyright infringement of a musical composition.
- Secured dismissal of Technicolor SA from a putative false-advertising class action concerning lumens terminology based on lack of personal jurisdiction.
- Recovered numerous infringing domain names in an in rem anti-cybersquatting lawsuit on behalf of Goya Foods, Inc.
- Represented Nestlé and its subsidiaries in a Lanham Act case concerning ingestible vitamins and supplements.
- Represented the organizer of the world-famous ROSE PARADE and ROSE BOWL GAME in a dispute with the City of Pasadena concerning the use of the “ROSE BOWL GAME” and related trademarks for the 2021 College Football Playoff Semifinal in Arlington, Texas.
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.
Jonathan’s practice includes the licensing of domestic and international intellectual-property rights, including copyrights, technical expertise, 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.
- Capri Sun GmbH v. American Beverage Corporation, 414 F. Supp. 3d 414 (S.D.N.Y. 2019); 2022 WL 976270. Representing owner of CAPRI-SUN brand juice drinks in breach-of-contract, and Lanham Act 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; successfully briefed and argued opposition to summary-judgment motion.
- Persona Cosmetics, Inc. v. Société des Produits Nestlé S.A., et al. (C.D. Cal.). Representing trademark owner and subsidiaries in Lanham Act case concerning vitamins and supplements.
- Nespresso USA, Inc. v. Peet’s Coffee, Inc. (S.D.N.Y.) Representing Nespresso USA in Section 43(a) trade-dress infringement case concerning retailer’s competing espresso capsules.
- inMusic Brands, Inc. v. Curtis Int’l., Ltd. (D.R.I.). Representing licensee in Lanham Act case concerning audio equipment.
- 3M Co. v. Performance Supply, LLC, 458 F. Supp. 3d 181 (S.D.N.Y. 2020). Developed strategy and drafted Complaint for, and obtained TRO/PI on behalf of, 3M in precedential case under Lanham Act involving price-gouging of PPE during COVID-19.
- Roman Scanlon, et al. v. Curtis International Ltd. and Technicolor SA, 465 F. Supp. 3d 1054 (E.D. Cal. 2020). Secured dismissal of trademark owner from putative false-advertising class action concerning lumens terminology based on lack of personal jurisdiction.
- R80 LLC v. Société des Produits Nestlé S.A., et al. (D. Md.). Represented trademark owner and subsidiaries in Lanham Act case concerning vitamins and supplements.
- Nespresso USA, Inc. v. Williams-Sonoma, Inc. (S.D.N.Y.) Represented Nespresso USA in Section 43(a) trade-dress infringement case concerning retailer’s competing espresso capsules.
- Dr. Peter Belafsky v. Société des Produits Nestlé S.A., et al. (D.N.J.). Represented Nestlé in copyright and trademark-infringement lawsuit concerning use of “EAT-10” in connection with a screening tool for dysphagia.
- Roman Scanlon, et al. v. Curtis Int’l Ltd. and Technicolor SA (E.D. Cal.). Represented licensee in putative false-advertising class action concerning lumens terminology.
- Goya Foods, Inc. v. P-ink Ventures, Inc. (D. Del.) Represented 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.). Recovered numerous infringing domain names in Section 43(d) in rem anti-cybersquatting lawsuit on behalf of Goya Foods, Inc.
- Rodriguez-Marquez, et al. v. Google LLC, Spotify, USA Inc., et al., (D.P.R.). Obtained dismissal of Complaint against Google and Spotify for failure to state a claim in copyright-infringement lawsuit concerning musical composition.
- Tournament of Roses Parade Association, Inc. v. City of Pasadena. Represented organizer of world-famous ROSE PARADE and ROSE BOWL GAME in dispute with City of Pasadena concerning use of “ROSE BOWL GAME” and related marks for 2021 College Football Playoff Semifinal.
- Goya Foods, Inc. v. Badia Spices, Inc., (D.N.J.). Represented Goya Foods, Inc. in copyright and trade-dress infringement lawsuit concerning product packaging used for spices.
- Osem Food Indus. Ltd., et al. v. Zetov, Inc. (S.D.N.Y.) Represented 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. 2019). Represented trademark owner and exclusive licensee in Section 43(a)(1)(B) false-advertising case concerning lumens terminology.
- 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. 2019). 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.
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