Bill Barber

Member

Austin, TX

Bill Barber is a seasoned trademark attorney focusing in litigation and policing. He is widely known for his strategic handling of federal cases and domain name disputes. Bill has shaped trademark policies through leadership roles and congressional testimonies, earning him multiple national accolades.

Focus areas:

Litigation

Policing & Enforcement

Bill Barber specializes in trademark law, focusing primarily on litigation and policing, handling cases in federal courts across the U.S. and before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Experienced in all aspects of litigation, including jury and bench trials as well as appeals, Bill also handles domain name disputes through ICANN’s domain name dispute resolution policies. He also regularly assists clients with a wide range of trademark needs, including trademark policing strategies and programs, trademark clearance, and trademark prosecution.

Bill served as chair of the U.S. Patent and Trademark Office Trademark Public Advisory Committee, has testified before Congress regarding reforms to the federal trademark dilution statute, and is a frequent author and speaker on various trademark and unfair competition topics. He is a past president of the American Intellectual Property Law Association and a past chair of the State Bar of Texas Intellectual Property Law Section.

Bill has received a number of professional awards in his career, including Best Lawyers’ Austin Lawyer of the Year for Trademark Law (2012, 2015, 2017) and Intellectual Property Litigation (2013, 2016). Appearing in WTR 1000 since the inaugural edition, the publication awarded Mr. Barber Gold status nationally in both the “Prosecution and Strategy” and “Enforcement and Litigation” categories, and heralded him as a “legend in the field.” He has also been recognized in Chambers USA/Global, Expert Guides Trademark, Texas Super Lawyers, Trademark Law Experts, and Who’s Who Legal: Texas/Trademarks.

Bill received a B.S. in Chemical Engineering with highest honors from The University of Texas at Austin in 1984, and a J.D. with high honors from The University of Texas School of Law in 1987.

Last but not least, Bill is a devoted husband and father. Bill and his wife Melinda have three daughters, Robyn, Elyse, and Melynn.

United States Patent And Trademark Office, Trademark Public Advisory Committee (Tpac) (2013 – 2019)
- Chair (2018-2019)
- Vice Chair (2016-2018)
American Intellectual Property Law Association
- Fellows (2013 – Present)
- President (2011 – 2012)
- Executive Committee (2008 – 2012)
Education Foundation, Board Of Trustees (2008 – 2010)
- Secretary (2006 – 2008)
- Board Of Directors (2003 – 2006)
The Honorable Lee Yeakel IP Inn Of Court, Master Of The Bench
Austin Intellectual Property Law Association
State Bar Of Texas
- Intellectual Property Law Section, Chair (2003 – 2004); Council (1999 – 2005)
Texas Bar Foundation, Life Fellow
Austin Bar Foundation, Fellow
Austin Bar Association
American Bar Association
- Intellectual Property Law Section
Texas Intellectual Property Law Journal, Editor (1995 – 2004)
The Trademark Reporter, Editorial Board Member (1995 – 2010)
The University Of Texas School Of Law, Adjunct Professor (1999 – 2010)

WTR 1000 The World’s Leading Trademark Professionals, World Trademark Review (2011-Present)
Lawyer Of The Year For Trademark Law In Austin, Best Lawyers® By Woodward/White, Inc. (2012, 2015, 2017)
Lawyer Of The Year For Intellectual Property Litigation In Austin, Best Lawyers® By Woodward/White, Inc. (2013, 2016)
Chambers USA And Global (2006-Present)
Managing Intellectual Property – IP Stars (2014-Present)
500 Leading Litigators In America, Lawdragon (2022)
Best Of The Best USA Expert Guide, Legal Media Group (2020)
Trade Mark Expert Guide, Legal Media Group (2004-2020)
The Best Lawyers In America® By Woodward/White, Inc. (2008-Present)
Who’s Who Legal: The International Who’s Who Of Trademark Lawyers, Law Business Research Ltd. (2005-Present)
Texas Super Lawyers® List, A Thomson Reuters Service (2007-Present)
Top 50 Attorneys In Central & West Texas, Super Lawyers®, A Thomson Reuters Service (2017)
WIPR Leader, World IP Review, Newton Media Ltd. (2015-2020)
Trademark Law Experts, International Legal Media Group (2014, 2016)
State Bar Of Texas Intellectual Property Law Section, Chair Award (2001)
Who’s Who Legal: Texas, Law Business Research Ltd. (2007-2008)
Av Preeminent® Peer Review Rated*
- * Av®, Bv®, Av Preeminent® And Bv Distinguished® Are Registered Certification Marks Of Mh Sub I, Llc, Used In Accordance With The Martindale-Hubbell Certification Procedures, Standards And Policies.

The Trademark Modernization Act: New Options For Challenging Trademarks, State Bar Of Texas, Advanced Intellectual Property Litigation Webcast, July 8-9 2021
Advanced Tips For Ttab Practice, Midwest Intellectual Property Institute, Minneapolis, Minnesota, September 18, 2014
The Year In Trademark Law, Midwest Intellectual Property Institute, Minneapolis, Minnesota, September 18, 2014
Preliminary Injunctions: To Use Or Not To Use Might Haunt Your Case, Aipla Online Cle, March 5, 2014
The Limits Of Trademark Registrability: Acquired Distinctiveness, Branding And Corporate Agreements, Abpi Xxxii International Congress On Intellectual Property, São Paulo, Brazil, August 28, 2012
Update On U.S. Trademark Law, Aipla/Twpaa Joint Seminar, Taipei, Taiwan, April 23, 2012
Protection Of Geographic Designations In The United States, Aipla/Apram Joint Meeting, Paris, France, March 6, 2012
The Universe, Trademark And Deceptive Advertising Surveys: Law, Science, And Design, Chapter 3 (Aba Section Of Intellectual Property Law, 2012)
Trademark Fraud On The Uspto – A New Landscape, Aba-Cle Teleconference/Webcast, September 30, 2009
Patent, Trademark And Copyright: Hot Topics From 2008, Aipla Live Online Seminar, November 5, 2008
Year In Review – Trademarks, Aipla Annual Meeting, Washington, D.C., October 25, 2008
Trademark Dilution, 23rd Annual Institute On Intellectual Property Law, Hipla/Uhlc, Galveston, Texas, October 5, 2007
A Practitioner’s Perspective On Surveys Under The Tdra, Aipla Spring Meeting, Boston, Massachusetts, May 10, 2007
Trademark Dilution: New Angles After The Trademark Dilution Revision Act Of 2006 And Why You Should Care, Aipla Live Online Seminar, March 9, 2007
Proving Claims (And Defenses) Under The New Federal Trademark Dilution Statute, 20th Annual Intellectual Property Law Course, State Bar Of Texas, Dallas, Texas, March 1, 2007
Dumping The ‘Designation Of Source’ Requirement From The Tdra: A Response To The Alleged ‘Trademark Use Requirement In Dilution Cases’, Santa Clara Computer & High Technology Law Journal, Vol. 24, No. 3, At 559-70 (2007-08)
Amendments To Dilution Law In U.S., Aipla Spring Meeting, May 2006
The Trademark Dilution Revision Act Of 2005: Breathing Life Back Into The Federal Dilution Statute, Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. Xvi, No. 4, At 1113-42, Summer 2006
H.R. 683: Trademark Dilution Revisions Act, Fordham Intellectual Property, Media & Entertainment Law Journal Symposium, November 2005
A ‘Rational’ Approach For Analyzing Dilution Claims: The Three Hallmarks Of True Trademark Dilution, Aipla Quarterly Journal, Vol. 33, No. 1, At 25-72, Winter 2005
Recent Developments In Trademark Law: Reverse Domain Name Hijacking, Mutant Copyrights, And Other Mysterious Creatures Of The Trademark World, Texas Intellectual Property Law Journal, Winter 2004
Trademark Case Law Update, 41st Annual Program On Intellectual Property Law, Institute For Law And Technology Of The Center For American And International Law, November 2003
Panelist, Dastar: Narrowing Opinion, Broad Implications, Intellectual Property Lawcast, Vol. Ix, No. 7, June 2003
Uncovering Victoria’s Secret – Perspectives On Dilution From Litigators And The Bench, Aipla Mid-Winter Institute, January 2003
Trade Dress Protection: Wal-Mart, Traffix, And The Future, 40th Annual Program On Intellectual Property Law, Institute For Law And Technology Of The Center For American And International Law, November 2002
Recent Developments In The Use Of Dilution Surveys: Implications Of The Victoria’s Secret Case, 15th Annual Symposium On Intellectual Property Law And The Corporate Client, Corporate Counsel Center Of Northwestern University School Of Law, October 2002
Recent Developments In Trademark Law: Disrobing Trade Dress, Confounding Dilution, And Condemning Cybersquatting, Texas Intellectual Property Law Journal, Winter 2002
Trademark Law Update, IPo Annual Meeting, November 2001
Recent Developments In Trademark Law: Cybersquatters Run For Cover, While Copycats Breathe A Sigh Of Relief, Texas Intellectual Property Law Journal, Winter 2001
Trademark Legislation Update, 38th Annual Institute On Patent Law, Southwestern Legal Foundation, November 2000
Trademark Law Update, 16th Annual Institute On Intellectual Property Law, Hipla-Uhlc, October 2000
Trademark Law Update, Annual Convention Intellectual Property Law Section Seminar, State Bar Of Texas, June 2000
How To Do A Trademark Dilution Survey (Or Perhaps How Not To Do One), The Trademark Reporter, May/June 1999
How To Design Dilution Surveys, Aipla Annual Meeting, October 1998
Comparative And False Advertising, Professional Development, Intellectual Property Law For The Non-IP Specialist, State Bar Of Texas, March 1997
Treaties Bring Changes To U.S. Trademark Law And Practice, Aipla Quarterly Journal, Gatt Symposium Issue, Summer/Fall 1994
The Franchise Trademark Handbook – Developing And Protecting Your Trademarks And Service Marks, Aba Forum On Franchising, 1994
Recent Developments In Trademark Law, Texas Intellectual Property Law Journal, Fall 1994
Recovery Of Profits Under The Lanham Act: Are The District Courts Doing Their Job? The Trademark Reporter, March/April 1992
Proving Likelihood Of Confusion In The Fifth Circuit, 9th Annual Intellectual Property Law Institute, Hipla-Uhlc, October 1993
False Advertising: What Is It And What Are Its Consequences? Selected Topics For The New And Non-Specialist, Intellectual Property Law Institute, State Bar Of Texas, March 1993
Monetary Recovery In Trademark Cases, Aipla Annual Meeting, October 1990

Snyder’s-Lance, Inc. V. Frito-Lay North America, Inc., 414 F.Supp.3d 822 (W.D.N.C. 2019), Rev’D And Remanded, 991 F.3d 512 (4th Cir. 2021), On Remand, 542 F.Supp.3d 371 (W.D.N.C. 2021)
Frito-Lay North America, Inc. V. Real Food Pty Ltd., 906 F.3d 965 (Fed. Circ. 2018)
Frito-Lay North America, Inc. V. Princeton Vanguard, Llc, 109 U.S.P.Q.2d 1949 (Ttab 2014), Vacated And Remanded, 786 F.3d 960 (Fed. Cir. 2015), On Remand, 124 U.S.P.Q.2d 1184 (Ttab 2017)
In Re General Mills IP Holdings Ii, Llc, 124 U.S.P.Q.2d 1016 (Ttab 2017)
One World Foods, Inc. V. Stubb’s Austin Restaurant Co., 2016 Wl 3686877 (W.D. Tex. Oct. 25, 2016)
3m Co. V. Professional Gallery, Inc., 2014 Wl 3686877 (Ttab July 17, 2014)
Board Of Regents, The University Of Texas System V. Southern Illinois Miners, Llc, 110 U.S.P.Q. 2d 1182 (Ttab 2014)
In Re Bose Corp., 580 F.3d 1240, (Fed. Cir. 2009) (Counsel For Amicus Curiae Aipla)
Board Of Regents, The University Of Texas System, On Behalf Of The University Of Texas At Austin V. Kst Electric, Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008)
3m Co. V. Icuiti Corp., 2006 Wl 1579816 (D. Minn. 2006)
3m Co. V. Intertape Polymer Group, Inc., 423 F.Supp.2d 958 (D. Minn. 2006)
Ingram Micro Inc. V. Tessco Communications, Inc., 62 U.S.P.Q.2d 1861 (C.D. Cal. 2002)
Kellogg Co. V. Exxon Corp., 50 U.S.P.Q.2d 1499 (W.D. Tenn. 1998), Rev’D And Remanded, 209 F.3d 562, 54 U.S.P.Q.2d 1413 (6th Cir.),Cert. Denied, 121 S.Ct. 340 (2000), On Remand, 192 F. Supp. 2d 790, 59 U.S.P.Q.2d 1551 (W.D. Tenn. 2001)
Southeastern Louisiana Entertainment, L.L.C. V. Hollywood Entertainment Corp., 56 U.S.P.Q. 2d 1688 (E.D. La. 2000)
Westchester Media Co. V. Prl USA Holdings, Inc., 214 F.3d 658, (5th Cir. 2000)
3m Co. V. Beautone Specialties Co., Ltd., 82 F. Supp.2d 997, (D. Minn. 2000)
Quiksilver, Inc. V. Academy Corp., 1998 Wl 874929 (N.D. Tex. 1998)
3m Co. V. Taylor, 21 F. Supp. 2d 1003, (D. Minn. 1998)
3m Co. V. Dole, 1997 Ttab Lexis 125 (Ttab 1997)
All Video, Inc. V. Hollywood Entertainment Corp., 929 F. Supp. 262, (E.D. Mich. 1996)
Burger King Corp. V. Pilgrim’s Pride Corp., 22 U.S.P.Q.2d 1626 (S.D. Fla. 1992), Aff’D, 15 F.3d 166 (11th Cir. 1994)
Mdt Corp. V. New York Stock Exchange, Inc., 858 F. Supp. 1028, (C.D. Cal. 1994)
Cjc Holdings, Inc. D/B/A Artcarved V. Wright & Lato, Inc., 979 F.2d 60 (5th Cir. 1992)
Texas Pig Stands, Inc. V. Hard Rock Cafe Int’L, Inc., 951 F.2d 684, (5th Cir. 1992)