In the News

Managing IP Magazine Praises Haynes and Boone IP Practice, Lawyers as “Highly Recommended” 2014 IP Stars for Second Year in a Row

For two consecutive years, seven Haynes and Boone partners from three offices have been named IP Stars, and the Intellectual Property Practice Group has been voted to the top Texas tier in the IP Stars ranking by Managing Intellectual Property Magazine. >>

Chambers Continues to Award Haynes and Boone Talent High Marks in Global Directory

After a year in which Haynes and Boone, LLP widened its global reach with offices in China and Brazil, Chambers Global 2014 broadened its recognition of the firm by singling out 13 lawyers and five practices for praise in its highly regarded directory of recommended legal services.

Editors praised Haynes and Boone efforts on multiple fronts from the United States to Latin America to Mexico City. >>

World Trademark Review Applauds Haynes and Boone’s National Trademark Talent

DALLAS – The 2014 edition of the World Trademark Review (WTR) 1000 has again awarded the Haynes and Boone, LLP Trademark Practice Group both a national silver ranking, making it tied for fifth nationally, and a Texas gold ranking, the highest possible.

“Our national silver and Texas gold ranking, as well as our lawyers’ individual rankings, reflect the fruition of our continued effort to build a nation-wide trademark practice by deepening our existing team and adding key talent on both coasts,” said Purvi Patel, chair of the firm’s Trademark Practice Group. >>

Texas Super Lawyers Features 91 Haynes and Boone Lawyers

Ninety-one Haynes and Boone, LLP lawyers have been recognized in the Texas Super Lawyer 2013 award listing. >>



Recent Publications

After 22 Years of Litigation, the U.S. Trademark Office Again Cancels the Washington Redskins’ Trademarks as Disparaging to Native Americans

On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office granted a petition to cancel six trademarks owned by the Washington Redskins football team. In Amanda Blackhorse, et al. v. Pro-Football, Inc., the TTAB, by a 2-1 vote, held cancellation of the trademarks was warranted “because they were disparaging to Native Americans at the respective times they were registered.” >>

gTLD Domain Name Update

On January 23rd, coinciding with the ability of trademark owners to register their brands in many of the new gTLD domain names, Haynes and Boone’s Dallas Office hosted the Dallas/Ft. Worth Metroplex INTA Roundtable on the timely topic “gTLDs: Protecting Your Brand.” >>

The IP Beacon, December 2013

The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law. >>



Jeffrey M. Becker

Partner

Dallas


2323 Victory Avenue
Suite 700
Dallas, Texas 75219
T +1 214.651.5066
F +1 214.200.0558

Areas of Practice

Education

  • J.D., University of Texas at Austin School of Law, 1990, with honors; Order of the Coif; Legal Research Board
  • Mechanical Engineer, B.S.M.E., University of Texas at Austin, 1987, with high honors; University of Texas College Scholar

Bar Admissions

  • U.S. Patent and Trademark Office
  • Texas
Jeffrey M. Becker

Jeff Becker, a partner with the firm of Haynes and Boone, is currently regarded as a Texas Band 1 trademark and copyright attorney by Chambers and Partners (2010-2014) and is one of only ten trademark attorneys in the country who has been repeatedly, nationally recognized for his experience on both “Prosecution and Strategy” and “Enforcement and Litigation” work by World Trademark Review’s WTR 1000.  Following years of serving his firm as the Chair of its Trademark Practice Group and Intellectual Property and Technology Transactions Section, he now focuses his time on the legal aspects of brand management, helping companies develop trademark enforcement 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. Although a significant amount of Jeff’s time is spent on litigating Oppositions and Cancellations within the U.S. Trademark Office’s Trademark Trial and Appeal Board, much of his work involves internet related issues, such as domain name cybersquatting and keyword advertising, as well as advising companies on the new gTLD’s currently being launched. Additionally, as a member of the Social Media Practice Group, Jeff counsels clients on emerging technology and branding trends in social media.

As an experienced copyright lawyer and a registered patent attorney, Jeff combines his experience 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.

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.

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: Trademark & Copyright Leading Lawyer" (2004-2012), by Texas Monthly as a "Texas Super Lawyer" (2003-2013), and by The Best Lawyers in America for Technology Law (2010-2014), Intellectual Property and Trademark Law (2012-2014) and Litigation - Intellectual Property (2014). In ranking him as a nationally ranked trademark professional (2011-2013), World Trademark Review reported that Jeff is "devoted to his clients' interests and provides exceptional, comprehensive advice." Jeff is AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory.

In addition to his law degree, Jeff holds a B.S.M.E. in mechanical engineering.

Recent Speeches

  • "Review of 2012 IP Legal Issues for Game Developers," Game::Business::Law 2013, January 24, 2013.

  • "Trademark Law Practice," SMU Law School, Prof. Nguyen’s Intellectual Property Law Class, September 12, 2012.

  • "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

  • "Review of 2012 IP Legal Issues for Game Developers," Game::Business::Law 2013, January 24, 2013.

  • "New gTLD Application Window Opens January 12:  What Do Brand Owners Need to Know to Protect Their Brands?," Co-Author with Lisa Garono, Haynes and Boone, January 11, 2012.

  • "In ‘App Store’ Trademark Battle, Judge Sides with Amazon.com in Denying Apple’s Request for a Preliminary Injunction," Haynes and Boone, July 11, 2011.

  • "When ‘Domain Name Disputes’ Are Just Bogus Solicitations," Co-Author with Lisa Congleton, Haynes and Boone, May 9, 2011.

  • "Brand Owners Weigh In on Google AdWords Appeal," Co-Author with Lisa Congleton, Haynes and Boone, January 20, 2011.

  • "ICANN’s New Attack Against Domain Name Tasting," Co-Author with Manjula Variyam, Haynes and Boone, May 12, 2009.

  • "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.

Honors and Awards

  • Band 1 Trademark and Copyright Attorney - Texas, Chambers and Partners, 2010-2014.
  • World’s Leading Trademark Professionals, World Trademark Review, 2013.
  • Intellectual Property: Trademark & Copyright Leading Lawyer, Chambers USA Guide to America's Leading Lawyers for Business, 2004-2014. 
  • Intellectual Property: Trademark, Copyright & Trade Secrets, Chambers Global, 2013-2014.
  • Texas Super Lawyer, Texas Monthly, 2003-2012.
  • Best Lawyers in America for Intellectual Property and Trademark Law, 2012-2014.
  • Best Lawyers in America for Technology Law and Litigation - Intellectual Property, 2010-2014.
  • AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory.

Selected Representative Experience


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.

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.

NFL Properties LLC, Green Bay Packers, Inc. and Pittsburgh Steelers Sports, Inc. v. Does 1 through 100; Cause No. 352-250686-11, in the 352nd District Court of Tarrant County, Texas
Represented the NFL in obtaining "John Doe" injunctive relief to enable the League and its member teams to obtain civil enforcement orders allowing seizure of counterfeit merchandise that infringed upon NFL trademarks sold in and around the area where Super Bowl XLV was held.

Sköld v. Galderma Laboratories, Inc. (U.S. Trademark Trial and Appeal Board)
Represented Galderma Laboratories in a trademark cancellation proceeding. Obtained summary judgment defeating the plaintiff's trademark abandonment claim.

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.

Tandy Leather Factory, Inc. v. W. Alboum Hat Co.
Represented designer of leather craft supplies in copyright infringement lawsuit regarding decorative buckles and conchos.

TimeGate Studios, Inc. v. SouthPeak Interactive, LLC, 860 F. Supp. 2d 350 (S.D. Tex. 2012)
Persuaded a federal district court to vacate a more than $9 million arbitration award entered against 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.

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.

Memberships

  • U.S. Patent and Trademark Office
  • College of the State Bar of Texas
  • International Trademark Association - Government Officials Education and Training Committee Member
  • American Intellectual Property Law Association

Online Publications

06/19/2014 - After 22 Years of Litigation, the U.S. Trademark Office Again Cancels the Washington Redskins’ Trademarks as Disparaging to Native Americans
On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office granted a petition to cancel six trademarks owned by the Washington Redskins football team. In Amanda Blackhorse, et al. v. Pro-Football, Inc., the TTAB, by a 2-1 vote, held cancellation of the trademarks was warranted “because they were disparaging to Native Americans at the respective times they were registered.”

02/11/2014 - gTLD Domain Name Update
On January 23rd, coinciding with the ability of trademark owners to register their brands in many of the new gTLD domain names, Haynes and Boone’s Dallas Office hosted the Dallas/Ft. Worth Metroplex INTA Roundtable on the timely topic “gTLDs: Protecting Your Brand.”

12/16/2013 - The IP Beacon, December 2013
The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

10/29/2013 - Trademark Owners – Protect Yourselves NOW as the New gTLDs Are Finally Launching
The first wave of the new Generic Top Level Domain Names (the “new gTLDs”) was just approved to go live a few days ago, and cybersquatters and speculators may already be pre-registering your brand as one of these new domain names.

01/24/2013 - Review of 2012 IP Legal Issues for Game Developers
Presented at Game::Business::Law2013.

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.

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 - When “Domain Name Disputes” Are Just Bogus Solicitations

05/09/2011 - The IP Beacon, May 2011
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

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