Michael Scott Metteauer

Partner
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 3026
Austin
United States
T:+1 512 536 3026
Michael Scott Metteauer

Michael Scott Metteauer

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Biography

Michael Metteauer's practice focuses on protecting clients' trademarks, with an emphasis on strategic counseling and enforcement involving famous brands, non-traditional trademark rights and internet issues. He has handled a wide range of matters, from clearing marks for new products to litigating federal and state trademark claims, primarily in federal court and before the Trademark Trial and Appeal Board. His client counseling is informed by his litigation experience, and he makes a point of becoming intimately familiar with clients' businesses and business objectives so that the advice he provides is cost-effective and consistent with those objectives. Some of his client relationships span two decades or more.

In addition to his client work, Michael has been active in the International Trademark Association (INTA), serving on the Board of Directors and in a number of other leadership positions. Through his work with INTA, he has made contacts around the world who are available to assist clients wherever they need trademark assistance.


Professional experience

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JD, with honors, The University of Texas at Austin, 1989
BS, with honors, Aerospace Engineering, The University of Texas at Austin, 1985

Michael is a member of the Texas Bar and is admitted to practice in the United States District Court for the Western District of Texas and the Courts of Appeals for the Eleventh and Federal Circuits. He is also licensed to practice before the United States Patent and Trademark Office.

  • Texas State Bar
  • US Patent & Trademark Attorney

Michael has represented clients in many industries, including pharmaceuticals, retail, food service, home improvement, healthcare, energy, telecommunications, commercial graphics, software, apparel, publishing and automotive.  Representative matters are listed below:

Transactional/Counseling/Prosecution:

  • Coordinated global clearance of name of multi-billion dollar joint venture
  • Coordinated national and global clearance of marks for multiple new product lines for multi-national manufacturer
  • Assisted client in revamping trademark usage guidelines for major consumer brand
  • Successfully blocked client's competitor from registering generic term through USPTO's letter of protest procedure
  • Assisted clients with due diligence on trademark issues in multiple major acquisitions
  • Represented clients in negotiations for various licensing arrangements, including licenses for products in the apparel, electronics, pharmaceutical and personal care fields
  • Advised clients on trademark issues relating to complex holding company structures


Enforcement:

  • Developed and implemented comprehensive policing strategy for internationally known trademark, including acting for client in successful lawsuits in Texas, California, Florida and Minnesota and numerous successful oppositions before the Trademark Trial and Appeal Board
  • Served as lead counsel in multiple litigations against former licensees and other operators of infringing retail businesses, resulting in consent judgments and settlements totaling hundreds of thousands of dollars (W.D. Tex., N.D. Oh., E.D. Wis., E.D. Mich.)
  • Obtained temporary restraining order and permanent injunction against operator of toll-free number corresponding to client's famous pharmaceutical trademark, despite numerous rulings for defendants in prior cases involving toll-free numbers (D. N. J.)
  • Served as lead counsel for national restaurant chain in successful trademark/trade dress action against competing restaurant (S.D. Miss.)
  • Obtained temporary restraining order and permanent injunction against use of client's trademarks in competitor's website source code and webpages, defeating claims of nominative fair use (S.D. Tex.)
  • Coordinated opposition, cancellation and infringement proceedings in over a dozen countries in global trademark dispute against multi-national defendant; obtained permanent injunction in U.S. proceedings (S.D.Fla.)
  • Served as lead counsel in successful defense of national signage franchisor in litigation alleging copyright violations based on use of symbols in yellow page advertising (S.D. Fla.)
  • Identified anonymous spammer impersonating client through website "sting" operation and obtained consent judgment (D. Minn.)
  • Served as lead counsel in defense of small online retailer against opposition by large national clothing chain, resulting in client's successful trademark registration (TTAB)
  • Obtained preliminary injunction and contempt finding against online electronics retailer, including broad injunctive relief based on "safe distance" rule (C.D. Cal.)
  • Obtained temporary restraining order and consent judgment against cybersquatter in pre-ACPA lawsuit (D. Minn.)
  • Obtained summary judgment disposing of plaintiff's trademark claims against medical device manufacturer (Texas District Court, San Antonio)
  • Established Eleventh Circuit rule of entitlement to appellate attorney fees based on willful infringement finding in district court, despite contrary precedent in other federal circuits
  • Successfully opposed motion for preliminary injunction against client's multi-colored combs, based on finding of functionality of alleged trade dress (D. Minn.)

Named one of the top trademark lawyers in the country by clients and peers: 

  • Chambers USA, Texas: Intellectual Property (Trademark & Copyright), Chambers & Partners, 2015 - 2017
  • The Best Lawyers in America, Best Lawyers, 2015 - 2020
  • Lawyer of the Year, Austin: Trademark Law, Best Lawyers, 2016
  • World Trademark Review 1000 - Texas: trademarks, Globe Business Publishing Ltd, 2013 - 2018
  • Who's Who Legal, trademarks, Law Business Research Ltd., 2007, 2009 - 2018
  • Trade Marks Practitioner, Expert Guides, 2004, 2009, 2012, 2014, 2018
  • Best of the Best USA - Trade Marks, Expert Guides, 2018
  • Legal 500 US, Intellectual Property: Trademarks: Litigation, The Legal 500, 2007, 2015 - 2019
  • Volunteer Service Award for the Advancement of the Association, INTA, 2008
  • Texas Super Lawyer, Intellectual property, Thomson Reuters, 2016 - 2019
  • Contributing Author, "Recent Developments in Intellectual Property Law – Trademarks," ABA PTC Section Newsletter, 1990 - 1995
  • Contributing Author, Patent Law Handbook, West Group (formerly Clark Boardman), 1991 - 1995
  • "TTAB Update and Implications of B&B Hardware, Inc. v. Hargis Industries, Inc. for Corporations," Intellectual Property Owners Association Annual Meeting, Chicago, Illinois, September 2015
  • "Think Big! Leadership Ethics and Personal Responsibility," International Trademark Association (INTA) Annual Meeting, Dallas, Texas, May 2013
  • "Advanced Dispute Resolution: Borders In A Borderless World,"  INTA Trademark Law and the Internet Forum, San Francisco, California, February 2009
  • "Making A Place at the Table For Trademarks" INTA Leadership Meeting, Orlando, Florida, November 2007
  • "ccTLDs – What Every Trademark Owner and Practitioner Should Know,"  INTA Trademarks in Cyberspace Forum, Arlington, Virginia, September 2003
  • "International Harmonization – Is Harmony Possible Without Harmonization?" INTA Annual Meeting, Amsterdam, The Netherlands, May 2003
  • "Trademark Owners in Cyberspace: White Knights or Cyber-Bullies," INTA Annual Meeting, Washington, D.C., May 2002
  • "Domain Names Around the World," INTA Trademarks in Cyberspace Forum, Chicago, Illinois, October 2001
  • "Trademark Dilution Law Update," National CLE Conference on Intellectual Property Law, Vail, Colorado, January 2000
  • "Trademarks in Joint Ventures," INTA Annual Meeting, Seattle, Washington, May 1999
  • "Drafting Licenses and Other Agreements" and "Web Tools," INTA Trademarks in Cyberspace Forum, Toronto, Ontario, October 1998
  • "Internet Issues Update," INTA Mid-Year Meeting, Puerto Rico, November 1997
  • "Defending Against Charges of Infringement Using Informal Discovery," INTA Annual Meeting, San Diego, California, May 1996
  • International Trademark Association (INTA)
    • International Amicus Committee (2014-2017)
    • Presidential Task Force, Governance (2015-2016)
    • Counsel (2012-2013)
    • Executive Committee, ex officio (2012-2013)
    • Leadership Development Committee, Chair (2010 - 2011)
    • Leadership Meeting Project Team (2007)
    • Long Range Planning Task Force (2006 - 2007)
    • Membership Services Committee
      • Leadership Development Subcommittee, Team Leader (2006 - 2009)
    • Board of Directors (2003 - 2005)
    • Mid-Year Meeting Project Team, Co-Chair (2000)
    • Strategic Planning Task Force (1996)
    • Trade Dress Committee, Former Chair
    • Issues and Policy Committee, Former Chair, Vice-Chair
    • Meetings Committee, Former Vice-Chair, Subcommittee Chair
  • American Intellectual Property Law Association (AIPLA)
  • Austin Intellectual Property Law Association
  • American Bar Association
  • Federal Bar Association
  • Travis County Bar Association
  • Austin Opera, Board of Trustees (2006 - 2017)
    • Executive Committee and Legal Counsel (2010 - 2017)
  • Armstrong Community Music School, Board of Trustees (2007 - 2010)
  • Austin Musical Theatre/Broadway Texas, Board of Directors (1996 - 2003)
  • Old West Austin Neighborhood Association