Jeff Becker is a partner with the firm of Haynes and Boone, where for four years he served as the Chair of the firm's Intellectual Property and Technology Transactions Section. He focuses his practice on the legal aspects of brand management, helping companies develop trademark policies, clearing their marks for use, registering those marks here in the U.S. and abroad, commercializing marks through licenses and merchandising agreements, assessing infringement risks, enforcing their trademark rights against others and defending them against allegations of infringement. Much of his work involves internet related issues, such as domain name cybersquatting and keyword advertising.
Jeff is a frequent speaker on intellectual property and Internet legal issues and was selected by Chambers USA Guide to America's Leading Lawyers for Business as an "Intellectual Property Leading Lawyer" in 2004-2011, by
Texas Monthly as a "Texas Super Lawyer" in 2003-2011, by
D Magazine as one of the "Best Lawyers in Dallas" in 2003, 2007, 2009, and 2011 and one of the "Best Lawyers in Dallas Under 40" in 2002. Additionally, he is listed in
The Best Lawyers in America for Technology Law (2010-2011), Intellectual Property and Trademark Law (2012) and was recognized by
World Trademark Review as a top band "seasoned trademark professional" in 2011 and 2012. The WTR guide reports that clients describe Jeff as "dedicated and tireless."
Jeff is active with the International Trademark Association (INTA) where he chaired the Adjunct Professor Special Interest Group for four years and now serves on the Government Officials Education and Training Committee. On November 8, 2007, INTA, in recognition of his work with the Adjunct Professor Special Interest Group, awarded him its prestigious 2007 Volunteer Service Award for the Advancement of Committee Objectives.
As a registered patent attorney and experienced copyright lawyer, Jeff combines his expertise in trademark matters with his patent and copyright experience to assist clients in the overall protection of their products, and clearing those products before launch, especially in the areas of design patent, copyright and trade dress. He also handles more traditional patent matters.
Recent Speeches
- "The Legality of Using Another's Trademark in Keyword Advertising," AT&T legal Conference, March 2, 2007.
- "Using the In Rem Procedures of the Anticybersquatting Consumer Protection Act," INTA Advanced Trademark Professionals Forum on International and Cross-Border Litigation Issues, February 2, 2006.
- "Fraud in the Trademark Office, Domain Name Parking, and the New .eu Top Level Domain Name," Dallas Bar Intellectual Property Section, January 27, 2006.
- "Trademark Law Update," State Bar of Texas Annual Meeting, Intellectual Property Law Section, June 24, 2005.
- "Domain Name Parking," AIPLA Spring Meeting, Joint Trademark Committee Meeting, May 12, 2005.
- "Due Diligence in Trademark Transitions," INTA Trademark Administrators' Workshop, March 10, 2005.
- "Contributory Trademark Infringement in Cyberspace," SMU Annual Symposium on Emerging Intellectual Property Issues, March 4, 2005.
- "Recent Trademark Challenges in Cyberspace," CAIL's Annual Conference on Intellectual Property Law, November 9, 2004.
- "Introduction to Intellectual Property Law," CAIL's International Law and Technology Forum, September 23, 2004.
- "Growth of the Initial Interest Confusion and Nominative Fair Use Doctrines," SMU Emerging Intellectual Property Issues Symposium, March 19, 2004.
Recent Publications
- "If You Can't See It, You Can't 'Use' It In New York: Trademark Developments Regarding Metatags and Keyword Advertising," Co-Author with David Bell, Haynes and Boone, June 18, 2007.
- "Utah Law First to Place Restrictions on Keyword Advertising," Co-Author with Leanne Stendell, Haynes and Boone, March 19, 2007.
- "V Is for 'Vindication' for Owners of Famous Trademarks," State Bar of Texas Intellectual Property Law Section Newsletter, Winter 2007.
- "Recent Trademark Challenges in Cyberspace and the Growth of the Initial Interest Confusion Doctrine," The Licensing Journal, April 2005.
Selected Representative Experience
TimeGate Studios, Inc. v. SouthPeak Interactive, LLC, 2012 WL 948282 (S.D. Tex. Mar. 20, 2012)
Persuaded a federal district court to vacate a more than $9 million arbitration award entered against our client, a video game developer, under the Federal Arbitration Act because the award violated the essence of the publishing agreement that was the subject of the parties' dispute.
Arisma Group, LLC v. Marksmen, Inc., et al.
Obtained summary judgment on behalf of domain name investigations and acquisitions company in federal lawsuit alleging fraud and negligent misrepresentation in a domain name acquisition transaction and seeking $6 million in damages.
Tandy Leather Factory, Inc. v. W. Alboum Hat Co.
Represented designer of leather craft supplies in copyright infringement lawsuit regarding decorative buckles and conchos.
Acted as General Counsel to Semiconductor Manufacturing Joint Venture
Advised in the formation and served as general counsel to a semiconductor manufacturing joint venture between Hitachi, Ltd. and Texas Instruments Incorporated.
Successful Trade Dress Enforcement - Food and Beverage
One of our client’s liqueurs, an award-winning and extremely popular brand, faced competition from a newly-launched product. The appearance of this new product’s bottle shape, product packaging, and marketing materials featured several similar characteristics to those of our client’s. We sent multiple demand letters to the competitor and its counsel, advising of our client’s trade dress and trademark rights. To escalate the matter, we proceeded to file suit in Illinois. After months of hard-fought litigation, the parties settled with the competitor agreeing to modify its packaging to further distinguish it from that of our client’s product.
Trade Dress, Trademarks - Retail
A buyer for a retail company would be selecting new footwear to stock its shelves for an upcoming season. Before the buyer's selection would occur, however, each potential product was to be legally reviewed for any intellectual property concerns. As it turned out, the company had several hundred products to be reviewed in within an approximately two-week timeframe. Working night and day with our client contacts and other outside counsel, at the client's offices, we provided thorough analysis and clearance of hundreds of footwear designs. The designs were carefully reviewed for intellectual property issues such as those bearing on trade dress, trademarks, and patents. Ultimately, the buyer purchased nearly one hundred and fifty designs from the larger group of designs deemed legally clear by counsel.
Online Publications
01/11/2012 -
New gTLD Application Window Opens January 12: What Do Brand Owners Need to Know to Protect Their Brands?
Starting tomorrow, organizations may start submitting applications for new gTLDs (generic Top Level Domains). The application window will close on April 12, 2012.
08/16/2011 -
The IP Beacon, August 2011
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
07/11/2011 -
In “App Store” Trademark Battle, Judge Sides with Amazon.com in Denying Apple’s Request for a Preliminary Injunction
On July 6, 2011, the United States District Court for the Northern District of California made its first substantive ruling in Apple’s attempt to enforce its “App Store” mark against Amazon.com, denying Apple’s motion for a preliminary injunction. Apple had based its motion on claims that Amazon.com’s use of “Appstore” constituted both trademark infringement and dilution of its “App Store” mark.
05/09/2011 -
The IP Beacon, May 2011
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
05/09/2011 -
When “Domain Name Disputes” Are Just Bogus Solicitations
02/02/2011 -
The IP Beacon, February 2011
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
01/20/2011 -
2010 Review: Brand Owners Weigh In on Google Adwords Appeal
12/17/2010 -
FLASH - Supreme Court Does Not Answer Copyright Exhaustion Question in Costco
Earlier this week, the U.S. Supreme Court issued a split decision and failed to resolve whether copyrighted materials legally made abroad can be imported into the U.S. and sold without the express permission of the copyright owner.
03/25/2010 -
Google AdWords Decision Issued by the European Court of Justice
The European Court of Justice ruled this week that Google did not infringe trademark rights by letting advertisers purchase keywords corresponding to their competitors’ trademarks in Google’s AdWords program.
02/02/2010 -
Another Detour? Steer Internet Traffic to Your Sites by Registering .CO Domains
In what may be a new opportunity for cybersquatters, the Colombian .CO registry will soon allow for registration of domain names ending in simply .CO. Such domain names may be a prime platform for social networking sites and brand owners. As the registry explains, the acronym .CO can be associated with terms that include company, corporation, commerce, communities, content, connect, communication, collaborate, and consumers.
06/12/2009 -
The IP Beacon, June 2009
"The IP Beacon" is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
06/10/2009 -
Submit Your Trademarks to Facebook to Prevent Infringement
Facebook announced yesterday significant policies that can impact brand owners' online presence. Starting this Saturday, June 13, 2009, Facebook will allow individuals to register usernames that will direct to personalized Facebook URLs.
05/12/2009 -
ICANN’S New Attack Against Domain Name Tasting
On April 1, 2009, the Internet Corporation for Assigned Names and Numbers (“ICANN”) took its first major step to curtail so called “domain name tasting,” the disruptive practice where domainers have been registering millions of domain names each month--for free--just to see which ones generated the highest keyword advertising revenue.
09/24/2008 -
The Federal Circuit Changes The Test For Design Patent Infringement
This news alert discusses changes in design patent law in light of the Egyptian Goddess, Inc. v. Swisa, Inc. case.
06/18/2007 -
If You Can't See It, You Can't "Use" It In New York
On May 9, 2007, the Eastern District of New York issued a ruling that use of another owner’s trademark as either a metatag or in keyword advertising does not constitute “use in commerce” and is thus not actionable under trademark law.
03/19/2007 -
Utah Law First to Place Restrictions on Keyword Advertising
10/12/2006 -
V Is For "Vindication" For Famous Trademark Owners
The United States Supreme Court issued a landmark dilution ruling in 2003 in
Mosely v. V Secret Catalogue, Inc., 537 U.S. 418 (2003).
12/28/2005 -
The News on .EU--Registering Domain Names on the New European Union .EU Registry
The European Union has recently launched a new ccTLD (country code top level domain). Instead of using the various national European ccTLD's, such as .fr for French companies, .de for German companies, and .co.uk for U.K. companies, the EU has made available the .eu suffix as a Community-wide ccTLD.
07/14/2005 -
Appellate Court Clears the Way for Competitive Pop-Up Ads
The Second Circuit Court of Appeals impedes trademark owners trying to restrict online pop-up advertising that appears when consumers visit the trademark owners’ websites.
08/01/2004 -
Recent Trademark Challenges in Cyberspace...
The relatively recent legal doctrines of “initial interest confusion” and “nominative fair use” have become the dominant buzz words for defining the scope of permissible trademark use on the Internet, especially in the on-line advertising context.
09/26/2003 -
Trademarks for Services Finally Registrable in India
03/04/2003 -
Owners of Famous Trademarks Must Prove "Actual Dilution" in Federal Trademark Dilution Act Claims
U.S. Supreme Court Reverses "Festo"
Suing an Electronic Address: In Rem Domain Name Actions Under the ACPA
Patriot Act expands investigative rights
07/01/2000 -
Software Piracy