J. Peter Staples
Partner
Experience

Pete joined Chernoff Vilhauer in 1980.  Over the course of 38 years, Pete's practice has encompassed a broad range of intellectual property matters, including patent prosecution, patent litigation, patent, trademark and copyright opinions, intellectual property counseling, intellectual property licensing, trademark prosecution, trademark litigation, trade dress litigation, copyright litigation, false advertising litigation, trade secret litigation.

Pete has counseled many companies with respect to intellectual property matters and guided multiple companies to acquisition of substantial patent and trademark portfolios.

Pete's practice currently emphasizes intellectual property litigation and counseling, and arbitration and mediation of intellectual property matters. 

Recognition

Pete has been listed in The Best Lawyers in America since 2005; listed as an Oregon Super Lawyer in the field of Intellectual Property Litigation since 2006; recognized in Chambers USA as a leading Individual in Intellectual Property law in Oregon; listed as a "recommended individual" in Oregon by IAM 1000 leading Patent Practitioners; selected in 2005 as "Best of the Bar" in the field of Intellectual Property; recognized as one of Portland's Best Lawyers by the Portland Monthly Magazine; and AV rated since 1995.

 

Pete has served as an arbitrator for the Arbitration Service of Portland, is on the Oregon District Court's Panel of Mediators,  is listed in the American Intellectual Property Law Association ADR/Neutral Registry and  was appointed to the International Trademark Association's Trademark  Mediators Network in 2015.

Representative Litigation

Trademarks

​Obtained summary judgment of trademark infringement and injunctive relief in U.S. District Court on behalf of a chain of dental offices.  Successfully defended the District Court's decision to grant summary judgment and injunction before the U.S. Court of Appeals for the Ninth Circuit.

Filed declaratory judgment action and obtained summary judgment of laches in U.S. District Court for beef jerky company against national dairy products company which had accused the jerky company of trademark infringement.  The District Court also ordered registration of jerky company's trademark which had been opposed by the dairy company. 

Successfully defended the District Court's decisions with respect to both laches and registration before the U.S. Court of Appeals for the Ninth Circuit.

Obtained preliminary injunction in Federal District Court for plaintiff wine and jazz festival against competition with similar name.

Obtained favorable settlement for national sportswear company in a trademark lawsuit related to the company's name and primary trademark. 

Represented local yogurt company in trademark infringement lawsuit brought by an international yogurt company and its large U.S. licensee.  After a bench trial the U.S. District Court found in local company's favor resulting in money judgment for local company and cancellation of international company's U.S. trademark registration.

Filed over 20 lawsuits for multi-function tool company based upon product configuration trade dress.  Obtained one jury verdict of trade dress infringement and multiple successful settlements resulting in consent judgments, injunctions and aggregate damages of over $5 Million.

Patents

Represented defendant Oregon saw mill accused of patent infringement.  One of the patents in suit was shown to be invalid and the lawsuit was successfully settled.

Represented defendant archery equipment manufacturer in patent infringement lawsuit.  Obtained summary judgment of non-infringement and received attorneys' fees from plaintiff.

Filed multiple patent infringement lawsuits for patentee multi-function tool manufacturer.  Obtained  successful settlements with consent judgments including injunctions and/or damages.

Filed over one dozen patent infringement lawsuits for patentee cutlery manufacturer.  Obtained successful settlements with consent judgments including injunctions and/or damages.

Provided opinion of non-infringement and advised defendant's trial counsel in patent infringement lawsuit.  Defendant was awarded summary judgment and attorney fees.

J. Peter Staples
(503) 227-5631 (Phone)
(503) 228-4373 (Fax)

Paralegal: Jane Larson

Assistant: Yvonne Fide

Practice Areas
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​Education

Lewis and Clark Law School, J.D.

U.S. Military Academy at West Point, B.S

Bar Admissions

Oregon

Washington

U.S. Supreme Court

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

U.S. District Courts for the Districts of Oregon, Colorado and the Western District of Washington

U.S. Patent and Trademark Office

False Advertising

Obtained settlements of $8 Million and $18.5 Million for manufacturer of home exercise machines in suit for false advertising and copyright infringement in two lawsuits against national exercise equipment competitors.

Obtained consent judgment including injunction and damages for international materials handling company against competitor for falsely advertising genuine replacement parts for sale.

Awarded $4.5 Million punitive damages verdict for multi-function tool manufacturer in jury trial against large international tool company for false advertising.

Represented local trucking company in trademark lawsuit against large national trucking company.

Copyright

Filed multiple copyright infringement lawsuits on behalf of publisher of industry newsletter against national and regional defendants. Successfully settled lawsuits with consent judgments including injunctions against defendants and settlement damages for publisher.

Trade Secrets

Successfully represented manufacture in firearms industry in trade secret lawsuit. Represented 3D start-up in trade secret and conversion lawsuit. Case settled.

Represented two companies in lawsuit against ex-employees for misappropriation of companies trade secrets.

Punitive Damages:

Argued punitive damages case in front of U.S. Court of Appeals for the Ninth Circuit.

Second chair and on briefs in the U.S. Supreme Court case concerning due process and punitive damages.

Settlement Agreement Litigation

Represented defendant in lawsuit alleging breach of Settlement Agreement.  Obtained successful result for defendant wherein plaintiff paid defendant a six figure settlement.

Alternate Dispute Resolution:

Served as Chief Arbitrator in trademark infringement and unfair competition arbitration dispute.

Served as Mediator in I.P lawsuits.

Expert Work

Served as court-appointed expert to conduct investigation and provide court with findings relating to trade secret dispute.

Retained as expert with respect to issue of laches for trade dress infringement.  Expert opinion served as a catalyst for successful settlement for plaintiff.

International Litigation

 

Supervised and directed international trademark infringement lawsuits and opposition proceedings.

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