deRosa, Barth X.

Education

George Washington University

B.A., 1978
  • Environmental Science

University of Georgia School of Law

J.D., 1982

Bar Admission

District of Columbia

Barth X. deRosa

Member

Prominent Assignments

Initiated and served as lead attorney in the successful prosecution of over 345 trademark opposition/cancellation proceedings before the U.S. Trademark Trial and Appeal Board with only one loss.

Initiated and chaired over 50 federal court actions for federal trademark infringement, unfair competition, anti-cybersquatting and dilution resulting in favorable outcomes via decision, settlement or consent judgment with only one loss.

Experience with trial experts in the design and implementation of trademark related surveys for determining likelihood of confusion, acquired distinctiveness and dilution.

Represented clients in various appeals before the United States Court of Appeals for the Federal Circuit and the Court of Appeals for the Fourth Circuit on trademark and procedural related issues.

Rendered due diligence analyses and services on intellectual property issues in at least 25 corporate acquisitions and/or mergers saving one client approximately $40 Million due to detection of adverse trademark related issues.

Represented various clients in Uniform Dispute Resolution Proceedings (UDRP) before ICANN in successfully securing ownership of top level domain names.

Successfully prosecuted over 3,000 trademark applications to registration before the U.S. Patent and Trademark Office.

Provided availability reviews and recommendations for over 8,500 trademarks.

Successfully prosecuted to issue the first federal registration for the configuration of an automobile as a trademark, namely the famed "Beetle" vehicle on behalf Volkswagen.

Successfully prosecuted to issue the first collective membership mark registration for a health maintenance organization on behalf of CareFirst Maryland, Inc. d/b/a CareFirst BlueCross BlueShield.

Provide daily counsel on issues related to trademarks, unfair competition, copyrights, trade dress protection, rights of publicity, dilution, false advertising, domain names, trade secrets, e-business and gray market and counterfeit merchandise.

Negotiated, evaluated and drafted numerous settlement agreements and licensing agreements.

Representative Clients

  • Bari Olive Oil Company
  • DBC Agricultural Products, Inc.
  • Institute for International Economics
  • Institute of Industrial Engineers
  • RECARO GmbH Co. KG
  • Sadeg Ranch Organic Olives, LLC d/b/a Moon Shadow Grove
  • Sapidus Farms, Inc.
  • The United Methodist Publishing House
  • Universal American Corp. (and affiliated companies)
  • Volkswagen Aktiengesellschaft (and affiliated companies)
  • Volkswagen Group of America, Inc. (and affiliated companies)

Professional Involvement

  • The Trademark Reporter, Editorial Board, (2004-2008)
  • District of Columbia Bar Association, Intellectual Property Sub-committee
  • Georgia Bar Association, Intellectual Property Sub-committee
  • International Trademark Association
  • American Intellectual Property Law Association
  • Chief Executive Officer: SECOLARI: 2011 to Present
  • Member: Board of Directors, California Olive Oil Council, Berkley, California: 2012 to Present
  • Member: American Olive Oil Producers Association, Clovis, California: 2015 to Present
  • Member: National Association for the Fancy Food Trade, New York, New York

Community Involvement

  • Member: Advisory Council, Downtown Columbia Partnership, Columbia, Maryland: 2015 to Present
  • Member, Vistage f/k/a TEC, The Executive Committee (1998 to 2012)
  • Friendship School, Eldersburg, Maryland, Advisory Board, (2002-2005)

Experience

  • Over 33 years of legal experience in the practice of intellectual property law, including, service as head of the trademark department at two prior law firms.
  • Prior industry experience with the National Legal Center for the Public Interest and Energy and Environmental Analysis, Inc.
  • Represented : CareFirst of Maryland, Inc. d/b/a CareFirst BlueCross BlueShield (and affiliated companies) (1982-2012).
  • Represented: Heartland Building Products, Inc. (1982-2008)
  • Represented: O.C. Seacrets, Inc. (and affiliated companies) (1989-2012)
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Acknowledgements