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Barry F. Soalt
Partner
Practice Areas |
Admissions |
|
Intellectual Property Trademarks and Copyrights Emerging Growth and Technology Health Care Trade Secrets Licensing |
California |
Contact Information
530 B Street, 21st Floor San Diego, CA 92101 Direct Phone: 619.525.3865 Direct Fax: 619.744.5465 bfs@procopio.com v-Card Download BioProfessional Summary
Mr. Soalt has extensive experience in a broad array of intellectual property matters, primarily including domestic and international representation in trademark matters. Mr. Soalt handles the intellectual property matters for numerous companies with respect to both prosecution and enforcement issues including: trademark applications; 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; domain name disputes; and effective dispute resolution. Transactional aspects of his practice emphasize client counseling, rendering legal opinions and developing strategies regarding the selection, clearance, registration and enforcement of marks, as well as managing significant worldwide trademark portfolios. He frequently counsel's clients on copyright protection strategies, enforcement of copyright rights, licensing, commercial agreements and transactions, franchising and administrative law matters, including customs enforcement issues. Mr. Soalt practices intellectual property law across a large number of the region's important business sectors including: information technology, software, telecommunications, media content, lifestyle & consumer products, financial institutions, real estate projects, service industries, travel and tourism, nutritional supplement industry and the food industry.
Prior to joining Procopio, Mr. Soalt was a partner in the intellectual property firm of Brown, Martin, Haller & McClain LLP.
Prior to joining Procopio, Mr. Soalt was a partner in the intellectual property firm of Brown, Martin, Haller & McClain LLP.
Representative Matters
- Represent various companies on infringement analysis, trademark litigation in the Federal Courts, and Oppositions and Cancellations before the Trademark Trial and Appeal Board
- Represent public company as plaintiff in service mark infringement, cyber-piracy and unfair competition action against unlawful use of marks including use of marks within domain names. Case settled favorably
- Defend trade dress, trademark and design patent infringement action against mail box manufacturer in Federal Court, resulting in favorable client settlement
- Counsel franchisors in obtaining and maintaining portfolios of intellectual property worldwide; drafted and obtained state approvals for Uniform Franchise Offering Circulars (UFOC)
- Represent private company in software copyright infringement action in Federal Court
- License and subsequent sale of a trademark to a major beverage company for nearly half a million dollars
- Represent plaintiff in seizure action against manufacturers, distributors and retailers selling infringing video games, filed concurrently in multiple districts of multiple states
- Manage domestic and foreign trademark and copyright litigation matters
- Use of 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
- Establish 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
- Perform due diligence and transfer documentation in intellectual property sales and acquisitions
- Negotiate and draft 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.
Education, Distinctions & Community Involvement
Mr. Soalt graduated from the State University of New York at Buffalo, cum laude, with a Bachelor of Arts in Biology and Physical Geography. He received his law degree from Western State University College of Law, and was admitted to the State Bar of California in 1994. Mr. Soalt is admitted before the Supreme Court of California, all California Courts and the Southern and Central U.S. District Courts.
Mr. Soalt is a member of the International Trademark Association (INTA), Federal Bar Association, American and San Diego Intellectual Property Law Associations, and the San Diego County Bar Association.
Mr. Soalt is a member of the International Trademark Association (INTA), Federal Bar Association, American and San Diego Intellectual Property Law Associations, and the San Diego County Bar Association.
