Mauch

Joseph V. Mauch

Partner

Mauch

Areas of Expertise

Joseph Mauch brings a practical, client-focused, and detail-driven approach to helping clients address complex business disputes, especially those involving intellectual property.

Joe is an experienced litigator who works with clients ranging from large public companies to startups and individuals. No matter the size of the client, the hallmark of his practice is listening carefully to what the client hopes to achieve and developing a strategy to navigate to a successful outcome. Even in the most heated disputes and difficult situations, clients appreciate that Joe exudes calmness and strength (and sense of humor) throughout.

Joe has nearly twenty years of experience litigating in state and federal court, as well as private arbitration. Beyond the courtroom, Joe is also a trusted counselor, advising clients on navigating IP strategy, brand protection, trademark portfolio management, doing business online and dispute resolution.

Experience

  • Achieving a preliminary injunction in a trade dress infringement action in the Northern District of California that led to a favorable settlement.
  • Responding to U.S. Patent and Trademark Office (USPTO) office actions to secure trademark registration for clients in numerous industries, including medical devices, financial services and software-as-a-service.
  • Prosecuting and defending a variety of trademark opposition and cancellation proceedings in front of the USPTO’s Trademark Trial and Appeal Board for clients that included a winemaker, a developer of a popular smartphone app, a restaurant group, and a manufacturer of gluten-free food products.
  • Achieving a decision that a trademark application was not likely to be confused with existing registrations owned by a large company after a full trademark opposition proceeding with oral hearing.
  • Securing a default judgment against a trademark infringer that required transfer of the infringing domain name and social media platform user names.
  • Successfully protecting a startup company’s trademark after receipt of a cease-and-desist letter from an established competitor.

  • Securing a judgment of more than $3 million for breach of contract and patent infringement in the Northern District of California.
  • Achieving a preliminary injunction in a utility and design patent infringement action in the Northern District of California that led to a favorable settlement.
  • Defeating a preliminary injunction motion brought by a competitor in a utility patent infringement action in the Northern District of California.
  • Securing a favorable settlement for the patent owner in an infringement action in the Middle District of Florida.
  • Acting as local counsel in high stakes patent litigation involving consumer electronics and smartphones in the Northern District of California.

  • Advising small and large companies on proper use of copyrighted images.
  • Forcing a blogger to remove infringing photographs owned by an auction house.
  • Representing a public company in the construction industry regarding infringement of copyrighted product catalogs.

  • Stopping a former executive in the healthcare industry from breaching his fiduciary duties and using company trade secrets to establish a competing company.
  • Filing a complaint for violation of the federal Defend Trade Secrets Act (DTSA) against a competitor and the client’s former lead engineer that survived a motion to dismiss.
  • Defending a public healthcare company in arbitrations and a state court action against competitors alleging various claims related to misappropriation of confidential information and unfair competition.

  • Securing favorable settlements in a series of breach of contract disputes for a client in the construction industry.
  • Securing a favorable settlement for a foreign national telephone company in an international arbitration against a large U.S. telecommunications company.
  • Acting as second chair at a judicial reference bench trial in the successful defense of a large municipality against nondisclosure claims related to the sale of a commercial real estate project.
  • Acting as “outside general counsel” assisting a food and beverage company and SAAS company with all of their litigation and potential litigation matters.

Activities

  • Bar Association of San Francisco (BASF)
  • Association of Business Trial Lawyers (ABTL)
  • San Francisco Intellectual Property Lawyers Association (SFIPLA)
  • International Trademark Association (INTA)
    • Enforcement Committee, 2016-2019, 2024-Present
    • Internet Committee, 2020-2021
    • Emerging Issues Committee, 2022-2023
    • Online Dispute Resolution Working Group, Chair, 2018-Present

Publications