John Crittenden

Partner at Cooley LLP

John Crittenden

John Crittenden

Partner at Cooley LLP

Biography

John W. Crittenden is a partner in Cooley's Litigation department and is a member of the Trademark, Copyright and Advertising practice group. He is resident in the San Francisco and Los Angeles offices, and has been with the firm since 1983.

Mr. Crittenden has over three decades of experience in litigation and trial work in the areas of trademark, false advertising, unfair competition and copyright and in domestic and international trademark counseling and prosecution. He also provides advice and advocacy in other intellectual property fields such as rights of publicity and the Internet. In addition, Mr. Crittenden is experienced in all forms of alternative dispute resolution, and regularly serves as a mediator and neutral evaluator in copyright and trademark cases for the U.S. District Court for the Northern District of California and by private engagement.

His clients range from trailblazing start-ups to established brands worth billions of dollars, and include Tesla Motors, Yelp, Beyond the Rack, Dollar Shave Club, The Honest Company, Julep Beauty, Lonely Planet and Yosemite Conservancy. Mr. Crittenden's clients value his experience in and out of the courtroom, his expertise in crafting effective brand protection strategies, his ability to guide clients away from undue risk and his creative problem solving skills. He is seen by clients as "never wasting time on an issue" and is praised for making clients feel like "a co-worker or a friend instead of a client." (Legal 500)

Year after year, Mr. Crittenden is recognized as a top lawyer in trademark and technology law by several legal directories and publications such as Best Lawyers, Legal 500, Managing Intellectual Property, and World Trademark Review. He is honored as being among the top eight trademark litigators in the United States by Legal 500 (2015), and is also recognized for his trademark prosecution and counseling work. He is widely recognized as a "go-to litigator" with "outstanding advocacy [that] is a huge asset on critical suits," and is known as being "sharp, resourceful and hugely capable," with a "sterling performance in both prosecution and dispute-related briefs." (WTR 1000 Guide to the World's Leading Trademark Professionals)

Mr. Crittenden has been active in the International Trademark Association (INTA) for nearly two decades, serving on its Board of Directors from 2006 to 2008, and holding numerous other leadership positions throughout the years. He is Vice Chair of INTA's International Amicus Committee and a member of its Trademark Mediators Network. He previously chaired the U.S. Amicus Subcommittee, the Emerging Issues Committee and the Courts and Tribunals Subcommittee. He has also served as the editor-in-chief of the INTA Bulletin, the association's twice-monthly report on trademark news to members worldwide.

Mr. Crittenden is an adjunct professor at the UCLA School of Law, where he teaches a course on trademark law. A frequent speaker on intellectual property topics, he has lectured and participated in panel discussions for the American Bar Association, the Practising Law Institute, California Continuing Education of the Bar, INTA, and various industry and trade organizations. From 1981 to 1983, Mr. Crittenden served as law clerk to the Honorable Joyce Hens Green of the U.S. District Court for the District of Columbia

Mr. Crittenden has been the lead lawyer on a number of notable intellectual property cases, including:

"He is widely recognized as a go-to litigator and his outstanding advocacy is a huge asset on critical suits." "Among the talented [Cooley trademark] unit is the 'sharp, resourceful, and hugely capable' John Crittenden, whose sterling performance in both prosecution and dispute-related briefs garners much respect."

— WTR 1000 Guide to the World's Leading Trademark Professionals (2013 and 2014))

* Nordstrom, Inc. v. 7525419 Canada, Inc. dba Beyond the Rack, No. C12-1387-TSC (W.D. Wash, Dec. 27, 2012), in which he successfully defended "flash sale" online seller Beyond the Rack against Nordstrom, Inc.'s claims for infringement of its "rack" trademarks, persuading the court that "in light of the weakness of the marks at issue, the crowded field of similar marks, and the level of care probably exercised by ‘flash sale' customers," Nordstrom was not likely to succeed on the merits of its claims.
* PerfumeBay.com, Inc. v. eBay Inc., 506 F.3d 1165, 84 U.S.P.Q.2d 1865 (9th Cir. 2007), which he tried and successfully argued on appeal for eBay. The appellate court affirmed a lower court injunction against an online perfume seller's use of the name PerfumeBay and held that the PERFUMEBAY mark also diluted the famous eBay brand.
* Marvel Enterprises v. NCsoft Corporation, 74 U.S.P.Q. 2d 1303 (C.D. Cal. 2005), in which he led the successful defense of NCsoft Corporation, obtaining a ruling that that players' use of Marvel's trademarked names in the online game City of Heroes was not infringement.
* Cohn v. PetSmart, Inc.,281 F.3d 837 (9th Cir. 2002), which he litigated and successfully argued on appeal for PetSmart. The appellate court affirmed summary judgment for the national pet supply chain, finding "no likelihood of confusion even though the parties use the same mark for similar goods and services."

Mr. Crittenden has also served as counsel for the International Trademark Association as amicus curiae in key appellate cases, including:

* Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc.,696 F.3d 206 (2d Cir. 2012) (recognizing trademark protection in Louboutin's contrasting "Red Sole" mark)
* Fleischer Studios v. A.V.E.L.A., 654 F3d 958, 97 USPQ2d 183 (9th Cir. 2011) (withdrawing ruling on "aesthetic functionality" of BETTY BOOP trademark)
* Starbucks Corp. v. Wolfe's Borough Coffee, Inc.,588 F.3d 97 (2d Cir. 2009) (establishing that heightened similarity is not required under the Trademark Dilution Revision Act of 2006)

Overview
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Partner at Cooley LLP

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Former Founding Partner at Cooley LLP

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Partner at Cooley LLP

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John Crittenden
Partner at Cooley LLP
Career History
Partner
1983 - Current

Cooley LLP is a provider of strategic litigation and business transaction services and is a representative of private and public companies, financial institutions, venture capital firms and nonprofit organizations. The company was founded in 1920 and is headquartered in New York, NY.

Political Donations
$1,000
2012

Former President of United States

$250
2012
$250
2011

Former President of United States

Transactions
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Reservoir Capital Group LLC, Clearlake Capital Group LP purchase Vision Solutions, Inc. from Thoma Cressey Bravo, Inc., American Capital Asset Management LLC, Thoma Bravo LLC

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Hasbro, Inc. purchases Backflip Studios LLC

Awards & Honors
Admitted to the California Bar
Other Affiliations

John Crittenden is affiliated with Cooley LLP

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