Mark Backofen

Mark Backofen has over 10 years of experience in all aspects of intellectual property, including patents, trademarks, copyrights, and trade secrets, both in litigation as well as their preparation and prosecution. His broad experience allows the issue to be addressed from both a litigation as well as transactional viewpoint.

He has been involved in litigation in Federal Courts in Texas, Washington, D.C. and New York as well as administrative proceedings in the U.S. Patent and Trademark Office.  He is also experienced in preparing and prosecuting patents and trademarks, both in the U.S. as well as world-wide, in the chemical, mechanical and medical device fields.

Additionally, Mark advises clients regarding intellectual property issues in connection with corporate transactions, licensing (both national and international), infringement/validity opinions, and design around programs.

Representative Experience:

• Represented a medical device manufacturer through verdict and appeal in asserting patent and trade secret infringement against various competitors
• Represented various start-up companies in developing their patent and trademark estates as well as adequately protecting their trade secrets and other confidential information
• Represented a major entertainment company in defending trademark and copyright litigation involving one of its major movie franchises
• Represented a major manufacturer in various cancellation and opposition proceedings before the Trademark Trial and Appeal Board
• Advised a distribution company regarding various patent and copyright issues relating to the importation of fashion bags, luggage, and other products
• Represented a national non-profit organization in connection with registering copyrights in secure tests that are not publicly available as well as a related infringement suit

Professional Affiliations :

• IP Section Member, State Bar of Texas
• IP Section Member, Dallas Bar Association
• American Intellectual Property Law Association
  • Patent Law Committee
  • Chemical Practice Committee
• Patent Misuse Committee, Intellectual Property Owners Association
• Dallas Association of Young Lawyers

Education:

• J.D., Vanderbilt University Law School, 2001
• B.S., Chemistry, cum laude, State University of New York at Geneseo, 1998

Admissions:

• Texas, 2001
• U.S. Patent and Trademark Office

Admitted To Practice :

• U.S. District Court for the Eastern District of Texas, 2005
• U.S. District Court for the Northern District of Texas, 2001
• U.S. Court of Appeals for the Federal Circuit, 2005