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Klemchuk Kubasta LLP is a business, technology, and innovation focused law firm in Dallas, Texas providing patent, trademark,
trade dress, copyright, and trade secret services, including litigation, licensing, prosecution, and other intellectual property counseling.
KELLY J. KUBASTA | SENIOR PARTNER
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PHONE
214.367.6000

FAX
214.367.6001
OFFICE
8150 North Central Expy
10th Floor
Dallas, Texas 75206
PRACTICE AREAS

Intellectual property litigation; Business and commercial litigation; Intellectual property licensing and counseling; Patent, trademark, and copyright prosecution; Local counsel for IP and commercial litigation matters; Virtual IP Counsel



EDUCATION

Technical Degree

Mechanical Engineering

J.D., University of Texas School of Law, 1997

B.S. Mechanical Engineering, University of Texas at Austin, 1993

 

 









PEOPLE
Shannon W. Bates
Kirby Drake
Casey L. Griffith
James E. Davis
Kelly J. Kubasta
Darin M. Klemchuk
Remy M. Davis
Kelsey Weir Johnson
Austin Champion
Todd Basile
Sita Desai


 

My practice encompasses a wide array of intellectual property, with particular emphasis on patent, trademark, and trade dress litigation and licensing.  My litigation experience, advising both plaintiffs and defendants, has included infringement issues involving trademarks/service marks, product trade dress, patents, and copyrights, as well as breach of contract, unfair competition, trade secret, and antitrust issues.  

 

Representing clients whose products and services cover a broad range of industries – including apparel, consumer electronics products, energy exploration devices, medical devices, automotive components, architectural designs, and others – I have substantial experience in Federal Court, both at trial and through appeal, as well as in Texas state court.  I have further represented clients in mediations to resolve disputes both before and during litigation.

 

Also skilled in strategic portfolio management, I advise clients as to the most effective methods of protecting and leveraging their intellectual property assets.  In doing so, I have drafted dealer/franchisee agreements, negotiated software development and licensing agreements, constructed Internet e-commerce policies, and resolved domain name disputes through ICANN. I am a registered patent attorney and have prepared and prosecuted both utility and design patents in various fields, including mechanical and electronic devices, industrial equipment, telecommunications, optics, software, and business methods.

 

PROFESSIONAL ACTIVITIES

Intellectual Property Section of State Bar of Texas:

Chair – Ethics and Unauthorized Practice Committee – 2006-2008

Member – 1997-Present

American Intellectual Property Law Association – 1997-Present

Dallas Association of Young Lawyers – 1997-Present 

Advanced Negotiation and Mediator Skills Training (Abrams Mediation) – 2004

Teaching Quizmaster, University of Texas School of Law – 1995-1996

 

PUBLICATIONS

Co-author, "Proactive Approaches to the IP Licensing Process”, Intellectual Property Licensing Strategies, 2011 ed.: Leading Lawyers on Educating Clients, Drafting Licensing Agreements, and Resolving Disputes (Inside the Minds).  (West, Aspatore Books 2010) 

 

ADMITTED TO PRACTICE
State of Texas (1997)
Supreme Court of Texas (1997)
U.S. Patent and Trademark Office (1998)
U.S. Court of Appeals:

Federal Circuit (1998)

Fifth Circuit (2005)
U.S. District Court:

Northern District of Texas (1998)

Southern District of Texas (1999)

Eastern District of Texas (2004)

District of Colorado (2005)

Western District of Texas (2008)

Western District of Michigan (2011) 

 

PROFESSIONAL HISTORY

Klemchuk Kubasta LLP – 2009-present

Sidley Austin LLP – 1997-2005

Hitchcock Evert LLP – 2006-2009

 

PROFESSIONAL HISTORY

In my spare time, I enjoy spending time with my wife Britnee, my 3-year-old son Jamie, and my infant daughter Averee. I also am an avid college sports fan, an occasional golfer, and a (lapsed) weekend warrior runner and biker.  My most recent hobby is attempting to master the art of grilling and smoking on the backyard grill.

 

 

 


SELECT CLIENT REPRESENTATIONS

Representation of clients in patent-infringement litigation involving golf GPS devices, parking security systems, water filter technology, consumer retail products, downhole oilfield instruments, plasma television displays, and many other technologies

Representation of client involved in trademark infringement, misappropriation of confidential information and trade secrets, breach of non-competition agreement, breach of fiduciary duty, and business disparagement litigation, including defending against temporary restraining order and temporary injunction

 

Representation of clients involved in trade dress infringement, trademark infringement business disparagement, and tortious interference litigation, including obtaining and defending against preliminary injunctions

Representation and counseling of clients involved in strategic licensing and enforcement campaign for patents, trademarks, and copyrights

 

Representation and counseling of clients involved in development and protection of software, including ownership, licensing, and copyright issues

Counseling start-up and small company clients regarding intellectual property protection and assets

Preparation and prosecution of patent applications for clients involving a variety of technologies, including business methods, software, medical devices, mechanical apparatus, industrial packaging systems, laser marking processes, and various consumer goods

Preparation and prosecution of trademark and copyright registration applications, including trademark portfolio management and branding strategies

 

Serving as local counsel to out of state parties involved in patent, trademark, trade dress, copyright, IP, and related commercial disputes in state and federal courts in Dallas, Texas and the Northern and Eastern District of Texas federal courts

 

I also offer to serve as Virtual General Counsel and Virtual IP Counsel for companies that require in-house counsel but have not yet grown to that level