John W. Crittenden is a partner in the Cooley Litigation department. He is resident in the San Francisco office, and has been with the Firm since 1983.
A member of the Firm's Trademark, Copyright & Advertising practice group, Mr. Crittenden's practice includes litigation and trial work in the areas of trademark, false advertising, unfair competition, and copyright, domestic and international trademark counseling and prosecution, and advice and advocacy in other intellectual property fields such as rights of publicity and the Internet. He is listed in Best Lawyers in America, Guide to the World's Leading Trademark Practitioners and Legal 500.
Legal profession publications report clients' praise for Mr. Crittenden's skills and client service. "Among the talented [Cooley trademark] unit is the 'sharp, resourceful, and hugely capable' John Crittenden, whose sterling performance in both prosecution and dispute-related briefs garners much respect." – WTR 1000 Guide to World's Leading Trademark Professionals (2013). "John Crittenden is seen by clients as ‘never wasting time on an issue.' He is also praised for making clients feel like ‘a co-worker or a friend instead of a client.'" – Legal 500 US (2009)
Mr. Crittenden has been the lead lawyer on a number of notable intellectual property cases, including:
- Nordstrom, Inc. v. 7525419 Canada, Inc. dba Beyond the Rack, No. C12-1387-TSC (W.D. Wash, Dec. 27, 2012), in which he successfully defended "flash sale" online seller Beyond the Rack against Nordstrom, Inc.'s claims for infringement of its "rack" trademarks, persuading the court that "in light of the weakness of the marks at issue, the crowded field of similar marks, and the level of care probably exercised by ‘flash sale' customers," Nordstrom was not likely to succeed on the merits of its claims.
- PerfumeBay.com, Inc. v. eBay Inc., 506 F.3d 1165, 84 U.S.P.Q.2d 1865 (9th Cir. 2007), which he tried and successfully argued on appeal for eBay. The appellate court affirmed a lower court injunction against an online perfume seller's use of the name PerfumeBay and held that the PERFUMEBAY mark also diluted the famous eBay brand.
- Marvel Enterprises v. NCsoft Corporation, 74 U.S.P.Q. 2d 1303 (C.D. Cal. 2005), in which he led the successful defense of NCsoft Corporation, obtaining a ruling that that players' use of Marvel's trademarked names in the online game City of Heroes was not infringement.
- Cohn v. PetSmart, Inc., 281 F.3d 837 (9th Cir. 2002), which he litigated and successfully argued on appeal for PetSmart. The appellate court affirmed summary judgment for the national pet supply chain, finding "no likelihood of confusion even though the parties use the same mark for similar goods and services."
Mr. Crittenden has also served as counsel for the International Trademark Association as amicus curiae in key appellate cases, including:
- Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012) (recognizing trademark protection in Louboutin's contrasting "Red Sole" mark)
- Fleischer Studios v. A.V.E.L.A., 654 F3d 958, 97 USPQ2d 183 (9th Cir. 2011) (withdrawing ruling on "aesthetic functionality" of BETTY BOOP trademark)
- Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (establishing that heightened similarity is not required under the Trademark Dilution Revision Act of 2006)
Mr. Crittenden is experienced in all forms of alternative dispute resolution, and regularly serves as a mediator and neutral evaluator in copyright and trademark cases for the U.S. District Court for the Northern District of California and by private engagement.
He has been active in the International Trademark Association for nearly two decades, serving on its Board of Directors from 2006 to 2008, and has held a number of other leadership positions in the organization over the years. He chairs INTA's U.S. Amicus Subcommittee, is a member of its Trademark Mediators Network, and previously chaired its Emerging Issues Committee and Courts and Tribunals Subcommittee. He was also Editor-in-Chief of the INTA Bulletin, the association's twice-monthly report on trademark news to members worldwide.
A frequent speaker on intellectual property topics, Mr. Crittenden has lectured and participated in panel discussions for the American Bar Association, the Practising Law Institute, California Continuing Education of the Bar, the International Trademark Association and various industry and trade organizations.
From 1981 to 1983, Mr. Crittenden served as law clerk to the Honorable Joyce Hens Green of the U.S. District Court for the District of Columbia. He attended the University of California, Los Angeles, School of Law, where he was a member of the UCLA Law Review, and received a JD degree in 1981. He completed his undergraduate work at UCLA, where he received an AB degree in English in 1978.
- University of California, Los Angeles School of Law
- University of California, Los Angeles
AB English, 1978
- U.S. Court of Appeals, District of Columbia Circuit
- U.S. Court of Appeals, Ninth Circuit
- U.S. District Court, Central District of California
- U.S. District Court, District of Arizona
- U.S. District Court, District of Colorado
- U.S. District Court, Eastern District of California
- U.S. District Court, Northern District of California
- U.S. District Court, Southern District of California
- American Bar Association
- Association of Business Trial Lawyers
- International Trademark Association
- The Bar Association of San Francisco