MARK D. NIELSEN is an experienced litigator and partner at Cislo & Thomas LLP. His practice focuses on all aspects of intellectual property, particularly litigating patents, trademarks, and copyrights. Mark is part bulldog and part bloodhound, and leaves no stone unturned in his efforts to advance his clients’ interests. He has been an author on numerous briefs that have prompted favorable decisions for clients, and intimately involved in many litigations resulting in favorable outcomes.
Mark’s litigation practice has covered a wide variety of technologies and subject matter, including photographs of Marilyn Monroe (copyright), flip-top calculators (patent), automotive radiator flushers (patent), internet software related to previewing images of hyperlinks in search results (patent), blender attachments (patent), highly ornamented furniture (design patent and copyright), Asian hot sauce (trademark and trade dress), and dog chew toys (patent) to name a few.
Mark has litigated in federal courts throughout the U.S., including in California, Texas, Florida, Virginia, Michigan, Minnesota, Illinois, New Jersey, New York, Delaware, Colorado, Washington and elsewhere.
Mark has also had opportunity to appear before the United States Court of Appeals for the Federal Circuit. In fact, it is believed that Mark argued the first post-KSR obviousness appeal in the Federal Circuit, which he won.
Mark also has experience prosecuting patents, trademarks, and copyrights before the United States Patent and Trademark Office and United States Copyright Office, and has been heavily involved in enforcement of our clients’ intellectual property rights.
University of Southern California, B.S., cum laude, Biological Sciences (1992)
University of Washington, Ph.D., Pharmacology (1997)
Loyola Law School, J.D. (2000)
Bar Admissions: California; Texas; U.S. Patent and Trademark Office
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
Central District of California
Eastern District of California
Northern District of California
Eastern District of California
Eastern District of Texas
Northern District of Texas
Southern District of Texas
Eastern District of Michigan
District of Colorado
Memberships: Federal Bar Association; Provisors
SELECTED COURT DECISIONS:
Frontier Astronautics, LLC v. Frontier Aerospace Corp., Case No. 19-cv-02186-RM-MEH (D. Colo. 2020) (representing Frontier Aerospace Corp.): Frontier Aerospace Corp. moved to dismiss a trademark infringement case brought in the District of Colorado for lack of personal jurisdiction. Initially, the Magistrate Judge issued a Recommendation to dismiss the matter for lack of personal jurisdiction based on Frontier Aerospace’s limited and unrelated contacts with the District of Colorado. On review by the District Judge based on the plaintiff’s objections to the Magistrate Judge’s Recommendation, the dismissal was upheld, focusing on the unreasonableness of haling Frontier Aerospace into court in Colorado.
Automotive Racing Products, Inc. v. Oceania International, LLC and Alexander Yebo Chen, Case No. 8:19-cv-00088-AG-KES (C.D. Cal. 2019) (representing Automotive Racing Products, Inc.): Automotive Racing Products, Inc. (“ARP”) sued Oceania International, LLC and Alexander Yebo Chen for counterfeiting, trademark infringement, and unfair competition in relation to what ARP believed to be the defendants’ sales of a counterfeit version of ARP’s Ford 6.0L Powerstroke Diesel Head Stud Kit on Amazon.com. Facing the potential for stiff penalties for counterfeiting, Cislo & Thomas LLP negotiated a favorable settlement on behalf of ARP that, among other things, vindicated the validity and enforceability of ARP’s trademark rights and resulted in a permanent injunction against defendants having any further dealings in ARP-branded products.
Advanced Steel Recovery, LLC v. X-Body Equipment, Inc. et al., 271 F. Supp. 3d 1172 (E.D. Cal. 2017). Advanced Steel Recovery, LLC (“ASR”) (represented by Cislo & Thomas LLP) sued the defendants for patent infringement alleging that certain technology to load scrap or other materials into sea containers infringed ASR’s patent. Defendants moved to dismiss ASR’s first amended complaint and/or moved for summary judgment, and for sanctions. Defendants argued that the patent claims asserted in the case contained certain language that was not adequately supported by ASR’s predecessor patents such that that asserted patent claims were not entitled to an earlier effective filing date. As a result, so Defendants argued, ASR’s asserted patent claims were invalid because the accused product pre-dated the effective filing date of the application for ASR’s asserted patent. The Court ruled in ASR’s favor, finding that ASR has sufficiently pled a claim for patent infringement, that genuine disputes of material fact existed to preclude summary judgment, and that sanctions were unwarranted.
Automotive Racing Products, Inc. v. Mission Trading Company, Inc., Case No. 2:16-cv-09348-MWF-JEM, U.S.D.C., Central District of California, June 2017. Automotive Racing Products, Inc. (“ARP”) (represented by Cislo & Thomas LLP) sued Mission Trading Company, Inc. (“MTC”) for trademark infringement and unfair competition alleging, among other things, that MTC admitted trademark infringement by filing a use-based federal trademark application for “ARP” in connection with various automotive products, goods for which ARP has been well-known for many years. Cislo & Thomas LLP negotiated a favorable settlement on behalf of ARP that resulted in a permanent injunction barring MTC from having any further dealings in ARP-branded automotive products, and barring MTC from using ARP’s product designator, 250-4202, in connection with any automotive products.
Automotive Racing Products, Inc. v. Matt Kay aka Matthew Scott Kriegsfeld et al., Case No. 3:15-cv-01928-H-WVG, U.S.D.C., Southern District of California (2016) Automotive Racing Products, Inc. (“ARP”) (represented by Cislo & Thomas LLP) sued Matt Kay aka Matthew Scott Kriegsfeld and SD Mailbox Holdings, LLC for counterfeiting, trademark infringement, and unfair competition in relation to what ARP believed to be the defendants’ sales of a counterfeit version of ARP’s Ford 6.0L Powerstroke Diesel Head Stud Kit. After taking extensive discovery from the defendants, and with defendants facing the potential for stiff penalties for counterfeiting, Cislo & Thomas LLP negotiated a favorable settlement on behalf of ARP that, among other things, vindicated the validity and enforceability of ARP’s trademark rights and resulted in a permanent injunction against defendants having any further dealings in ARP-branded products.
Standup Paddle Sports, LLC v. Focus Surfboards, Inc., U.S.D.C., Central District of California, Case No. CV 15-8467 JAK-JC. Standup Paddle Sports, LLC (“SUP”), based in Santa Barbara, California, sued Focus Surfboards, Inc. (“Focus”) for various violations of the Lanham Act, unfair competition, fraud, and breach of contract. The complaint alleged that Focus covered over, or allowed to be covered over, SUP’s trademarks and logos on the standup paddle board used by Mo Freitas in a standup paddle board racing competition in Idaho that he won. This obscuring of SUP’s trademarks cost SUP valuable publicity. SUP (represented by Cislo & Thomas and co-counsel David Tappeiner and Mark DePaco of Fell, Marking, Abkin, Montgomery, Granet & Raney LLP) forcefully stated SUP’s claims in the complaint, and aggressively pursued early discovery in the case, resulting in a favorable settlement on behalf of SUP before litigation costs began to dramatically escalate.
Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al., 68 F. Supp. 3d 1170 (C.D. Cal. Dec. 12, 2014) (representing Amini Innovation: in product configuration trade dress infringement case, Amini Innovation successfully opposed Defendants’ motion for summary judgment. The court denied Defendants’ motion on all grounds).
Amini Innovation Corporation v. McFerran Home Furnishings, Inc. et al., 2014 U.S. Dist. LEXIS 93477 (C.D. Cal. July 9, 2014) (representing Amini Innovation: In its complaint for copyright and design patent infringement, Amini Innovation alleged that the infringements were willful based, in part, because of the defendants’ past history of infringing Amini’s and others’ intellectual property rights related to furniture. The defendants filed a motion to strike such allegations claiming that such matter was, in the language of Fed.R.Civ.P. 12(f) immaterial and impertinent. The Court denied the defendants’ motion).
Urban Home, Inc. v. Cordillera Investment Company, LLC, 2014 U.S. Dist. LEXIS 105804 (C.D. Cal. June 19, 2014) (representing Urban Home: Plaintiff Urban Home, Inc. filed an action for trademark infringement, unfair competition, and trademark dilution against Cordillera Investment Company, LLC in connection with Cordillera’s use of the name “Urban Home” online and in video advertisements in what Urban Home alleged was a confusingly similar manner. The Court denied Cordillera’s motion to dismiss under Fed.R.Civ.P. 12(b)(6), which asserted that the case was not ripe for adjudication, and that it is a good faith remote junior user under the Tea Rose-Rectanus doctrine).
Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al., 300 F.R.D. 406 (C.D. Cal. May 19, 2014) (representing Amini Innovation/Jane Seymour: in product configuration trade dress infringement case, defendants served a deposition subpoena on the famous actress Jane Seymour. The court quashed the subpoena finding that the defendants did not adequately demonstrate that they had sought the discovery in question from the plaintiff or that they could not obtain the discovery in question from the plaintiff, as opposed to Ms. Seymour, and that the burden for Ms. Seymour to comply with the subpoena would be great).
Amini Innovation Corp. v. McFerran Home Furnishings, Inc. et al., 2014 U.S. Dist. LEXIS 13342 (C.D. Cal. Jan. 21, 2014) (representing Amini Innovation: in a copyright and trade dress infringement case, court struck affirmative defenses and an attempt by Defendants to reserve rights to plead other defenses).
Surface Supplied, Inc. v. Kirby Morgan Dive Systems, Inc., 2013 U.S. Dist. LEXIS 171858 (N.D. Cal. Dec. 5, 2013) (representing Kirby Morgan: in a declaratory judgment/trademark case, court granted motion for leave to file amended counterclaim to add false advertising claim and additional defendants).
Surface Supplied, Inc. v. Kirby Morgan Dive Systems, Inc., 2013 U.S. Dist. LEXIS 143478 (N.D. Cal. Oct. 3, 2013) (representing Kirby Morgan: in a declaratory judgment/trademark case, court dismissed all 21 of Surface Supplied’s defenses to Kirby Morgan’s counterclaims, and dismissed Surface Supplied’s counterclaims-in-reply for antitrust violations).
EDCO Plastics, Inc. v. Allynce, Inc. et al., 2013 U.S. Dist. LEXIS 117259 (C.D. Cal. July 11, 2013) (representing Dispensing Dynamics International (DDI): court awarded DDI the full amount of its attorneys’ fees and costs after successful dismissal of all claims; court also stated counsel’s hourly rates were reasonable).
COA, Inc. v. Xiamei Houseware Group Co., Inc., 2013 U.S. Dist. LEXIS 74768 (W.D. Wash. May 28, 2013) (representing COA, Inc.: In a case alleging trademark infringement, false designation of origin, and related claims in which the defendant was improperly associating with the plaintiff’s product detail pages on Amazon.com, plaintiff issued a subpoena to non-party Amazon.com seeking documents and a deposition from Amazon.com. Amazon.com filed a motion to quash the subpoena on a variety of grounds, which was granted-in-part and denied-in-part by the Court. Plaintiff was permitted to take Amazon.com’s deposition).
World Trading 23, Inc. v. EDO Trading et al., 2013 U.S. Dist. LEXIS 58949 (C.D. Cal. Apr. 24, 2013) (representing World Trading: court denied Defendants’ motion for judgment on the pleadings based on release in settlement agreement between parties in prior litigation, and allowed World Trading’s copyright infringement claim to go forward).
EDCO Plastics, Inc. v. Allynce, Inc. et al., 2013 U.S. Dist. LEXIS 57541 (C.D. Cal. Mar. 18, 2013) (representing Dispensing Dynamics International (DDI): claim against DDI for fraud in connection with sales of patent and other assets dismissed for lack of subject matter jurisdiction; breach of contract claim against DDI previously dismissed for failure to state a claim).
Surefire, Inc. v. Casual Home Worldwide, Inc. et al., 2012 U.S. Dist. LEXIS 88372 (S.D. Cal. June 26, 2012) (representing Defendants: in a patent infringement case involving a U.S. distributor and Chinese manufacturer as defendants, court quashed service on Chinese manufacturer for failure to serve authorized representative of Chinese manufacturer with summons and complaint).
Prototype Productions, Inc. v. Reset, Inc., 2011 U.S. Dist. LEXIS 150666 (E.D. Va. Oct. 14, 2011) (representing Reset: Magistrate Judge found personal jurisdiction lacking and recommended that the court transfer the case to the Central District of California where Reset is located; District Judge overruled Plaintiff’s objections to Magistrate Judge’s recommendations and ordered the transfer, 844 F. Supp. 2d 691 (E.D. Va. 2012)).
Amini Innovation Corp. v. KTY International Marketing, Inc. et al., 768 F.Supp.2d 1049 (C.D. Cal. 2011) (representing Amini Innovation: court entered default judgment on copyright and design patent infringement claims in favor of Amini Innovation in excess of $175,000).
SDS Korea Co., Ltd. v. SDS USA, Inc. et al., 732 F. Supp. 2d 1062 (S.D. Cal. 2010) (representing Defendants: in case including patent and trademark infringement claims, court granted Defendants’ motion to dismiss for lack of personal jurisdiction and improper venue, and denied Plaintiff’s request for jurisdictional discovery).
Sunbeam Products, Inc. v. Hamilton Beach Brands, Inc. et al., 727 F. Supp. 2d 470 (E.D. Va. July 22, 2010) (representing Homeland Housewares: court granted Homeland Housewares’ motion to disqualify Steptoe & Johnson from continuing to represent Plaintiff Sunbeam Products).
Girafa.com, Inc. v. IAC Search & Media, Inc. et al., 2009 U.S. Dist. LEXIS 88796 (D. Del. Sept. 25, 2009) (representing Snap Technologies: court granted summary judgment in favor of Snap as to numerous asserted patent claims).
Collezione Europa USA, Inc. v. Amini Innovation Corp., 2009 U.S. Dist. LEXIS 76411 (D.N.J. Aug. 26, 2009) (representing Amini Innovation: court granted motion for leave to amend counterclaim to add owners/officers of Collezione as counterclaim-defendants by noting that individuals who possess the right and ability to supervise the infringing conduct and who have an obvious and direct financial interest in the exploitation of copyrighted material can be held indirectly liable for copyright infringement).
Amini Innovation Corp. v. Cosmos Furniture Ltd., 2009 U.S. Dist. LEXIS 29812 (C.D. Cal. March 16, 2009) (representing Amini Innovation: court denied Canadian defendant’s motion to dismiss for lack of personal jurisdiction where the complaint alleged willful copyright and design patent infringement, and the record demonstrated that the defendant knew that the plaintiff resided in Southern California and that the alleged infringements would harm the Southern California company).
Girafa.com, Inc. v. Amazon.com, Inc. et al., 2008 U.S. Dist. LEXIS 99196 (D. Del. Dec. 9, 2008) (representing Snap Technologies: in computer software patent case, court denied Plaintiff’s motion for preliminary injunction).
Amini Innovation Corp. v. JS Imports and Designer Furniture Warehouse, 497 F. Supp. 2d 1093 (C.D. Cal. 2007) (representing Amini Innovation: motion to dismiss or transfer brought by New York and Maryland-based defendants defeated where the evidence tended to show that defendants must have known that their alleged willful copyright infringements would cause harm to plaintiff, a California corporation).
Alan Lee Distributors, Inc. dba ADI Pet, Inc. and Christopher Weinberg v. Van Brown, 2007 U.S. App. LEXIS 12460 (Fed. Cir. May 18, 2007) (representing ADI Pet: in what is believed to be the first Federal Circuit obviousness argument after the Supreme Court’s decision in KSR, the Federal Circuit affirmed the district court’s grant of summary judgment finding that the asserted claims of the patent-in-suit covering meat-filled rawhide chew toys for dogs were invalid for obviousness).
Amini Innovation Corp. v. Anthony California, Inc. et al, 2007 U.S. App. LEXIS 420 (Fed. Cir. Jan. 8, 2007) (representing Amini Innovation: the Federal Circuit reversed the district court’s order granting summary judgment of non-infringement of a design patent for a dresser since it was improper to focus on specific elements of the dressers rather than analyzing the designs as wholes from the perspective of an ordinary observer).
Amini Innovation Corp. v. Anthony California, Inc. et al., 439 F.3d 1365 (Fed. Cir. 2006) (representing Amini Innovation: the Federal Circuit reversed the district court’s grant of summary judgment of non-infringement of six copyrights and a design patent because the district court erred in applying the extrinsic and intrinsic tests for substantial similarity in copyright infringement, and an element-by-element test for design patent infringement. Later in 2006, Amini Innovation won and collected on a jury verdict of willful infringement on the design patent and several of the copyrights).
Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 2005 U.S. Dist. LEXIS 5853 (N.D. Tex. Apr. 6, 2005) (representing Wolf Designs: defeated a motion for reconsideration of the denial of a motion to transfer venue pursuant to 28 U.S.C.S. § 1404(a) based on Defendants’ failure to show that the cases could have been brought in the transferee forum and they possessed “new” evidence supporting minimum contacts with the transferee forum at the time they brought their original motion).
Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 355 F. Supp. 2d 848 (N.D. Tex. 2005) (defeated motion to transfer venue where competitors who sought transfer of lawsuits alleging trade dress and patent infringement failed to prove that, absent their consent, they would have been subject to personal jurisdiction in Georgia when patent holder filed instant suits in Texas, they also failed to establish that 28 U.S.C.S. § 1404 authorized transfer of suits to Georgia).
Amini Innovation Corp. v. Classic World Imports, Inc., 2005 U.S. Dist. LEXIS 406 (Jan. 12, 2005) (representing Amini Innovation: defeated Defendant’s motion to stay the action pending the resolution of certain allegedly related actions filed by Plaintiff in a California court, defendant claiming that a stay would promote judicial economy and avoid the possibility of inconsistent rulings between Texas court and court in California. The Texas court denied Defendant’s motion finding that a stay would only delay Plaintiff’s attempt to recover for the copyright infringements and not serve judicial economy where the cases in California were not shown to be related to the Texas action).
Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 341 F. Supp. 2d 639 (N.D. Tex. 2004) (representing Wolf Designs: Plaintiff successfully moved to stay its own patent infringement action in Texas pending resolution of a California action because the issues in the cases were substantially similar, the witnesses overlapped, and the California action was the first-filed action).
Anderson, M., Nielsen, M.D., Cislo D.M., Real World Molecular Biology Conflicts with the Supreme Court’s Recent Decision on Patentable cDNA, Los Angeles Daily Journal, June 25, 2013.
Cohiba: Not Just Another Name, Not Just Another Stogie: Does General Cigar Own a Valid Trademark for the Name Cohiba in the United States, 21 Loyola L.A. Int’l & Comp. L.J. 633 (1999) (cited in, Empresa Cubana del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 275 n.42 (S.D.N.Y. 2002)).
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Schiemann, W.P., Graves, L.M., Baumann, H., Morella, K.K., Gearing, D.P., Nielsen, M.D., Krebs, E.G., and Nathanson, N.M. (1995). Phosphorylation of the Human Leukemia Inhibitory Factor (LIF) Receptor by Mitogen-activated Protein Kinase and the Regulation of LIF Receptor Function by Heterologous Receptor Activation. Proc. Nat’l. Acad. Sci. 92: 5361-5365.
Duhe, R.J., Nielsen, M.D., Dittman, A.H., Villacres, E.C., Choi, E.J., and Storm, D.R. (1994). Oxidation of Critical Cysteine Residues of Type I Adenylyl Cyclase by o-iodosobenzoate or Nitric Oxide Reversibly Inhibits Stimulation by Calcium and Calmodulin. J. Biological Chemistry 269: 7290-7296.
Speaking Engagements: Mark has given talks on various aspects of IP law to bar associations, law school classes, and undergraduate classes.
Personal Interests: Golf, fishing, travel with his wife Maria