San Francisco Phone +1.415.442.1301 Fax +1.415.442.1001
One Market, Spear Street Tower//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.
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, 2021)
Leading Trademark Practitioner, Prosecution and Strategy, California, WTR 1000, World Trademark Review (2019–2021)
Recommended, Intellectual property: Copyright, The Legal 500 US (2019, 2020)
Recognized, IP Trademark Star – California, Managing Intellectual Property (2018–2020)
Recognized, IP Copyright Star – California, Managing Intellectual Property (2020)
Recognized, Trademarks, Who’s Who Legal (2016–2017)
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
Member, Board of Directors for the San Francisco IP Law Association (2016-present)
12/9/2019 - Practical Privacy and the CCPA: Bracing for January 1
10/22/2019 - CCPA Update: New Amendments and Preparing for January 1
11/1/2018 - The Bar Association of San Francisco’s IP BYTES: Hot Topics in Trademark Law
10/16/2018 - The California Consumer Privacy Act Amendments, Round 1
7/19/2016 - SFIPLA’s The New Defend Trade Secrets Act Key Features and Best Practices
6/23/2016 - Women Leaders Share Their Perspectives on Working in Technology & the Law
6/1/2016 - The New Federal Trade Secrets Act & You
6/8/2012 - 2012 Asian America MultiTechnology Association’s Social Media Conference
6/6/2012 - Limiting and Avoiding Liability Online
12/7/2010 - 22nd Annual Silicon Valley Association of General Counsel All Hands Meeting
2/17/2021 - World Trademark Review Recognizes Morgan Lewis Among 2021 Leading Trademark Firms
6/26/2020 - Managing IP Names Morgan Lewis Practices, Lawyers Among 2020 IP Stars
5/4/2020 - Justices Talk Monopolies, Generic Marks in Booking.com Case, Bloomberg Law
2/14/2020 - World Trademark Review Recognizes Morgan Lewis Among Leading Trademark Firms in 2020
9/26/2019 - Morgan Lewis Named ‘Powerhouse’ Firm in Ninth Annual BTI Litigation Outlook
5/23/2019 - Managing Intellectual Property Names Morgan Lewis Practices, Lawyers Among 2019 IP Stars
2/7/2019 - World Trademark Review Recognizes Morgan Lewis Among Leading Trademark Firms in 2019
5/24/2018 - Morgan Lewis Lawyers and Practices Ranked as Intellectual Property ‘Stars’
March 2018 - Morgan Lewis Among Juristat Top 100 Patent Firms in 2018
April 2017 - Morgan Lewis Recognized as a Top Patent Firm by Juristat
5/26/2016 - Is Your Information Protected Under the New Defend Trade Secrets Act?
March 2016 - Morgan Lewis Ranked as one of Juristat's Top 100 Patent Firms
1/12/2016 - Morgan Lewis Advises Healthline Networks, Inc. in Equity Investment by Summit Partners
8/5/2015 - Morgan Lewis Advises Virtium in Growth Investment by L Squared Capital Partners
12/29/2014 - Morgan Lewis Advises BNI in Growth Investment
5/14/2014 - Morgan Lewis Advises C-Preme on Sale to BRG Sports
2/27/2013 - 5 Tips For Employers To Protect Their Trade Secrets, Law360
9/5/2012 - Securities Test Prep Co. Copied Exam Questions, FINRA Says, Law360
12/18/2020 - California Attorney General Proposes Fourth Set of CCPA Regulation Changes
7/1/2020 - US Supreme Court Allows Trademark Registration for Booking.com
6/4/2020 - CCPA: What Companies Need to Do Ahead of July 1 Enforcement
4/3/2020 - Protecting Trade Secrets During Shelter-in-Place
2/18/2020 - California Attorney General Releases Modifications to Proposed CCPA Regulations
1/7/2020 - Preparing for CCPA Enforcement by the California Attorney General
1/6/2020 - Preparing for the CCPA Private Right of Action for Certain Security Incidents
12/5/2019 - The CCPA Impacts Non-US Companies. Are You Prepared?
12/2/2019 - Employee and Other Notices by January 1, 2020, and Related Issues for Employers
11/22/2019 - Responding to Requests to Opt Out
11/20/2019 - Responding to Requests to Delete
11/15/2019 - Responding to Requests to Know
11/13/2019 - Privacy Policy Requirements
11/8/2019 - Verifying Consumer Requests
11/6/2019 - Receiving Requests
10/11/2013 - New California Law Protects Online Account Information
10/4/2013 - California Enacts New Laws on Data Privacy and Security Issues
1/9/2013 - New Federal Statute Strengthens Trade Secret Protection
1/3/2013 - Increasing Scrutiny of Consumer Data Collection
10/19/2012 - Trade Dress, Copyright or Design Patent?, The Recorder
April 2011 - Keyword Advertising, presented for a Morgan Lewis Client Seminar