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Ximena Solano Suarez

Attorney
Overview
Experience

Overview

Ximena Solano Suarez is an attorney in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office. 

Areas of Practice

Ms. Suarez specializes in patent and trademark protection and enforcement. She has worked on numerous patent and trademark litigation matters, including serving as co-counsel for a trademark, trade dress and copyright infringement case before the United States District Court for the Southern District of Florida.

She also advises clients on a variety of trademark issues, including U.S. and foreign intellectual property portfolio management, brand strategy, and licensing. She has particular expertise in the apparel, beauty, fashion, food and beverage, sporting goods and retail industries.

Ms. Suarez has considerable experience in drafting and negotiating contracts, such as distribution, franchise, joint venture, manufacturing, marketing, non-disclosure, private label agreements, sales, services, sponsorship and supply agreements.

Ms. Suarez also has experience as in-house counsel, as well as outside general counsel for companies in the food and beverage, beauty and apparel industries.

In addition, Ms. Suarez maintains an active pro bono practice. She is currently representing two clients in Special Immigrant Juvenile Status proceedings, and another client in an Asylum proceeding.

Experience

Trademarks:

  • Ms. Suarez represents clients in litigation and prosecution of domestic and foreign trademarks. She also provides opinions and counseling relating to trademark infringement and availability issues in the context of litigation and licensing.

License Agreements:

  • Represented U.S. sports apparel and equipment company in nonexclusive, copyright and trademark license agreements in Costa Rica and South America.
  • Represented a U.S. sports apparel and equipment company in license and distribution agreements in Europe and Japan.

Patent Litigation Experience:

  • INVT SPE LLC v. HTC Corp. et al., No. 2:17-cv-3740 (DNJ). Represents HTC in a seven-patent infringement action relating to alleged standard essential patents (SEPs) directed to the 2G EGPRS, 3G UMTS/WCDMA/HSPA, and 4G LTE standards. HTC has counter-claimed for breach of FRAND.
  • Evolved Wireless, LLC v. HTC Corp. et al., No. 1:15-cv-543 (D Del). Represents HTC in a five-patent infringement lawsuit relating to alleged SEPs directed to the 4G LTE standard. HTC has counter-claimed for breach of contract, alleging that Evolved Wireless failed to license its patents on FRAND terms.

Other Litigation Experience:

  • Citizens Equity First Credit Union v. San Diego County Credit Union, No. 92066165 (TTAB). Represents SDCCU in a trademark cancellation proceeding brought by CEFCU.
  • Cubic Transportation Systems, Inc. v. Matrix Transactional, LP, JAMS No. 1240022968. Represented Cubic in a breach of contract, fraud, misappropriation of trade secrets and violation of unfair competition arbitration proceeding against Matrix.