- Ohio, 2012
- U.S. District Courts:
-Northern District of Ohio
-Eastern District of Michigan
-Western District of Michigan
-Northern District of Georgia
University of Toledo, J.D., 2001
Miami University, B.A., 1997
“Protecting your brands is the heart of my practice.”
For nearly 20 years Carrie A. Johnson has helped clients protect and defend their most important assets and brands. Her practice concentrates in the areas of trademark, unfair competition, advertising and copyright law, with an emphasis on international and domestic portfolio management. Ms. Johnson also has extensive experience in trademark and copyright enforcement via arbitration, federal courts and proceedings before the Trademark Trial and Appeal Board, as well as negotiating and arbitrating domain name disputes under the Uniform Domain Name Dispute Resolution Policy.
She has represented clients in various industries such as:
- Building materials
- Alcoholic beverages
Having an extensive background in infringement litigation gives Ms. Johnson an edge when counseling clients in trademark clearance matters.
Balancing the cost and effort to protect an asset in relationship to its value is one of the recommendations Ms. Johnson will make as clients may not wish to spend more on an asset than it may be worth. This includes whether litigating infringement makes financial sense.
Ms. Johnson embarks on educational efforts through speaking engagements. Those who own intellectual property are better able to protect it when they understand what avenues are available to them and issues that may arise.
Before joining Eastman & Smith as a member, Ms. Johnson worked for several law firms that specialized in intellectual property law. Ms. Johnson earned her law degree from the University of Toledo as well as an undergraduate degree from Miami University.
She and her husband reside in Sylvania with their two children. Ms. Johnson enjoys spending time with her family, SCUBA diving and wake boarding.
Specific examples of Ms. 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.
Honors & Affiliations
- Toledo Intellectual Property Law Society (past president)
- Carly Cares (board member)
- International Trademark Association
- Non-Traditional Trademarks Committee (vice chair)
- US Subcommittee for Non-Traditional Trademarks (past chair)
- North American Global Advisory Council (member)
Publications & News
- May 13, 2022
- March 7, 2022
- October 8, 2021
- May 10, 2021
- Eastman & Smith IP Attorney Discusses the Conflict Between Protecting Trademarks and First Amendment RightsMay 10, 2021
- March 19, 2021
Events & Speaking Engagements
- December 2, 2022
- February 13, 2018
- Intellectual PropertyPerrysburg, OH, February 27, 2013
- Trademark, Intellectual Property and Technology LawToledo, OH, September 15, 2010
- November 10, 2021
- May 10, 2021
- May 19, 2020
- April 14, 2020