Eugene M. PakAttorney

Wendel Rosen Black & Dean LLP 1111 BroadwayOakland, CA 94607
TEL:
510.834.6600
FAX:
510.808.4726
VCARD:
vcard
Profile

An experienced counselor and litigator, Eugene provides strategic advice to his clients in both transactional and litigation matters. He acts as outside general counsel to many of his clients, and specialized intellectual property and litigation counsel to others. Eugene is a trusted advisor and vigorous advocate for his clients, helping them build and protect their businesses and brands, and to structure favorable deals and agreements.

Eugene’s clients include apparel companies, craft breweries, computer gaming companies, food and beverage companies, technology companies, and many others. He brings a diverse background to his work, having worked at large and small firms, as in-house counsel at a technology company, and at a nonprofit public interest firm.

Intellectual Property Development, Protection and Litigation

For more than fifteen years, Eugene has advised companies in the selection, registration and maintenance of their trademarks and copyrights both domestically and abroad. He has filed or managed thousands of trademark and copyright applications and registrations worldwide. He advises companies with large, well-established international trademark portfolios, as well as newer companies that are just developing their brands.

Eugene also represents clients in related areas such as advertising and marketing issues, social media issues, software licensing, website terms of use, privacy policies, DMCA policies and compliance, and trademark licenses and co-existence agreements. Eugene is also an experienced IP litigator, having litigated numerous IP cases and disputes in federal and state courts. His experience includes disputes involving trademarks, trade dress, copyrights, domain names, anti-counterfeiting, patent, trade secrets, and false advertising issues.

Craft Beer Law and Alcohol Beverage Law

Eugene leads the Craft Breweries & Brew Pubs practice at Wendel Rosen, advising craft breweries and others in the alcohol beverage industry. He serves as outside general counsel to many of his clients, advising them on a wide range of issues from entity formation, trademarks and copyrights, distribution and other contracts, employment issues, alcohol beverage (ABC) and labeling regulations, as well as marketing and advertising issues.

Eugene frequently speaks at beer conferences and has been quoted in Brewbound, All About Beer, The Daily Journal, and other media outlets.

Business & Employment Issues and Litigation

Eugene is also an experienced business and employment law attorney. He has represented companies in a wide range of business and commercial matters, including antitrust issues, broker-dealer disputes, class action cases, investment fraud, bid disputes, real estate disputes, unfair competition matters, California Business & Professions Code § 17200 claims, and Commerce Clause issues involving state and federal beverage laws and regulations. In the employment law field, he has advised and represented clients in matters involving non-compete agreements, misappropriation of trade secrets, employment discrimination, independent contractor versus employee status, and wage and hour laws. In addition to representing clients in court, he has represented clients in employment disputes before administrative agencies such as the California Labor Commissioner and New York Stock Exchange (arbitration).

Experience


Intellectual Property Litigation & Disputes

  • Represented leading craft brewery as plaintiff in trademark infringement action in federal district court; obtained consent permanent injunction and fees in action to enforce injunction.

  • Represent social gaming company in trademark prosecution and dispute matters.

  • Advised snowboard company in domestic and foreign trademark issues and registrations.

  • Represent leading game publisher in several domain name arbitration proceedings (UDRP).

  • Represented building developer in copyright infringement action involving architectural drawings.

  • Advise social gaming company in various intellectual property matters and disputes, including trademark prosecution, TTAB proceedings and copyright counseling.

  • Represented East Bay medical products company in defense of trademark infringement and cybersquatting suit in Northern District of California; settled favorably.

  • Represented television set-top box manufacturer in copyright infringement action involving BusyBox open source software and GNU General Public License (GPLv2).*

  • Represented a large manufacturer of networking hardware and software products in anti-counterfeiting disputes and enforcement efforts.*

  • Represented leading ATM company in dispute with Korean manufacturer over ownership of trademark (ICDR arbitration).*

  • Defended office products company in trade secret litigation involving use of customer lists and information; engaged in expedited discovery and successfully limited scope of temporary restraining order and injunction.*

  • Represented lifestyle apparel company in trademark infringement and TTAB cancellation proceeding involving mark and logo.*

  • Represented a well-known nonprofit organization in trademark and trade dress infringement and dilution action and related design patent infringement counterclaim.*

  • Counsel for a newswire service in trade secret litigation; obtained a preliminary injunction requiring former employee to cease working for competitor and from using customer information.*

  • Trial counsel for a jewelry designer in a trade dress infringement action in the Southern District of New York.*

  • Represented an online document-sharing company in a DMCA dispute regarding copyrighted documents posted by customers.*

  • Represented a leading Silicon Valley content management software firm in copyright litigation involving the scope of a software license agreement.*

  • Represented a well-known Napa Valley winery in Lanham Act litigation against a Canadian wine kit manufacturer.*

  • Represented an online document delivery service in class action copyright infringement litigation involving indexing and delivery of copies of print articles.*



Intellectual Property Counseling & Prosecution

  • Advise and represent companies on all aspects of trademark prosecution, protection, enforcement issues, DMCA issues and copyright licensing, in a wide variety of fields; advise clients on right of publicity and privacy issues.

  • Advise social gaming company in various intellectual property matters and disputes, including trademark prosecution, TTAB proceedings and copyright counseling.

  • Advise and represent a leading Korean apparel company in trademark matters in the United States.

  • Serve as intellectual property counsel for a leading manufacturer and distributor of motorcycle parts, clothing and accessories, including handling trademark prosecution and enforcement actions worldwide.

  • Advised a leading computer game publisher on worldwide sweepstakes promotion in connection with the FIFA World Cup.*

  • Negotiated a trademark license agreement relating to distribution and publication of music used in computer games.*

  • Draft and negotiate license agreements (SLA, SaaS, ASP) for leading GIS mapping and technology provider.

  • Worked as in-house counsel for Silicon Valley CRM software company; drafted and negotiated license and business development agreements.*

  • Advised client on privacy issues and policies for website and customers' websites; negotiated licensing agreement regarding use of large business information database.



Other Litigation

  • Represented nonprofit organization in quiet title and real estate fraud litigation regarding Koreatown retail shopping plaza.

  • Counsel for a leading investment brokerage firm in an employment discrimination class action and related breach of duty of loyalty counterclaim; successfully compelled arbitration to avoid class claims, prevailed on defense of discrimination claim, and obtained damages awards on firm's breach of duty of loyalty claim.*

  • Represented leading pharmaceutical companies in class action antitrust and unfair competition litigation.*

  • Represented leading cereal maker in class action antitrust and unfair competition litigation; obtained summary judgment.*

  • Represented state food and agriculture department in litigation regarding milk nutritional labeling and pooling regulations and successful appeal to Ninth Circuit.*

  • Defended brokerage firm in National Association of Securities Dealers (NASD) arbitration involving claims of breach of fiduciary duty, "churning," and related claims; obtained award in defendant's favor.*

  • Represented various employee groups in class action claims under California Business & Professions Code Section 17200 for violations of wage and hour and other employment claims.*

 

* Work performed at prior firm.

Publications

Available Articles:

  • “Beer Is Not The New Wine: USPTO Again Rejects Beer Trademark Citing Wine Mark,” IP Legal Forum, October 2014
  • “Work for Hire:  Who Really Owns ‘Your’ Copyright,” Oakland Business Review, Dec. 2011/Jan. 2012
  • "Protect Your Presence: Legal Issue in Using Social Media," East Bay Manufacturing Group Newsletter, August 2012
  • “Is the TTAB's Reluctance To Issue Citable Decisions Set To Change?” World Trademark Law Report, 2006
  • “Superman Fights Off KRIPTONIA Registration,” World Trademark Law Report, 2005
  • “Trademark Filing Online: The Korean Intellectual Property Office,” co-author, INTA Bulletin, May 2005

 

Affiliations
Asian American Bar Association of the Greater Bay Area (AABA)
  • Board of Directors, 2004–2011
  • Co-chair, Community Services Committee, 1998–2000
  • Newsletter/Website Committee, 1998–2000; 2003 to present

International Association of Korean Lawyers (IAKL)
  • Regional Governor, Northern California, 2011–2014
  • Annual Conference Organizing Committee, 2004, 2006, 2009–2011
  • Treasurer, 1998–1999

International Trademark Association (INTA)
  • Member, Anti-Counterfeiting Committee, 2014
  • Member, Internet Committee, 2010–2013
  • Member, Information Resources Committee, 2004–2005
  • Member, Trademark Dilution Committee, 2004–2005
  • Member, Trademark Reporter Editorial Board, 1999–2000

Korean American Bar Association of Northern California (KABANC)
  • Recognized as "Alumnus of the Year," 2016
  • Board Member, 2013–2014
  • President, 2001–2002
  • Treasurer, 1998

National Asian Pacific American Bar Association (NAPABA)
  • California Regional Conference Organizing Committee, 2005
  • Recognized as one of "Best Lawyers Under 40," 2005

Brewers Association

California Craft Brewers Association

Presentations

Featured Presentations:

  • "SB 778 - Know Your Sweepstakes and Contests," California Craft Brewers Association, General Meeting, October 2012
  • "Licensing Technology," Oakland 2.0 (formerly InOak) Program, February, 2012
  • “Trade Secrets Issues,” IAKL Conference, Chicago, Illinois, 2010
  • “Doing Business Between US and Korea,” Association of Corporate Counsel (Northern California) Program, 2010
  • “Soft IP Issues on the Internet,” IAKL Conference in Seoul, Korea, 2009
  • “International IP Issues in Entertainment & Media: New Paradigms for Global Deal Making,” NAPABA Regional Conference, 2009
  • “Playing Hardball with Soft IP,” American Corporate Counsel Regional Conference, 2008
  • “Protecting Your Brand on the Internet,” INTA, 2006
  • “Update on US Intellectual Property Law,” IAKL Conference, 2006
  • “Winning Strategies for IP Compliance,” Federal Publications, 2005
  • “US Trademark Prosecution,” Trademark and Copyright Practice for Paralegals, Half Moon Seminars, 2003
  • “Issues in Preparing Copyright Legal Opinions,” Trademark and Copyright Legal Opinions, Practising Law Institute, 2001

 

Recognitions

Recognitions:

  • Alumnus of the Year Award, Korean American Bar Association of Northern California (KABANC), 2016
  • Best Lawyers Under 40,  National Asian Pacific American Bar Association (NAPABA), 2005
  • Distinguished Service Award, Asian American Bar Association of the Greater Bay Area, 2005
  • Unity Award, Minority Bar Coalition and Korean American Bar Association, 2003

 

Related News:

 

 

Craft Beer Attorney

Eugene advises craft breweries and other beverage industry clients in all aspects of their business. He serves as outside general counsel to his clients, bringing more than twenty years of experience in both transactional and litigation matter,s as well as an understanding and passion for the craft beer industry. 

Together with other Wendel Rosen attorneys, Eugene has helped both start-up breweries and established breweries accomplish their goals and grow their businesses. Eugene and other Wendel Rosen attorneys advise clients on business formation and financing, trademarks and copyrights, contracts, licensing issues, corporate governance matters, commercial transactions, distribution contracts, advertising and marketing, real estate, employment and tax issues. 

Representative matters include:

  • Counsel for leading craft brewery as plaintiff in Lanham Act trademark infringement action in federal district court; obtained consent permanent injunction and fees in action to enforce injunction.
  • Advised private equity firm on tied-house laws relating to investment in craft brewery.
  • Advised craft breweries on distribution contracts in multiple states and regulatory issues.
  • Advised craft brewery on lease for 90,000 square foot building for brewery, restaurant and offices.
  • Advised start-up craft breweries on trademark filing strategy and negotiating trademark co-existence agreements.
  • Advised owner of craft beer bars on alcohol beverage licensing issues, trademarks and general business matters.

 

Eugene frequently speaks at beer industry conferences and  ‘tweets’ on legal and business issues facing craft breweries as @beerattorney.

Wendel Rosen is an allied trade member of the Brewers Association and the California Craft Brewers Association.