Carla B. Oakley

Partner

San Francisco Phone +1.415.442.1301 Fax +1.415.442.1001

One Market, Spear Street Tower, 28th Floor//San Francisco, CA 94105-1596//United States

Silicon Valley Phone +1.650.843.7299 Fax +1.650.843.4001

1400 Page Mill Road//Palo Alto, CA 94304-1124//United States

Carla B. Oakley focuses on intellectual property (IP) and advertising, from inception and global protection through trial. Her experience includes litigation and counseling involving trademarks, trade secrets, copyrights, advertising, rights of publicity, privacy, social media, licenses, product design strategies, patents, and database protection. One of the partners heading up the IP and advertising practice in Northern California, Carla has first–chair jury trial, appellate, and arbitration experience. She helps clients maximize their IP, manage risks, and protect their rights.

Throughout her 30 years of practice, clients from startups to global businesses have sought Carla’s counsel. Carla has experience in various state and US federal courts and other venues, such as the US Trademark Trial and Appeal Board, the International Chamber of Commerce (ICC) Court of Arbitration, and Uniform Dispute Resolution Policy (UDRP) proceedings pursuant to ICANN regulations. Her litigation experience includes cases involving trademarks, domain names, trade secrets, copyrights, counterfeit goods, advertising, product design and trade dress claims, unfair competition, rights of publicity, patents, and false patent marking claims, as well as IP license disputes, database protection issues and enforcement of online terms of service.

In addition to litigation, Carla counsels clients regarding the strategic development and registration of trademarks and global trademark portfolio management; civil and criminal anti-counterfeiting enforcement; product design protection strategies; trade secret protection programs; copyright registration and fair use issues; IP due diligence and IP enforcement programs; licenses and other types of agreements involving IP; and Internet liability, privacy and data security breach issues, and database protection issues. She also advises clients on how to minimize risks of conducting business online and how to comply with advertising regulations, Federal Trade Commission and Attorney General guidelines, laws pertaining to sweepstakes and skills contests, and privacy laws.

Carla frequently lectures and writes on IP and advertising topics and is active in several professional organizations. She is on the Board of Directors for the San Francisco Intellectual Property Association, and is a member of the Emerging Issues Committee for the International Trademark Association (INTA). Carla previously chaired the US subcommittee of INTA’s Nontraditional Marks Committee, was a member of the INTA PAC board for more than a decade, and has served on several other INTA committees. A long-time member of the Bar Association of San Francisco (BASF), Carla has been a member of BASF’s Judiciary Committee, chaired the BASF Litigation Section and served on the Litigation Section’s Executive Committee. She is an honorary board member for Larkin Street Youth Services.

Selected Representations

ACR Electronics v. DME Corporation, obtained a preliminary injunction preventing the defendant’s product from ever being sold, asserting copyright and trade secret claims; resulted in stipulated judgment and permanent injunction preventing the product from ever being sold and preventing defendants from competing with the plaintiff for 2-5 years for a range of products.
Financial Industry Regulatory Authority v. Training Consultants, obtained a preliminary injunction and stipulated judgment with a permanent injunction preventing defendants from using plaintiff’s confidential secure tests, asserting copyright and trade secret claims.
Azimuth v. SeaTel, representing the defendant, successfully resolved claims of false advertising, false patent marking and trade dress infringement claims.
Stone v. Affliction, representing the plaintiff, successfully resolved claims of copyright infringement, resulting in the defendant’s cessation of use of the plaintiff’s copyrighted artwork on clothing.
KLA-Tencor v. Murphy, obtained a temporary restraining order and ex parte seizure order, and then a stipulated judgment and permanent injunction based on trade secret claims and violations of the Computer Fraud and Abuse Act.
Solin v. National Association of Securities Dealers, successfully obtained dismissal of declaratory judgment claims challenging the protectibility of NASD’s database of arbitration awards. (NASD changed its name and is now named the Financial Industry Regulatory Authority, or FINRA.)
Financial Industry Regulatory Authority v. ProctorU, TTAB opposition, representing opposer, applicant withdrew its application, causing judgment to be entered in opposer’s favor, and applicant agreed to limit its use of PROCTORU.
Horiyoshi Worldwide v. Rowe, TTAB cancellation, representing petitioner, secured registrant’s agreement not to oppose the petition to cancel in the United States and also in a similar action in Canada.
Financial Industry Regulatory Authority v. Sussman & Frankel, LLP, UDRP proceeding, successfully obtained an order compelling the transfer of multiple domain names that included FINRA’s registered FINRA and NASD marks.
Weatherford v. WGroup, UDRP proceeding, successfully obtained an order compelling transfer of domain name to complainant.

Awards and Affiliations

Member, Practice Group of the Year, Intellectual Property, Law360 (2019)

Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)

Leading Trademark Practitioner, Enforcement & Litigation, California, WTR 1000, World Trademark Review (2020–2022)

Leading Trademark Practitioner, Prosecution and Strategy, California, WTR 1000, World Trademark Review (2019–2022)

Recommended, Intellectual property: Trademarks: non-contentious (including prosecution, portfolio management and licensing), The Legal 500 US (2022)

Recommended, Intellectual property: Copyright, The Legal 500 US (2019, 2020, 2022)

Recognized, Top 250 Women in IP, Managing Intellectual Property (2021, 2022)

Recognized, IP Trademark Star – California, Managing Intellectual Property (2018–2022)

Recognized, IP Copyright Star – California, Managing Intellectual Property (2020–2022)

Recognized, Trademarks, Who’s Who Legal (2016, 2017, 2022)

Recognized, Who's Who Legal: California (2009)

Recognized, Northern California Super Lawyer (2006)

Recognized, Top Lawyers in the Bay Area - Intellectual Property, Bay Area Lawyer Magazine (2006)

Executive Committee Honorary Member, Bar Association of San Francisco Litigation Section

INTA PAC Board Member, International Trademark Association (2008–2019)

Nominating Committee Member, Bay Area CFO Awards (2010–2011)

Member, International Association of Privacy Professionals