J. David Mayberry
Partner

607 14th Street, NW Suite 900, Washington, DC USA 20005

The Grace Building 1114 Avenue of the Americas, New York, NY USA 10036

Overview

As lead trial counsel, David Mayberry has helped clients resolve intellectual property law claims at trial, in arbitration, through mediation and creative settlements outside the courtroom. He has complex litigation experience in trademark, copyright, patent, trade secret, franchise and antitrust cases. Mr. Mayberry also counsels clients on trademark and trade dress enforcement and protection issues.

Mr. Mayberry is listed in the 2018 and the eight years immediately preceding editions of Chambers USA: America's Leading Lawyers for Business for Intellectual Property: Trademark, Copyright & Trade Secrets and in 2013, 2014, 2015, 2016 and 2017, he was also ranked #1 for Intellectual Property: Trademark, Copyright & Trade Secrets. He has been named a 2013, 2014, 2015, 2016, 2017 and 2018 Washington, D.C. "Super Lawyer" in the area of Intellectual Property Litigation and a 2014, 2015, 2016 and 2017 "Top 100 Washington, D.C. Super Lawyer" by Super Lawyers magazine. In 2012, 2013, 2016, 2017 and 2018, Mr. Mayberry was recognized by Legal 500 US in the area of Non-Contentious Trademark Law and for Trademark Litigation in 2013, 2014 and 2018. He was named a "Top Lawyer" by Washingtonian magazine in 2013 for Trademark Law. He was recognized as a top practitioner in Trademark, Copyright & Trade Secrets by Chambers Global 2016. Mr. Mayberry is listed in the 2018 and the six years immediately preceding editions of World Trademark Review 1000 – The World's Leading Trademark Professionals and is AV® rated by Martindale-Hubbell.*

* CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies.

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Experience

Served as IP counsel in a case in the Delaware Chancery Court. Represented fashion design house, Tory Burch, LLC which brought claims against a former director alleging that its former director competed unfairly against the company by launching a knockoff version of the “Tory Burch” brand created with the company’s confidential information and in violation of his fiduciary duties and contractual obligations. Negotiated the settlement agreement which resolved the case. J. Christopher Burch v. Tory Burch LLC, et al., No. 7921-CS (Del. Ch., Nov. 5, 2012).

Represented owner of CHAMPION® mark in trademark infringement suit to enjoin use of CHAMPION on sports equipment. After defeating motion to amend answer to add counterclaims for abuse of process and unfair competition on grounds of untimeliness and futility, the case was settled during mediation. Sara Lee Corp. v. Pro Sports, Inc., 2004 WL 537926 (M.D.N.C. 2004).

Served as lead counsel on behalf of Hormel Foods Corporation for a claim of patent infringement for a method of spiral slicing ham. After a successful Markman hearing early in the case, the Court entered summary judgment of non-infringement and Federal Circuit affirmed. Logan v. Hormel Foods Inc. et al., No. 04-211 (E.D. Tex. filed May 4, 2004).

Represented Franchisor of Real Estate Trademark. Obtained preliminary injunction enjoining use of mark after franchise terminated and license revoked. Farrimond & Burt Corp. v. Plyler, No. 99-CVS-1, 1999 WL 34805015 (N.C. Sup. Ct).

Represents Furniture Brands International, Inc., the world's leading manufacturer of home furnishings, including such brands as Broyhill, Thomasville, Drexel Heritage, Henredon, Lane and Maitland-Smith, working closely with in-house counsel, and advises on all aspects of the Thomasville's intellectual property and marketing strategies, including design protection and enforcement, anti-piracy and licensing.

Defended Sara Lee Corporation against claim of patent infringement on process for spiral slicing boneless ham. Negotiated joint defense agreement with holder of pioneer patents and developed evidence of patent invalidity. After motion for summary judgment filed, plaintiff dismissed case with prejudice. Logan v. Burgers' Ozark County Cured Hams, Inc., No. 2-97-CV-1361 (W.D. La. filed July 9, 1997) (case consolidated with Nos. 2-97-CV-1362 and 2-97-CV-1363, W.D. La dismissed July 22, 1999).

Defended Champion Apparel during the 1994 Winter Olympics against ambush marketing claim. Obtained temporary restraining order in N.C. Superior Court to enjoin CBS from cancelling scheduled broadcast commercial showing hockey player wearing CHAMPION® jersey. Sara Lee Corp. v. CBS, Inc., No.94 CVS 1217 (filed Sup. Ct. N.C.), removed, No. 6:94CV00094 (M.D.N.C filed Feb. 28, 1994).

Co-trial counsel for the Honey Baked Ham Company in an infringement suit. Obtained summary judgment on plaintiff’s principal contract and tort claims: (1) that replacing Heavenly's machines and failing to use trade secrets to produce the product breached the contract; (2) that the contract required plaintiffs'approval to change the product; (3) trade secret misappropriation; (4) tortious interference with contractual relations and prospective economic advantages; and (5) for declaratory relief. Defeated summary judgment on plaintiff’s counterclaims leading to the settlement of the case. Logan Farms v. Honeybaked Ham, No. 01-1611 (S.D. Tex. filed Dec. 15, 2000).

Represents Citibank in general trademark enforcement matters, which included working with in-house counsel and other attorneys to successfully defend Citibank’s right to use the CHOICE brand credit card. Representation also included use of creative fee solutions for billing that allowed Citibank to meet internal financial goals.

We are outside IP counsel to this company, which is the world's largest manufacturer of socks under such well-known brands as POLO, RALPH LAUREN, HOT SOX, FRUIT OF THE LOOM and K.BELL. We manage opposition matters both in the U.S. and internationally to protect the client's trademarks. We counsel the client on cross-border transactions with its joint venture partner manufacturers, distributors and other key stakeholders.

Lead counsel for Two Men and A Truck. Successfully enforced right of first refusal to purchase trademark. Eliminated geographic concurrent restriction on company’s service mark registrations and created national trademark right. Two Men and A Truck Int'l, Inc. v. David Underwood, et. al., No. 11-00598 (E.D. Va. filed June 1, 2011).

Lead trial counsel for a coffee franchisor in holdover franchisee and covenant not to compete case. The firm obtained substantial monetary settlement after commencing case.

Lead counsel for Taltwell Limited Liability Company in patent litigation against Zonet USA Corp. involving patents relating to credit card sized PCMCIA modems. Argued Markman hearing. Taltwell, LLC. v. Zonet USA Corp., No. 07-00543 (E.D. Va. filed Sept. 4, 2007).

Counsel for Sunkist Growers, Inc., licensee of “Sunkist” trademark, in arbitrated dispute with trademark owner over management of licensed brand. Eleventh Circuit upheld district court orders: (1) compelling arbitration against non-signatory party on equitable estoppel theory; (2) confirming arbitration award that claimant take no recovery under the Federal Arbitration Act, and (3) refusing to vacate the award on claimed grounds of evident partiality by party-appointed arbitrator. Sunkist Soft Drinks Inc. v. Sunkist Growers Inc., 10 F.3d 753 (11th. Cir. 1993).

Lead appellate counsel for Defendant Money Management International in a trademark infringement case in the Ninth Circuit. Retained after the District Court entered summary judgment and awarded more than $1 Million in attorneys’ fees against MMI. The Ninth Circuit reversed the entry of summary judgment and vacated the attorneys’ fees award. Negotiated settlement agreement which resolved the case. Consumerinfo.com Inc. v. Money Management International Inc., Nos. 08-56705 and 09-55228, 2010 WL 882868 (9th Cir. March 11, 2010).

Primary outside trademark counsel for Marriott, managing the portfolio programs of all 16 of its internationally known hotel and hospitality brands. For example, we handle large search and filing projects for multiple brands, conducting searches for and registering the company’s logos worldwide. We also manage the filing programs from start to finish, including any office actions and oppositions that may result. Additionally, we handle commercial contracts involving IP and advise and record license agreements worldwide.

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Education

University of North Carolina at Chapel Hill School of Law, J.D. (1985) with high honors

University of North Carolina, B.A., Arts and Laws (1983) Phi Beta Kappa

Admissions

North Carolina (1985)

Virginia (2001)

District of Columbia (2003)

New York (2015)

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Court Admissions

Supreme Court of North Carolina (1985)

U.S. District Court for the Middle District of North Carolina (1987)

U.S. Court of Appeals for the Federal Circuit (1989)

U.S. Court of Appeals for the Fourth Circuit (1992)

U.S. District Court for the Eastern District of Michigan (1996)

U.S. District Court for the Western District of North Carolina (2000)

Supreme Court of Virginia (2001)

U.S. District Court for the Eastern District of North Carolina (2002)

U.S. District Court for the Eastern District of Virginia (2002)

District of Columbia Court of Appeals (2003)

U.S. District Court for the District of Columbia (2004)

U.S. District Court for the Western District of Virginia (2005)

U.S. Court of Appeals for the Ninth Circuit (2009)

U.S. Court of Federal Claims (2009)

Supreme Court of New York, Appellate Division, Third Judicial Department (2015)

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Professional & Community Activities

American Bar Association, Intellectual Property Section, Forum on Franchising, Member

American Inns of Court

District of Columbia Bar Association, Intellectual Property Law Section, Member

International Trademark Association, Member, Advanced TTAB Practice Forum, Past Chair

North Carolina Bar Association, Intellectual Property Section, Member

Virginia Bar Association, Intellectual Property Law Section, Member

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