John L. Slafsky

As a leading trademark specialist, Slafsky represents household-name clients in protecting their valuable marks. He recently notched major wins for Salesforce.com Inc. and, in Europe, for Impossible Foods Inc. in litigation with Nestlé S.A.

Other clients include Aurora, the Chan Zuckerberg Initiative, Denali Therapeutics Inc., Grail Inc., Hawaiian Airlines, Khan Academy, Kitty Hawk Corp., LinkedIn, Roblox Corp., the San Francisco Museum of Modern Art, Sequoia Capital, Spotify and Sprinkles Cupcakes.

For Golden State Warriors star Stephen Curry, Slafsky and his firm are IP counsel to Curry and his firm, SC30, which manages his brand partnerships, business investments and philanthropic initiatives.

“We advise on brand protection matters,” Slafsky said of his work for Curry. “We help enforce his rights. Curry is such an exceptional player that he has detractors who say he’s ruined the game by focusing on his long outside shots.”

“So he’s taken the criticism and turned it on its side with a product line featuring a ‘Ruin The Game’ logo,” Slafsky added. “It’s a great example of taking a negative and turning it positive.”

In the Impossible Foods litigation, Slafsky represented the maker of the popular plant-based Impossible Burger. When a potential business deal with Nestlé failed, the world’s largest food manufacturer opted to introduce a competing product it called the Incredible Burger. Impossible Foods objected; Nestlé changed the name in the U.S. to the Awesome Burger but refused to change the name in Europe.

Slafsky and colleagues worked with counsel in the Netherlands to file a trademark infringement suit at the District Court of The Hague and flew there last year just as the pandemic loomed.

“I was standing outside the courthouse doing elbow bumps with a group of European counsel in robes and frilly collars,” he said. “The proceedings were in Dutch. I was there for strategic purposes.”

“The law and practice there are more technical and formulistic, but my colleagues translated the story we had to tell through the prism of local rules,” Slafsky added. “We had to educate the judges on a product they were not familiar with.”

The Impossible Foods team successfully sought a preliminary injunction barring various Nestlé business entities from using the Incredible Burger name across the European Union while the lawsuit is pending. Impossible Foods Inc. v. Nestlé Nederland B.V., C/09/581242/HA ZA 19-1062 (The Hague Dist. Ct., filed Aug. 9, 2019).

“That injunction carries across 27 different countries, and we won it against a much-resourced defendant,” Slafsky said. A hearing on Nestlé’s appeal is set for June.

For Salesforce, Slafsky fought off efforts by a motivational speaker in Colorado seeking to build a brand around the Salesforce name.

He litigated a rare U.S. Patent and Trademark Office case in which the parties conducted full discovery, introduced expert witness testimony and obtained a ruling that the Salesforce.com Inc. name is legally “famous,” entitling it to broad protection.

“Salesforce feels strongly about protecting its brand, and we did,” Slafsky said.

— John Roemer