Carlo F. Van den Bosch

Carlo F. Van den Bosch is the former Practice Leader of the firm's Intellectual Property Practice Group, ranked in the top tier by U.S. News & World Report. He is a partner in the firm’s Orange County office.

Areas of Practice

Carlo has been profiled as one of California’s leading IP litigators and is recognized among the world's leading trademark professionals.  His practice bridges the contentious and non-contentious divide with one part of the practice often informing the other in terms of optimal legal strategy.

Carlo has prevailed in a number of landmark cases before trial and appellate courts, including the United States Supreme Court, where in 2015 he successfully argued a trademark matter to a unanimous decision.  His legal acumen has been lauded by peers and clients, who have described Carlo as a “versatile tactician” who “flexes broad IP knowledge to craft bulletproof strategies” and is “continually sought out for his creative, considered advice.”  In litigation matters, he has been lauded as a “courtroom virtuoso [with] piercing insight and incisive judgment.”

Carlo particularly enjoys the breadth of industry experience that his clients afford.  Whether it be apparel and retail, healthcare and life sciences, software and technology, financial services, or consumer products, Carlo draws from a host of experiences in his decades-long practice to contribute tailored strategies for building robust portfolios, always with an eye on the added-value proposition, and an enforcement approach that focuses on outcome and efficiency.  He also regularly provides intellectual property due diligence advice in corporate M&A matters, which enhances his approach to portfolio value.

Carlo was born in Belgium and remains an avid supporter of its national soccer team.  He now lives in Orange County, California with his wife, who also litigates, and their three teenage children.

Experience

Litigation

Mr. Van den Bosch handles high-stakes IP litigation across many industries.

Notable Cases 

Mr. Van den Bosch successfully argued before the United States Supreme Court and obtained a unanimous decision on behalf of his client in a trademark infringement matter where the plaintiff sought damages in excess of $40 million. Hana Financial v. Hana Bank.  574 U.S. 418 (2015).  The Supreme Court resolved a Circuit split involving the doctrine of trademark tacking in its first substantive trademark decision in nearly a decade.  

Mr. Van den Bosch successfully argued the same matter before the Ninth Circuit Court of Appeals, 735 F.3d 1158 (9th Cir. 2013), after obtaining a unanimous jury verdict and final defense judgment in 2011 on three independent theories at trial—priority, laches, and unclean hands.  Hana Financial, Inc. v. Hana Bank (C.D. Cal. Case No. CV07-1534-PA).

In Wyatt Technology Corp. v. Smithson, et al. (C.D. Cal. Case No. CV05-1309 DT), Mr. Van den Bosch represented the defendants in a high-tech intellectual property dispute involving dynamic light scattering technology used to measure the size and distribution of molecular particles in liquid solutions. Mr. Van den Bosch prevailed on summary judgment and secured an award of attorneys’ fees and punitive damages for his clients.

In Taylor Made Golf Company, Inc. v. MJT Consulting Group, 265 F. Supp. 2d 732 (N.D. Tex. 2003), Mr. Van den Bosch successfully represented the plaintiff against a distributor of counterfeit merchandise.

Mr. Van den Bosch prevailed in a federal jury trial on behalf of the plaintiff in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), a seminal case in the area of domain name and meta tag infringement. The jury awarded actual and punitive damages, and the court awarded attorneys’ fees.

Other representations include the successful defense of Disney and ABC in an infringement suit filed by the owner of comic strip characters, the representation of ESPN in a trademark and copyright infringement suit involving a reality television program, the representation of Fox in a trademark infringement suit over the name of one of its television networks, and the representation of The Gator Corporation in multidistrict trademark litigation involving pop-up Internet advertising.

Global Intellectual Property Portfolio Management

Mr. Van den Bosch manages an experienced trademark team that handles the global protection and enforcement of intellectual property portfolios. He designs long-term strategies for securing and maintaining maximum protection and value of intellectual property assets.

Transactional Experience

Mr. Van den Bosch's experience extends to corporate and transactional matters, including the negotiation and preparation of intellectual property and technology agreements.

Honors

Leading Trademark Professional, Enforcement and Litigation - California, World Trademark Review 1000, 2013-2024

Litigation Star, Benchmark Litigation, 2022-2024

Best Lawyers in America (Trademark Law), Best Lawyers, 2022-2024

Intellectual Property Trailblazer, The National Law Journal, 2016

IP Star, Managing IP Magazine, 2016-2022

Intellectual Property, MVP, Law360, 2015

Intellectual Property, Legal 500, 2013, 2015-2018

Top IP Litigator, Daily Journal, 2012, 2015

75 Leading IP Litigators, Daily Journal, 2010

Rising Star: Top 10 IP Attorneys Under 40, Law360, 2010

Martindale-Hubbell - AV Peer Review Rating

Southern California Super Lawyers, Intellectual Property Litigation, 2005-2016, 2018-2024

Articles

Intellectual Property Law Blog Posts

• "U.S. Supreme Court Rules that Profits Available Even from Non-Willful Trademark Infringers," April 23, 2020

Media Mentions

Events

Memberships

Member, Intellectual Property, Science and Technology Sections, American Bar Association

Member, Intellectual Property Law Section, State Bar of California

Member, American Intellectual Property Law Association (AIPLA)

Member, International Trademark Association (INTA)

Member, Orange County Bar Association