Michael Kanach, Esq.
Trademark Attorney
Senior Counsel
1050 Connecticut Ave NW, Suite 500
Washington, DC 20036
202-294-2287 (Office)
202-578-2018 (Cell)
Trademark Attorneys Trusted For Our Experience®
Trademark Attorney
Michael Kanach, senior counsel at Gerben IP, has over 16 years of experience in intellectual property law, focused on branding and trademarks.
He is known for his outgoing demeanor and people-focused approach, which allows him to connect effectively with clients, witnesses, experts, and colleagues alike. Michael’s extensive experience, comprehensive knowledge of intellectual property law, and outstanding leadership abilities position him as a reliable advocate for his clients in navigating the complexities of today’s legal landscape.
As an IP attorney, Michael has played a pivotal role in advising clients across various industries on critical intellectual property issues and ensuring their legal rights are protected, including the following industries: music, entertainment, consumer products, sports equipment, food and beverage, and alcoholic beverages.
Michael specializes in intellectual property and complex litigation in Federal Courts across the country and before the Trademark Trial and Appeal Board. He has litigated and counseled clients on all types of intellectual property, including trademarks (registered and common law), service marks, trade dress, copyrights, trade secrets, design patents, utility patents, and unfair competition.
To that end, he has assisted multi-national corporations in acquiring, registering, and enforcing their IP assets and defending against claims of infringement.
With several years as an in-house attorney at a live entertainment company, Mike can evaluate IP disputes and transactions from the company’s perspective.
Mike enjoys writing articles, teaching law school classes, and presenting at seminars on intellectual property topics, especially trademarks and craft beer.
Mike lives in Charlotte, NC, with his amazing wife and three wonderful children. He enjoys throwing the lacrosse ball with his kids, coaching their teams, doing art projects with his kids, and writing.
Experience
- Represented the publisher of a yellow pages directory against claims of trademark infringement, unfair competition, and counterfeiting in the Central District of California. Preparation for trial with co-counsel at Davidson Law Group, ultimately resulted in a finding that the alleged trademarks were generic and not protectable, and that there was no likelihood of confusion. We also received a finding that the trademark case was exceptional and an award of attorney’s fees for defendant. The case was featured in e.g., Bloomberg BNA News. “Calif. Judge Denies TM for Iranian Yellow Pages” (May 26, 2016).
- Represented a whiskey producer as a plaintiff in a trademark infringement action in the Northern District of California and in opposition proceedings before the Trademark Trial and Appeal Board (TTAB) related to four trademark applications. Plaintiff alleged trademark infringement of a trademark related to bourbon whiskey. The parties participated in early discovery, ultimately resulting in a favorable settlement for plaintiff. The case was featured in e.g., Law360, “Competing Bourbon Cos. Agree To End ‘Stitzel’ TM Dispute” (November 23, 2016); “A Trademark Year In Wine And Beer 2016” (December 16, 2016).
- Represented a semiconductor manufacturer in Opposition proceedings before the Trademark Trial and Appeal Board (TTAB) related to trademark application of the letter “M” which ultimately resulted in registration of client’s the applied-for-trademark.
- Represented a live music and entertainment company in negotiating contracts and intellectual property licenses.
- Conducted a deposition for a TTAB opposition, where the other side withdrew its application during the course of the proceeding, resulting in an immediate win for a client in the sporting events industry.
- Monitored and prosecuted hundreds of registered trademarks and trademark applications worldwide for live entertainment company related to festivals and music venues.
- Represented countless clients in performing trademark clearance evaluations, obtaining trademarks, and analyzing cease and desist letters (both sending cease and desist letters and responding to letters) in various industries, including consumer products, software, food and beverages, and alcohol beverages, namely craft beer, distilled spirits, mixed cocktails, and wine.
- Represented a defendant against claims of patent infringement and trademark infringement in separate lawsuits filed in the Northern District of California related to blood glucose monitors and test strips.
- Represented a defendant distilled spirits company from Kentucky in a lawsuit filed in the Northern District of California, asserting trademark infringement, trade dress infringement, and unfair competition. Claims related to trade dress of parties’ respective bottle packaging and label design for flavored whiskeys. Obtained favorable settlement shortly after filing motion to transfer venue to the Eastern District of Kentucky.
- Represented exercise studios, as well as related companies and individuals, as defendants in a complex intellectual property case in the Northern District of California. Plaintiffs alleged patent infringement, trade dress infringement, and unfair competition related to pilates-style reformers, workout equipment, and exercises. Unfair competition claims related to alleged intellectual property rights in trademarks and copyrights, as well as trade secrets related to Plaintiff’s exercises. Obtained a complete dismissal of all causes of action. Plaintiff filed a voluntary dismissal shortly after Defendants filed motion for summary judgment and permitted inspections of the exercise equipment.
- Represented a spice company in the Northern District of California in defense of claims related to trade dress for spice jar packaging design, false designation of origin, and unfair competition, resulting in a settlement immediately prior to trial.
- Represented a digital lock company in defense of claims related to false advertising and anti-trust (involving prior patent infringement claims), obtained order excluding plaintiff’s expert from testifying as to patent infringement, resulting in settlement immediately prior to trial.
- Represented a beverage company in defense of claims of false advertising and class action lawsuits filed in several district courts.
- Represented several print-on-demand t-shirt and apparel printing companies in the Northern District of California related to claims of trademark infringement for consumer created content, filed by a video game company.
- Represented a social media platform (related to athletes and professional sports teams) in obtaining complete dismissal of trademark and unfair competition lawsuit filed in the Central District of California, Obtained full dismissal with prejudice on motion to dismiss the Complaint.
- Represented a manufacturer of HVAC equipment and distributor representatives as defendants in a patent infringement action in the Northern District of California. Defended alleged infringement of seven patents and hundreds of asserted claims through discovery and claim construction, ultimately resulting in a verdict of non-infringement as to all remaining asserted claims and invalidity as to certain claims in light of prior art from inventor’s and plaintiff’s predecessor companies. The case was featured in, e.g., Law360, “Energy Labs Cleared By Jury In Nortek Patent Dispute” (August 10, 2016).
- Represented an online retailer selling furniture in defense in complex intellectual property litigation filed in the Northern District of California, involving trade dress, trademarks, and both design and utility patents of famous furniture designs. Obtained favorable settlement shortly after Defendants filed motion for summary judgment of trade dress being functional, including based on expired utility patents on the chairs and advertised utilitarian benefits.
- Represented furniture company in several proceedings before the Trademark Trial and Appeal Board (TTAB) in dispute related to trademarks for goods and services related to retail and furniture, mattresses, and bedding. Obtained a favorable settlement.
- Represented a social media company in negotiations of the transfer of intellectual property rights associated with trademarks, and defended client in cancellation action before Trademark Trial and Appeal Board (TTAB).
- Assisted an up and coming brewery in responding to cease and desist letter and lawsuit involving craft beer trademarks and slogan for competing local craft brewery.
- Assisted an alcoholic beverage manufacturer in resolving dispute with a local restaurant related to trademark.
- Performed prior art searches and trademark clearance evaluations for an alcohol beverage company (innovative packaging of beer and distilled spirits) in efforts to obtain both utility and design patents and trademarks, and represented client in opposition proceeding before the Trademark Trial and Appeal Board (TTAB).
- Represented a plaintiff manufacturer and owner of a patent related to a device used to test computer chips. Worked, as local counsel, from the filing of the complaint alleging patent infringement through a five-day trial involving complex patent issues. The San Francisco jury found under the doctrine of equivalents patent infringement of all claims of the patent, rejected defense that the patent was invalid, found that the infringement was willful, and awarded client $636,807 lost profits as damages. The case was featured in, e.g., Law360, “Jury Hands Johnstech $636K Win In Chip Tester IP Suit” (September 27, 2016).
- Represented a manufacturer of HVAC equipment, specifically VAV terminal units, in a patent infringement action in the Northern District of California. Defended alleged infringement of two patents through pleadings, discovery, claim construction, expert discovery, and dispositive motions. Obtained a favorable settlement at settlement conference immediately after Defendant filed a motion for summary judgment on numerous grounds, including non-infringement, patent invalidity (anticipated, obvious, and inequitable conduct), and damages (no evidence of damages or patent marking).
- Represented a particle detector company in patent infringement lawsuits filed pro se by non-practicing patent owner, who also sued numerous other particle detector companies in several jurisdictions all of whom defended on basis of non-infringement. The case filed in the Northern District of California is referenced in e.g., Law360, “High Court Again Buries Particle Detector Patent Appeal” (May 18, 2015).
- Represented a concrete manufacturer and patent owner in complex intellectual property lawsuit filed the in the Eastern District of Texas involving a unique chemical formulation for state-of-the-art air entertainment system that enhances the quality of concrete. Plaintiff asserted numerous claims against corporate and individual defendants including patent infringement, breach of agreements including license agreement, misappropriation of trade secrets related to defendants’ filing of related patents, declaratory relief seeking a finding that defendants’ patents are invalid and unenforceable, fraud, and interference with contracts and prospective relations. Case resolved through settlement after plaintiff filed motion for preliminary injunction to enjoin defendants from practicing plaintiff’s patent and defendant’s improvement patents (after hearing on motion) and after mediation.
- In reversing a district court grant of a preliminary injunction, the Federal Circuit sided with our client in finding that patent exhaustion principles apply equally to all authorized transfers of title in property, regardless of whether the particular transfer at issue constituted a gift or a sale. The Federal Circuit further concluded that the blood glucose meters substantially embodied the methods claimed in the patent and that their distribution therefore exhausted the patent owner’s patent rights. LifeScan Scot., Ltd. v. Shasta Techs., LLC, 734 F.3d 1361, 1377 (Fed. Cir. 2013). The case was featured in e.g., Law360, “Fed. Circ. Nixes Injunction On J&J Rival’s Glucose Strips” (November 4, 2013).
- Represented the plaintiff in a declaratory relief action filed in the Central District of California seeking declaratory judgment of non-infringement of patent related to salmon packaging, which resulted in an immediate settlement after the filing of the complaint and proving non-infringement.
- Represented a patent owner in patent infringement and contract-related lawsuit in Southern District of California. The patent was related to method of packaging for meat products and interlocking design of netting to make imprints on meat as shown in delis.
Speaking Engagements
- American Bar Association Section of Intellectual Property Law, “The Brewhaha: Working with Craft Breweries for Trademark, Brand Protection, and Other Issues,” A.B. A. SECT. INTELL. PROP. L., (Mar. 27, 2015).
- “Developing an Effective Strategy Against Patent Threats,” (Feb. 21, 2018).
- Podcast Guest, “Mike Kanach on Trademarks & Craft Beer,” Ipse Dixit Podcast, Season 1, Ep. 23 (Nov. 5, 2018).
- Podcast Guest, “Trademarks and Branding for Craft Beverages,” Branding Brews Podcast (2017).
- UC Hastings School of the Law (2021)
- McGeorge School of Law (2019, 2020, 2021)
- St. Thomas University College of Law (2021)
- California Alliance of Paralegal Associations (2019)
Publications
- “Craft Beer and Trademarks – 10 Takeaways from the 2017 College Football Season,” The Licensing Journal, Wolters Kluwer (2018, Vol. 38, No. 10).
- “Brewery Near Me: Why You Should Name Your Brewery After a Location and Related Trademark Considerations,” IP Blitz (November 21, 2018).
- “Craft Beer Attorneys Can Describe Their Services as Craft Beer Attorneys,” IP Blitz (Nov. 30, 2017).
- “Trademarks in the Golden Age of Craft Beer,” Landslide Magazine, American Bar Association Section of Intellectual Property Law (2015, Vol. 8, No. 2), co-author.
- “The Gift of Patent Exhaustion,” Westlaw Journal Intellectual Property (Nov. 27, 2013), co-author.
Recognitions
- Rising Star, Super Lawyer (2015-2020)
Education
University of California College of the Law, San Francisco (formerly UC Hastings)
Juris Doctor (Intellectual Property Concentration), (2010)
- Founding member and production editor of the Hastings Science and Technology Law Journal.
- President of the Association of Communication, Sports, & Entertainment Law.
Georgetown University, McDonough School of Business
Bachelor of Science in Business Administration (Marketing major, Studio Art minor), (2002)
Bar Memberships
Admitted to practice law in the State of California (2010).
Admitted to appear before the Ninth Circuit Court of Appeals.
Admitted to appear before the Federal Circuit Court of Appeals.
Admitted to appear before the Fifth Circuit Court of Appeals.
Admitted to appear before the Northern District of California.
Admitted to appear before the Central District of California.
Admitted to appear before the Southern District of California.
Admitted to appear before the Eastern District of California.