OUR ATTORNEYS >> JOHN C. "ROCKY" RAWLS III

rocky rawls

John C. Rawls III, Partner

713.888.2507
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With four decades of legal experience (25 practicing in California and 15 in Texas), Rocky Rawls' practice focuses on intellectual property—primarily trademark enforcement and brand protection, false advertising, copyright, and misappropriation of name and likeness claims. He has served clients in a variety of industries, including: advertising, food and beverage, luxury goods, restaurant, retail, telecommunications, software, entertainment, and apparel.

Before joining Baker Williams Matthiesen in 2011, Rocky was a partner at international law firms in Los Angeles and Houston.

Representative Matters

  • Louis Vuitton Malletier S.A.S. v. Sandra Ling Designs, Inc. (S.D. Tex. 2021). Co-counsel for plaintiff Louis Vuitton in trademark infringement and dilution case.
  • Royal Building Products (USA), Inc. and Royal Group, Inc. v. Royal Texan Homes, LLC (S.D. Tex 2021). Represented plaintiff (subsidiary of Westlake Chemicals) in trademark infringement matter regarding corporate logo.
  • TxDOT v. El T Mexican Restaurants, Inc.(TTAB 2020). Representing applicant for registration of DON’T MESS WITH TEX-MEX trademark in opposition proceeding brought by owner of DON’T MESS WITH TEXAS mark (matter still pending).
  • Soler v. The Coca-Cola Company (Fed. Cir 2020-2023). Successfully represented The Coca-Cola Company in appeals of various matters decided by the Trademark Trial and Appeals Board.
  • Agha Juice LLC v. Passion Delight, LLC (S.D. Tex. 2019). Obtained stipulated permanent injunction against use of “Agha Juice” trademark.
  • Ybarra Investments, Inc. v. Habagringo Corp. (S.D. Tex. 2016). Obtained settlement on behalf of GRINGO’S trademark against competitor operating under the name HABAGRINGO.
  • El T v. Anatex (S.D. Tex 2016). Represented El Toro restaurant chain in successful common law trademark infringement action against operator of “El Toro Loco” restaurant.
  • Let’s Gel, Inc. v. Louis Vuitton North America (W.D. TX 2015). Co-counsel for Louis Vuitton in case relating to alleged trademark infringement and dilution of LV’s “Epi” design.
  • 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.”
  • iolo technologies, LLC v. Symantec Corp., (C.D. Cal. 2012). Action against large public software company to enforce client’s rights in corporate logo.
  • 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.
  • 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.
  • IAC Search & Media, Inc. v. Amazon Technologies (Trademark Trial and Appeals Board 2009). Defended owner of “Askville.com” website in Oppositions to trademark applications brought by operator of “Ask.com” website. Opposing party agreed to dismiss all Oppositions, with prejudice.
  • 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.
  • Bell v. Starbucks Corporation, (S.D. Tex 2005). Prevailed at trial on trademark infringement claims against seller of “Star Bock” beer.
  • 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.
  • Starbucks Corp. v. Dwyer, (N. D. Cal. 2000). Obtained injunction against artist’s sale of alleged parody of Starbucks Siren Logo.
  • 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.
  • 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.
  • Various cases decided under ICANN Uniform Dispute Resolution Policy (“UDRP”). Cases were brought on behalf of major brand owners, including online retailers, telecommunications service providers and food/restaurant companies.

Noteworthy

  • Best Lawyers in America, Intellectual Property Law, 2007-2024
  • Texas' Best Lawyers (Best Lawyers in America), 2010-2021
  • Chambers USA: America's Leading Lawyers for Business, Intellectual Property, 2010-2014
  • Chambers USA Texas Spotlight, Intellectual Property, 2023
  • Southern California Super Lawyers (Thompson Reuters) 2004, 2005, and 2007
  • Texas Super Lawyers (Thompson Reuters) 2019-2023
  • Los Angeles Area’s Best Lawyers (Best Lawyers in America) 2006
  • Legal 500 U.S. Guide, Intellectual Property: Trademark Litigation 2007 and 2008
  • American Lawyer Media/Martindale-Hubbell, Top Rated Lawyer in Intellectual Property, 2013, 2014
  • “AV Preeminent” rating by Martindale (25 consecutive years)

Publications and Speeches

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

Education

  • J.D., The University of Texas School of Law, 1982
  • B.A., Columbia University, 1979

Federal Court Admissions

  • U.S. Courts of Appeal: Fifth, Ninth, and Federal Circuits
  • U.S. District Courts:
    • California: Central, Eastern, Northern, and Southern Districts
    • Texas: Eastern, Northern, Southern, and Western Districts
    • Washington: Western District

Affiliations

  • State Bar of Texas
    • Intellectual Property Section
  • American Bar Association
    • Intellectual Property Section
  • International Trademark Association
  • Century City Bar Association, Board of Directors, 1994-2000