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John C. Rawls, III

Attorney Profile

Top Rated Intellectual Property Attorney in Houston, TX

Baker Williams Matthiesen LLP
5005 Woodway Dr., Suite 201
Houston, TX 77056
Phone: 832-761-3308
Fax: 713-888-3550
Selected to Super Lawyers: 2004 - 2005, 2019 - 2021
Licensed in Texas Since: 2007
Practice Areas: Intellectual Property (10%), Intellectual Property Litigation (70%), Gaming (10%), Media and Advertising (10%)
Attorney Profile

An attorney at Baker Williams Matthiesen, John C. Rawls III represents clients in the state of Texas. With a focus on the Houston area, his legal practice covers matters of intellectual property and trademarks. During his career, he has worked with clients in a long list of industries, including apparel, entertainment, software, telecommunications, retail, restaurant, luxury goods, food and beverage, and advertising.

Mr. Rawls is admitted to practice in the following three states: Washington, Texas and California. He is also admitted to practice before the United States District Court for the Central District of California, the United States District Court for the Eastern District of California, the United States District Court for the Northern District of California, the United States District Court for the Eastern District of Texas, the United States District Court for the Northern District of Texas, the United States District Court for the Southern District of Texas, the United States District Court for the Western District of Texas and the United States District Court for the Western District of Washington.

After graduating from Columbia University with a Bachelor of Arts, Mr. Rawls earned his Juris Doctor from the University of Texas School of Law in 1981. He is currently a member of the Academy of Television Arts & Sciences, the International Trademark Association, the American Bar Association’s Intellectual Property Section, the Washington State Bar Association, the State Bar of California and the State Bar of Texas.

For almost 15 years, he has been named as one of the Best Lawyers in America for Intellectual Property Law. American Lawyers Media named him a Top-Rated Lawyer in Intellectual Property for two years, and for his high ethical standards and long list of successful results, he holds the highest peer review rating possible of AV Preeminent* from Martindale-Hubbell.

* AV®, AV Preeminent®, Martindale-Hubbell Distinguished and Martindale-Hubbell Notable are certification marks used under license in accordance with the Martindale-Hubbell certification procedures, standards and policies. Martindale-Hubbell® is the facilitator of a peer review rating process. Ratings reflect the anonymous opinions of members of the bar and the judiciary. Martindale-Hubbell® Peer Review Rating™ fall into two categories – legal ability and general ethical standards.

Practice Areas
  • 10%Intellectual Property
  • 70%Intellectual Property Litigation
  • 10%Gaming
  • 10%Media and Advertising
Focus Areas

Copyrights, Trademarks, Lotteries, Gaming Law, Defamation, Libel, Slander

Selections

5 Years Super Lawyers
  • Super Lawyers: 2004 - 2005, 2019 - 2021

About John C. Rawls, III

First Admitted: 1982, California

Professional Webpage: https://www.bwmtx.com/attorneys/rrawls.html

Representative Clients

  • Potbelly Sandwich works
  • Société Cartier
  • Nordstrom, Inc.
  • The Walt Disney Company
  • Montblanc International GmbH
  • Playboy Enterprises, Inc.
  • Reliant Energy
  • Starbucks Coffee Company

Verdicts/Settlements

  • Starbucks Corp. v. Dwyer, (N. D. Cal. 2000). Obtained injunction against artist’s sale of parody of Starbucks Siren Logo.
  • Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200 (N.D. Ga. 1995). Obtained injunction on behalf of entertainer Jeff Foxworthy against clothing manufacturer who was using Foxworthy’s jokes on t-shirts without permission.
  • Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc., 989 F. Supp. 1276, 45 U.S.P.Q. 2d 1463 (C.D. Cal. 1997). Successfully defended domain name registrar against claim for contributory trademark infringement resulting from issuance of allegedly infringing domain names to third parties.
  • Starbucks v. Lundberg, (D. Or. 2005). Prevailed at trial on trademark infringement and dilution claims against operator of “Sambucks” coffee shop.
  • Cantu-Buck v. Eastman Kodak Company, (Los Angeles County Superior Court, 2002). Obtained summary judgment dismissing multi-million dollar claim against Kodak for misuse of models photographs on packaging for One Time Use cameras distributed throughout Latin America.
  • Bell v. Starbucks Corporation, (S.D. Tex 2005). Prevailed at trial on trademark infringement claims against seller of “Star Bock” beer.
  • Aldrin v. Transamerica Corp., (Los Angeles County Superior Court 2007). Achieved favorable settlement for clients Getty Images and Transamerica Corporation on claims of misappropriation of name and likeness brought by former astronaut Buzz Aldrin.
  • IAC Search & Media, Inc. v. Amazon Technologies (Trademark Trial and Appeals Board 2009). Defended owner of “Askville.com” website in Opposition to trademark applications brought by the operator of the “Ask.com” website. The opposing party agreed to dismiss all Opposition, with prejudice.
  • Board of Regents, The University of Texas System v. HealtH2O Products, LLC et al. (S.D. Tex. 2010). Obtained stipulated permanent injunction on behalf of M.D. Anderson Cancer Center (a division of the University of Texas System) against defendant who had claimed M.D. Anderson had “tested” defendant’s beverage and allegedly implied that beverage was effective in fighting cancer.
  • Let’s Gel, Inc. v. Louis Vuitton North America (W.D. TX 2015). Co-counsel for Louis Vuitton in a case relating to alleged trademark infringement and dilution of LV’s “Epi” design.
  • Sunshine Kids Foundation v. Sunshine Kids Juvenile Products (S.D. Tex. 2011). Obtained stipulated permanent injunction on behalf of charity against for-profit corporation that allegedly infringed SUNSHINE KIDS trademark.
  • Iolo technologies, LLC v. Symantec Corp., (C.D. Cal. 2012). Action against large public software company to enforce the client’s rights in a corporate logo.
  • Nordstrom, Inc. v. Nomorerack Retail Group, Inc. (W.D. Wa. 2013). Represented Nordstrom Rack in trademark infringement and dilution action against operator of Nomorerack.com website. Obtained settlement requiring defendant to adopt new name and mark that did not include the word “Rack.”
  • El T v. Anatex (S.D. TX 2016). Representing El Toro restaurant chain in common law trademark infringement action against operator of “El Toro Loco” restaurant.

Honors/Awards

  • Southern California Super Lawyers (Thomson Reuters) 2004, 2005, and 2007
  • Texas Super Lawyers (Thomson Reuters) 2019-2020
  • Los Angeles Area’s Best Lawyers (Best Lawyers in America) 2006
  • Texas' Best Lawyers (Best Lawyers in America), 2010-2021
  • Chambers USA: America's Leading Lawyers for Business, Intellectual Property, 2010-2014
  • “AV Preeminent” (5.0 out of 5.0) rating by Martindale, AV Preeminent, Martindale
  • Best Lawyers in America, Intellectual Property Law, 2007-2021
  • Listed by Legal 500 U.S. Guide®, Intellectual Property in area of "Trademark Litigation," 2007 and 2008, Legal 500 U.S. Guide, Intellectual Property: Trademark Litigation, Legal 500 U.S. Guide®
  • Selected for 10 consecutive years to Best Lawyers in America® list of Intellectual Property Law attorneys., Best Lawyers®, 2007
  • American Lawyer Media/Martindale-Hubbell, Top Rated Lawyer in Intellectual Property, 2013, 2014, Top Rated Lawyer in Intellectual Property, American Lawyer Media/Martindale-Hubbell
  • Listed in Chambers USA: America's Leading Lawyers for Business, Intellectual Property, Chambers USA: America's Leading Lawyers for Business, Intellectual Property, Chambers USA®, 2010

Scholarly Lectures/Writings

  • "Online Counterfeiting - Imitation Is by No Means The Sincerest Form of Flattery," Security Magazine, November 9, 2010.
  • "The Truth Behind Look-Alike Brands: Are They Knowingly Misleading Consumers?" Food & Drink Quarterly, September 2009.
  • "Facebook, Twitter and the Next Generation of Social Media: Opportunities & Risk for Your Business," Practicing Law Institute webinar presentation, July 13, 2010.
  • "U.S. Anti-Spam Litigation Involving Text Messages: What Marketers Need To Know," BNA International World Data Protection Report, June 2010.
  • “Summary Judgment on Trademark Claims: A Specialized Tool,” AIPLA Annual Meeting, October 22, 2010 (Washington, D.C.)
  • "Trademark War Stories," The University of Houston Law Center, November 10, 2009.
  • "US Right of Publicity Laws: What Every Non-US Attorney Should Know," Intellectual Property Magazine, May 2014
  • "Anti-Spam Litigation Involving Text Messaging: What Marketers Need to Know," World Data Protection Report, June 2010.
  • "Facebook, Twitter and the Next Generation of Opportunities and Risks for Your Business," PLI Presentation, July 2010.
  • Summary Judgment on Trademark Claims, Institute for Law and Technology Annual Intellectual Property Law Conference, November 8, 2011 (Plano, Texas)

Bar/Professional Activity

  • International Trademark Association
  • Century City Bar Association, Board of Directors, 1994-2000
  • Academy of Television Arts and Sciences
  • State Bar of Texas, Intellectual Property Section
  • American Bar Association, Intellectual Property Section
  • Washington State Bar Association
  • U.S. District Court Western District Texas
  • State Bar of California
  • U.S. District Court Western District Washington
  • U.S. District Court Southern District Texas
  • U.S. Courts of Appeal Federal Circuit
  • U.S. District Court Northern District Texas
  • U.S. District Court Eastern District Texas
  • U.S. District Court Southern District California
  • U.S. District Court Eastern District California
  • U.S. District Court Northern District California
  • U.S. District Court Central District California
  • U.S. Courts of Appeal Ninth Circuit
  • U.S. Courts of Appeal Fifth Circuit
  • Admitted to practice in Washington State, 2011
  • Admitted to Practice in Texas, 2007
  • Admitted to Practice in California, 1982

Educational Background

  • B.A. Psychology, Columbia University, 1979

Industry Groups

  • Advertising
  • Apparel
  • Entertainment
  • Food & Beverage
  • Luxury Goods
  • Restaurant
  • Retail
  • Software
  • Telecommunications
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Office Location for John C. Rawls, III

5005 Woodway Dr.
Suite 201
Houston, TX 77056

Phone: 832-761-3308

Fax: 713-888-3550

Last Updated: 3/16/2021

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