“Protecting your brands is the heart of my practice.” 

Having an extensive background in infringement litigation gives Carrie A. Johnson an edge when counseling clients in trademark clearance matters, whether that involves litigation, arbitration or methods to protect their IP.  For over 20 years she has helped clients protect and defend their most important assets and brands.  Ms. Johnson’s practice:

• concentrates in the areas of trademark, unfair competition, advertising and copyright law, with an emphasis on international and domestic portfolio management,

• involves trademark and copyright enforcement via arbitration, federal courts and proceedings before the Trademark Trial and Appeal Board (TTAB).

• includes negotiating and arbitrating domain name disputes under the Uniform Domain Name Dispute Resolution Policy. 

• addresses balancing the cost and effort to protect an asset in relationship to its value as clients may not wish to spend more on an asset than it may be worth.  This includes whether litigating infringement makes financial sense.

She has represented clients in various industries such as: 

• Building materials
• Pharmaceuticals
• Apparel
• Footwear
• Entertainment
• Communications
• Cosmetics
• Alcoholic beverages
• Cannabis and hemp

Because IP owners are better equipped to protect their rights when they understand available options and potential issues, Ms. Johnson educates them through speaking engagements and articles.

Before joining Eastman & Smith, Ms. Johnson worked for several law firms specializing in intellectual property law. 

As a member of Eastman & Smith, Ms. Johnson takes on managerial roles.  She currently is the chair of the Firm's Diversity and Inclusion Committee.

She and her husband reside in Sylvania with their two children.  Ms. Johnson enjoys spending time with her family, SCUBA diving and wake boarding.

Experience

Specific examples of Carrie A. Johnson's trademark, copyright and right of publicity infringement experience include:

• Kiss My Face v. PYR Less Group, LLC, Opposition No. 91209825, Trademark Trial & Appeal Board. Lead counsel for the opposer in trademark opposition proceeding, which was sustained in favor of the opposer after trial.
  
  
• Mor-Dall Enterprises, Inc. d/b/a Dark Horse Brewing Co. v. Dark Horse Distillery, LLC, Case No. 1:13-cv-915-RHB, U.S. District Court for the Western District of Michigan. Lead counsel for plaintiff brewing company in trademark infringement action. Obtained a jury verdict of willful trademark infringement and personal liability for the infringement.
  
  
• Audrey P. Gentieu v. Pearson Education, Inc., Case No. 3:11-cv-1946-JGC, U.S. District Court for the Northern District of Ohio. Lead counsel for plaintiff photographer in copyright infringement suit against international publishing company. Favorable settlement achieved after two years of negotiation, litigation and mediation.
  
  
• Securance Service, Inc. v. Securance Group, Inc., Case No. 3:11-cv-1366-JGC, U.S. District Court for the Northern District of Ohio. Successfully represented plaintiff insurance company as lead counsel in trademark infringement lawsuit.
  
  
• AAA Parking Inc. and Manuel Grossy v. Selig Parking, Inc., Case No. 1:06-cv-21147-AJ, U.S. District Court for the Southern District of Florida. Represented defendant as lead counsel in trademark infringement lawsuit filed by a former licensee. Favorable settlement achieved after mediation.
  
  
• Tommy Hilfiger Licensing Inc. v. Goody’s Family Clothing, Inc., Case No. 1:00-cv-1934-BBM, U.S. District Court for the Northern District of Georgia. Represented plaintiff Tommy Hilfiger as co-counsel. The Court granted plaintiff a permanent injunction, damages of $9,000,000, and award of attorney fees for trademark counterfeiting.
  
  
• Rosa Parks v. LaFace Records, 76 F.Supp. 2d 775, U.S. District Court for the Eastern District of Michigan (affirmed in part, revised in part, 329 F.3d 437 (6th Cir. 2003), certiorari denied, 2003 WL 22303348 (Dec. 8, 2003)). Lead counsel for LaFace Records and Outkast in a lawsuit brought by civil rights icon, Rosa Parks, for naming the Grammy nominated song “Rosa Parks.” The suit alleged trademark infringement, infringement of right of publicity, trademark infringement, defamation and various other state law claims. The matter was ultimately settled in 2005 after two days of mediation.
  
  
• Four E, LLC v. bin qin, Case No. 2070278, Forum Alternative Dispute Resolution. Successfully represented complainant in a domain name dispute proceeding where domain name was held hostage.   

Community/Professional Affiliations

• International Trademark Association
  • Trademark Office Practices Committee, USPTO Subcommittee
  • Non-Traditional Trademarks Committee ( past chair)
  • US Subcommittee for Non-Traditional Trademarks (past chair)
  • North American Global Advisory Council (member)
  • Advocacy Group Council (member)
• Toledo Intellectual Property Law Society (past president)
• Carly Cares (board member)

Honors & Awards

• Intellectual Property Trailblazer from National Law Journal, 2023

Spotlight

Events & Speaking Engagements

Articles