John “Jay” Neukom

Neukom leads Skadden, Arps, Slate, Meagher & Flom and Affiliates’ West Coast IP litigation practice. He joined the firm in February 2018 in a lateral move from Quinn Emanuel Urquhart & Sullivan LLP, where he was chairman of its trade secrets practice group.

“Now after 14 months, I’m a grizzled Skadden veteran,” he laughed.

In August, he won a preliminary injunction barring a competitor of client Telegram Messenger Inc. from using the name “gram” for its cryptocurrency. Senior U.S. District Judge Charles R. Breyer of San Francisco ruled that Telegram had established priority rights to the mark.

“The case presented an interesting situation,” Neukom said. “It was undisputed that the defendant had filed [with the U.S. Patent and Trademark Office] an intent to use the term before we did. So we had to argue we had a common law right to the name because we had used the mark in commerce under trademark law.”

Neukom demonstrated that Telegram had collected $1.5 billion from purchasers of its own gram-branded cryptocurrency. Telegram Messenger Inc. v. Lantah LLC, 18-CV02811 (N.D. Cal., filed May 11, 2018).

Lantah LLC disputed the result before the 9th U.S. Circuit Court of Appeals. Neukom argued the case before a three-judge panel in March. “It was an active panel,” he said. “We are hopeful — fingers crossed, throwing salt over our shoulder, not walking under any ladders.” Telegram Messenger Inc. v. Lantah LLC, 18-16695 (9th Cir., filed Sept. 7, 2018).

Also last August, Neukom served as lead counsel for environmental remediation services client Thomas Scranton, the head of Accuworx West, in a heated trade secrets dispute with direct competitor Patriot Environmental Services Inc.

Neukom defeated Patriot’s TRO and preliminary injunction request at the start of the case. Patriot then dropped its trade secret claims entirely. The case remains ongoing on tort and contract claims. Patriot Environmental Services Inc. v. Thomas Scranton, BC716929 (L.A. Super. Ct., filed Aug. 6, 2018).

“We came in on short notice, pulled an all-nighter, stopped the TRO and drastically changed the nature of the case,” Neukom said.

He also represents Intel Corp., Fortinet Inc., SutroVax Inc. and the Miron family of Greenwich, Connecticut, for whom he secured a total judgment of $2 million — including attorney fees — in a contract dispute in December.

— John Roemer