Anuj Desai

Partner

Fax: 404.873.8659

Biography

Anuj is a partner in the Intellectual Property practice. As an intellectual property lawyer with a hybrid practice encompassing both transactional matters and litigation, Anuj is trusted to manage, safeguard, and resolve disputes involving a variety of creative assets. He delivers strategic and practical advice to develop, protect, and enforce brands in both the United States and abroad. He also provides effective guidance on copyrights, creative review, FTC compliance, licensing, and dispute resolution to companies ranging from start-ups to multi-billion dollar international corporations.

As part of his dispute resolution practice, Anuj regularly appears in state and federal courts throughout the country in complex commercial and intellectual property litigation matters, and also handles cross border litigation matters. He is also well versed in leading and coordinating inter partes trademark proceedings worldwide, including trademark opposition and cancellation proceedings, before the United States Patent and Trademark Office (USPTO).

Anuj’s experience in complex commercial and intellectual property matters includes managing large worldwide trademark portfolios in the consumer products, software, restaurant, entertainment, utility services, pharmaceutical, and industrial technology market sectors.  Likewise, his background in software and e-commerce implementations gives him the upper hands in transactional matters involving technology and cloud services.

Anuj is a co-chair of the firm’s Diversity Committee and is fluent in Hindi and Gujarati. As a longstanding member of the International Trademark Association (INTA), he often serves on its committees and regularly presents at INTA events.

Experience

  • Leading representation of indemnitor contract manufacturer in federal class action litigation brought against national drug store chain for alleged false and deceptive claims involving health supplement products.

  • Obtained summary judgment in defense and favor of renowned entertainer against complaint for trademark infringement in federal court, resulting in permanent injunction against plaintiffs. The district court’s decision was affirmed on appeal to the Fifth Circuit Court of Appeals (2017 WL 2954398) and the Supreme Court denied petition for a writ of certiorari.

  • Representing German paper manufacturer in defense of patent inventorship dispute pending in federal court in the US, and involving concurrent proceedings in Germany and the EU, brought by a US supersonic drying equipment manufacturer.

  • Successfully settled defense of Japanese wet wipe innovator in cross-border trade secret litigation pending in federal court against large US-based conglomerate wet wipe manufacturer, stemming from unsuccessful joint development project.

  • Led trademark enforcement action for client in pool care products space against direct competitor. Quickly obtained favorable settlement for client, requiring competitor to cease sales of infringing goods, repackage existing inventory, recall infringing goods from marketplace, and agree to pay liquidated damages for any future infringement.

  • Responsible for leading negotiation of multi-million dollar technology agreements against Fortune 100 companies for global software and cloud services vendor.

  • Represented pharmacy health information provider in successfully defeating emergency TRO proceedings brought by competitor in federal court for alleged trade secret misappropriation, which result was followed by prompt dismissal of all claims in suit.

  • Successfully defeated emergency TRO proceedings brought by competitor against pharmacy health information technology provider in federal court for alleged trade secret misappropriation, which result was followed by prompt dismissal of all claims in suit.

  • Led the defense and favorable resolution of global trademark infringement dispute and related opposition/cancellation proceedings brought by fashion house against personal care products manufacturer.

  • Supported successful settlement of long-standing multi-million dollar breach of contract dispute on behalf of national healthcare analytics technology company and its former telecommunications vendor. The representation required an understanding of and evaluating the deficiencies in the sophisticated telecom services contracted.

  • Responsible for managing day to day coordination and enforcement of large worldwide trademark portfolios of several commercial and consumer products companies, including leading all litigation and inter partes proceedings that arise.

  • Represented radiology services healthcare provider in negotiating a software license with a PACS/RIS vendor.

  • Represented national employee benefits service provider in connection with class action data breach lawsuit with early case evaluation and comprehensive dismissal strategy.

  • Successfully advocated for e-discovery cost shifting and award of attorneys’ fees in opposition to burdensome third party discovery and forensic investigation in underlying breach of contract litigation, inducing settlement of the litigation.

  • Employed a sophisticated data relationship tool on behalf of a client to efficiently review and locate highly relevant documents from a million-page plus document production to aid in fast-paced discovery in a case where client faced budget constraints that prevented more comprehensive document review procedures.

  • Successfully defended medical device manufacturer in federal court bench trial against a claim for more than $10 million based on an alleged breach of license. Unlike a typical breach of contract claim, the issues in this case required proving patent non-infringement and tendering expert testimony in a niche area of x-ray technology. Anuj also handled and successfully defeated an appeal of the judgment before the Eleventh Circuit and Florida Supreme Court.

  • Served as technology counsel for two Georgia state agencies in successful settlement of a multimillion dollar breach of contract lawsuit brought following an unsuccessful software implementation by a software vendor. Discovery in this case presented complex issues surrounding high-volume discovery, as well as the expert review of software code and tools integral to the software implementation.

  • Supported successful settlement of claims of trade dress infringement and unfair competition under the Lanham Act brought against a pharmaceutical company by a competitor. This case involved the unique and rarely litigated issue of whether the appearance of pharmaceutical pills and capsules are protectable as trade dress.

  • Obtained favorable settlement for a marine products company in its Lanham Act lawsuit against a competitor using website Meta tags and Google AdWords infringing the company’s trademarks.

  • Brought and successfully settled breach of contract lawsuit between regional healthcare practice and global healthcare software vendor.  The issues in this case required a deep familiarity with technology implementations and the reasons that they may fail.

  • Leads and coordinates inter partes trademark proceedings worldwide, including trademark opposition and cancellation proceedings, before the United States Patent and Trademark Office (USPTO).

  • Represented and helped obtain a multi-million dollar judgment, inclusive of punitive damages and attorneys’ fees, on behalf of South American food company in lawsuit for fraud and rescission. The lawsuit involved complex discovery involving international logistics and foreign entities in numerous countries.

  • Successfully defended apparel company in federal trademark infringement and counterfeiting lawsuit brought by a Pan-Hellenic sorority organization based on alleged breach of trademark license agreement.

Credentials

  • University of Georgia School of Law, Juris Doctor — 2007,

    magna cum laude

    Order of the Coif

  • Kennesaw State University, Bachelor of Business Administration - Management Information Systems — 2000,

    summa cum laude

  • State of Georgia 2007
  • United States Court of Appeals for the Federal Circuit 2019
  • United States District Court for the Middle District of Georgia 2009
  • United States Court of Appeals for the Eleventh Circuit 2007
  • United States District Court for the Northern District of Georgia 2007
  • Supreme Court of Georgia 2007
  • Georgia Court of Appeals 2007
    • International Trademark Association, Alternative Dispute Resolution Committee, 2018-2021
    • International Trademark Association, Law Firm Committee, 2014-2017
    • ABA 2016 Section of Litigation Professional Success Summit, Host Committee, 2016
    • The Indus Entrepreneurs, Past Executive Committee Member
    • South Asian Bar Association of Georgia (SABAGA), Past Board Member
    • North American South Asian Bar Association (NASABA)
    • Georgia Indo-American Chamber of Commerce
    • Atlanta Volunteer Lawyers Foundation
    • Pro Bono Project of the State Bar of Georgia

Recognition

  • “On the Rise,” Daily Report, 2017
  • WTR 1000 – The World’s Leading Trademark Professionals, 2018-2019
  • AV® Preeminent™ Peer Review Rated by Martindale-Hubbell
  • “Rising Star,” Georgia Super Lawyers (Intellectual Property, Business Litigation), in prior years

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