Practice Descriptions

Intellectual Property and Complex Business Litigation

Joanna Mendoza has over 25 years experience representing clients in intellectual property and complex business matters in both state and federal courts, including:

  • Misappropriation of trade secrets
  • Copyright infringement
  • Trademark, trade dress and service mark infringement
  • Common law mark protection
  • Unfair competition and anti-trust claims
  • Unfair business practices, including misleading advertising
  • Product disparagement and defamation claims
  • Licensing and related contractual disputes
  • Employer/employee invention rights

Examples of matters previously litigated by Ms. Mendoza:

Fraud and Conversion of Trade Secrets: brought an action on behalf of a former research veterinarian for an animal biologics firm relating to a lucrative vaccine for dairy cows. After a ten-week jury trial, the jury came back with a unanimous verdict in our client’s favor for $2.9 million in damages and $500,000 in punitive damages. (Yolo County Superior Court, Woodland, California)

Trademark and Trade Dress Infringement: brought action against a computer software/hardware company for marketing a product that competed with the client’s market dominating product, using a similar sounding product name and similar type packaging graphics. Early and persuasive negotiations after the lawsuit and discovery were both initiated resulted in the opposing party’s early agreement to remove all existing products from the market, rename its product and change its packaging. (U.S. District Court, Eastern District of California, Sacramento, California)

Patent Licensing Dispute: defended an action on behalf of a biotechnology firm regarding a claim that the company had entered into an exclusive license with the plaintiff regarding use of the technology. The case settled favorably for the client after arguing on behalf of the client that conditions required for the license to go into effect had never taken place. (Nevada County Superior Court, Nevada City, California)

Trade Secret Misappropriation: defended a federal court action brought against our client, an animal vaccine manufacturer, by a major pharmaceutical company for trade secret misappropriation and unfair competition. After contentious litigation practices initiated by the opposing party, we were able to settle the matter with no payment of money by the client. Rather, the client was allowed access to otherwise confidential data owned by the pharmaceutical company. (U.S. District Court, Eastern District of California, Sacramento, California)

TTAB Proceedings:

Joanna Mendoza has experience with handling both trademark oppositions as well as trademark cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Attacking a trademark application which infringes upon the client’s existing marks or pursuing cancellation of another’s registered trademark which infringes a client’s mark is often an effective alternative to pursuing a trademark infringement action in court. Furthermore, she has experience in defending such actions taken against clients by other individuals or companies seeking to prevent the issuance or continued registration of a client’s trademark. Ms. Mendoza has experience in both types of proceedings, some examples include:

Prosecution of Cancellation of Trademark Registration Based Upon Client’s First Use: successfully prosecuted an action to cancel the existing registered trademark of a company on the basis that the client’s use of the identical mark, for similar goods and services, preceded the first use by the holder of the registered mark. (Trademark Trial and Appeals Board, U.S. PTO, Washington, D.C.)

Defense of Opposition Proceedings Brought Against the Client’s Trademark Application: defended an action brought against the client’s application for registration of certain marks which were substantially similar to marks alleged to be previously used by a competitor. Negotiated successful settlement resulting in an exclusive distributorship arrangement between the companies to the client’s benefit. (Trademark Trial and Appeals Board, U.S. PTO, Washington, D.C.)

Prosecution of Opposition to Trademark Registration of Confusingly Similar Mark: prosecuted an opposition proceeding against a large company for seeking to register a trademark that was confusingly similar to the registered trademark of the client. The parties sold similar products, but in different geographic regions of the U.S. Negotiated a successful settlement between the parties allowing trademark usage by both parties with geographic limitations. (Trademark Trial and Appeals Board, U.S. PTO, Washington, D.C.)

E-Commerce Litigation

Prosecution of Opposition to Trademark Registration of Domain Name Used by Client: successfully opposed the trademark registration of a company who sought trademark protection for a domain name first used by our client in its business and for which the client was seeking identical trademark protection from the PTO. (Trademark Trial and Appeals Board, U.S. PTO, Washington, D.C.)

ICANN Dispute Resolution Proceedings

Arbitration of Domain Name Dispute: successfully sought and received the transfer of a domain name containing client’s business name and being used by a competitor to divert clients to competitors website. (WIPO Arbitration Panel under the ICANN Dispute Resolution Rules and Procedures)

Arbitration of Domain Name Dispute by Phisher: successfully sought and received the transfer of a confusingly similar domain name being used by an unidentified owner to acquire personal information from client’s customers for identity theft. (WIPO Arbitration Panel under the ICANN Dispute Resolution Rules and Procedures)

Entertainment Law and Film Production

Joanna Mendoza has experience handling both dispute proceedings and transactional matters in the film and entertainment industry.  Her experience stems from her relationships with the local independent film community in the Sacramento and Placer County region, and has involved multiple forms of production agreements, releases, licensing contracts, music rights contracts, crew deal memos, reality show contracts, screenwriter contracts, work for hire contracts, assignments, and other production related contracts.  Entertainment law often involves a mix of business and intellectual property issues, and when it involves the independent filmmaker it also involves a tight budget.  Ms. Mendoza has been able to work with local filmmakers and others in the entertainment industry in order to find an affordable means to protect important intellectual property rights and business interests.  When disputes arise she is often sought after for advice to amicable resolve the matter to avoid litigation, and she has experience with arbitrating before the Independent Film and Television Alliance.