Bill Barber has devoted his legal career to the field of trademark law, focusing primarily on trademark litigation and policing, handling cases in federal courts across the U.S. and before the U.S. Patent and Trademark Office. 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 regularly assists clients with a wide range of trademark needs, including trademark policing strategies and programs, trademark clearance, and trademark prosecution.
Bill was appointed by United States Secretary of Commerce to serve on the U.S. Patent and Trademark Office Trademark Public Advisory Committee. He has testified before Congress regarding reforms to the federal trademark dilution statute and is a frequent author and speaker on various trademark and false advertising topics. He has been honored as Best Lawyers' Austin Lawyer of the Year for Trademark Law and Intellectual Property Litigation and heralded as a “legend in the field” by World Trademark Review 1000 (2014).
Bill received a B.S. in Chemical Engineering with highest honors from The University of Texas at Austin in 1984. He earned 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.
Texas Pig Stands, Inc. v. Hard Rock Cafe Int'l, Inc., 951 F.2d 684 (5th Cir. 1992) — Jury verdict of trademark infringement affirmed; case involved complex issues regarding genericness, incontestability, and res judicata.
Kellogg Co. v. Exxon Corp., 50 USPQ2d 1499 (W.D. Tenn. 1998), rev'd and remanded, 209 F.3d 562 (6th Cir.), cert. denied, 121 S.Ct. 340 (2000), on remand, 192 F. Supp. 2d 790 (W.D. Tenn. 2001) — Complex issues regarding laches, abandonment, and dilution.
CJC Holdings, Inc. d/b/a ArtCarved v. Wright & Lato, 979 F.2d 60 (5th Cir. 1992) — Standards for awarding reasonable attorney fees under the Lanham Act.
Westchester Media Co. v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000) — Involved clash of trademark rights v. First Amendment interests in magazine title.
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC. — The TTAB issued two precedential decisions in this case. In the first, 100 USPQ2d 1904 (TTAB 2011), the Board held that parties may treat discovery in TTAB proceedings differently than in other types of trademark litigation and that the burden and expense of e-discovery weighs heavily against requiring production in most TTAB cases. In the second precedential decision, 109 USPQ2d 1949 (TTAB 2014), the Board held that the term PRETZEL CRISPS is generic for pretzel crackers, giving controlling weight to dictionary definitions, use by the public including the media and third-parties in the food industry, and use by the defendant itself.