John M. "Jay" Neukom

Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates

Palo Alto

Trademark, IP litigation

Neukom, who leads Skadden's West Coast IP litigation practice, is often the lead counsel in high-stakes and closely-watched cases.

In one such case, Neukom secured a victory in September for Kia Motors America Inc. in the 9th U.S. Circuit Court of Appeals. Allstate Insurance Company v. Kia Motors America Inc. et al., 18-55164 (9th Cir., filed Sept. 6, 2019).

The carmaker had been sued for trademark infringement by Allstate Insurance Co. Allstate claimed Kia's "Drive Wise" moniker and technology were too similar to its "Drivewise" driver safety program. A federal jury issued an advisory verdict in favor of Allstate, finding there was likely consumer confusion between the two companies' products.

U.S. District Judge S. James Otero of the Central District of California disagreed, and found Allstate's "Drivewise" mark was conceptually weak and not closely related to Kia's products. Allstate appealed the decision in the 9th Circuit.

"It was a tough and interesting case because the advisory jury had gone against us. I had to argue to the 9th Circuit why they should disregard what an advisory jury of peers had found," he said. "And, this was two marks that were identical except for a single space."

Neukom had the benefit of Otero's "very thoughtfully written opinion" when he went before the 9th Circuit's three-judge panel, he said. In what he called "a common-sense approach," Neukom argued consumers would not confuse Allstate's free downloadable app with Kia's safety technology, built into its vehicles at substantial additional cost.

"That argument resonated," he said. "We heard from one or two judges on the panel that they had a hard time seeing that consumers would be confused."

The panel found Kia and its parent company did not infringe on Allstate's "Drivewise" trademark.

Neukom also has a strong sense of philanthropy. Along with his father and three sisters, he operates the Neukom Family Foundation, which supports a variety of social and educational organizations. He serves on the board of Children's Rights, a nonprofit Neukom calls "a do-gooding litigator's dream," because it uses litigation to fight violations of the rights of foster children.

"My father, who was also a lawyer, has always tried to teach his children, my three sisters and me, the importance of being useful citizens -- thinking about areas of society outside of your own sphere where you can engage and give back," he said.

-- Jennifer Chung Klam