David Martinez

Martinez represents U.S. and international clients in IP and other areas of litigation. His clients range from individuals to start-ups to Fortune 100 companies, and he serves as outside general counsel to small- and mid-size businesses. He is a member of the firm’s executive board, a member of the firm’s diversity committee and he is the pro bono chair of Robins Kaplan’s Los Angeles office.

“I’ve handled copyright, trademark and trade secret disputes in a number of industries for the last 15 years on behalf of plaintiffs and defendants,” Martinez said. “I enjoy the copyright and trademark practice, as the law is quite intuitive and the cases often involve interesting facts.”

He represents Yonder Global Inc., a travel booking site that aims to connect visitors with natural world experiences through agricultural lodging on farms and vineyards.

“The company hired me to craft and execute a strategy to perfect its Yonder trademark portfolio,” Martinez said.

“We were able to overcome several USPTO office actions that had rejected Yonder’s trademark applications, we obtained certain rights from a third party through a complex assignment and cross-licensing agreement, and we prevailed in a Uniform Domain Name Dispute Resolution Policy arbitration brought by another third party,” he added.

In the domain name dispute, a complainant sought transfer to it of the yonder.com name.

Martinez fended off the transfer and retained the name for his client in a unanimous decision in January 2020. Yonder Inc. v. Yonder Global Inc., FA191100 1871167 (UDRP, filed Nov. 25, 2019).

“The panel of three arbitrators panel ruled unanimously in the client’s favor and relied heavily on our reasoning and arguments,” Martinez said. “We continue to protect and prosecute Yonder’s trademark portfolio in the United States and worldwide.”

Martinez’ work in the fashion industry includes representing brands and retailers.

In one recent matter, a competitor sent his client a cease and desist letter threatening to bring a federal trademark infringement lawsuit, and also brought an opposition before the USPTO’s Trademark Trial and Appeal Board to tie up the client’s efforts to register its trademarks.

“The client asked me for options, and I proposed that it go on the offensive and file a lawsuit against the competitor for declaratory judgment of non-infringement,” Martinez said. “The client liked this aggressive approach, and it worked well.” Hair By Samuel LLC v. Samuel Ethnobotanics LLC, 20-CV03296 (C.D. Cal., filed April 8, 2020).

“We forced the competitor to withdraw its infringement claims, as well as its Trademark Trial and Appeal Board opposition,” Martinez said.

In a copyright infringement case, Martinez represented a client sued over a fabric design used in women’s clothing.

“I conducted a meticulous investigation in the United States and China to try to establish that the design in question was sold in commerce before the plaintiff claimed to have conceived it,” he said. “I was ultimately able to piece together the facts that we needed, with substantial corroborating evidence.”

As a result, the plaintiff dismissed the complaint. Meridian Textile Inc. v. Ross Stores Inc., 20-CV11737 (C.D. Cal., filed Dec. 29, 2020).

— John Roemer