Andrew is a skilled intellectual property attorney and commercial litigator who is adept at handling a wide array of matters. He litigates patent, trademark, and copyright disputes in courts around the country, and prosecutes patents and trademarks before the US Patent and Trademark Office. His capabilities also encompass entertainment law and general commercial litigation. Companies in diverse sectors — technology, consumer products, life sciences, manufacturing, nonprofits, arts and entertainment, among others — seek his representation in cases, disputes, contract negotiations, and settlement discussions. His breadth of work has involved famous intellectual property rights, as well as startup companies just developing their rights.
Andrew’s practice is focused on patent, trademark, copyright litigation, and entertainment law. In addition, Andrew has prosecuted hundreds of patents and trademarks before the US Patent and Trademark Office.
Andrew is frequently sought after for his legal expertise. He has appeared on CNBC’s Squawk Box and has been featured on KCEO radio as a commentator on intellectual property law. He served as an expert witness on trademark law in California state court, presented on issues of IP to numerous trade groups, schools, and industry clients, and has spoken at the University of San Diego and San Diego State University regarding intellectual property and entertainment law. He serves on the board of multiple local non-profits, including Chelsea’s Light Foundation and the U.S.-Georgia Friendship Association, along with serving on the Advisory Board of ZIP Launchpad, an on-campus incubator at San Diego State University, which supports university affiliated startup companies.
Andrew is a semi-professional magician and member of The Academy of Magical Arts.
He also has managed a number of little league baseball, softball, and basketball teams as well as the school sponsored Science Olympian teams.
Education
- New York University (JD, cum laude)
- University of Illinois - Urbana-Champaign (BSEE, Minor in Computer Science, Highest Honors)
Experience
- Manage and protect global patent portfolio for Ruby Tuesday, Inc.
- Represented SpinMaster, a leading global children's entertainment company, in a patent infringement case related to the company's Zero Gravity® Laser toy vehicle, which was named "Best Toy" by Popular Mechanics at the 2019 Toy Fair. Obtained a preliminary injunction in December 2019 enjoining the sales of the infringing toys by defendant, which was appealed. The parties settled their dispute and the case was dismissed by stipulation.
- Manage and protect global patent portfolio for &pizza.
- Successfully represented former NFL linebacker, 3x pro bowl, Rookie of the Year, Shawne Merriman in numerous IP matters, including litigation against Under Armour Inc.
- Represents Acorns in patent and trademark matters around the world.
- Represents Black Girls Rock! with respect to trademark matters.
- Represents Silk Road Medical in trademark matters around the world.
- Represents PriceSmart in global intellectual property matters,
- Represents Barnana with respect to trademark matters.
- Represents Orchid cryptocurrency in global trademark matters.
- Represents toy company BOTI International Ltd. in global trademark matters.
- Represents Evofem Biosciences, Inc. in global trademark matters.
- Represents Skillz in global trademark matters.
- Represents X-Artists Books with respect to trademark matters
- Successfully represented MMA fighter Rampage Jackson in a lawsuit with his former manager.
- Represented SeQual Technologies, Inc. in a patent infringement lawsuit, obtaining a favorable settlement.
- Settled a case for ASICS spokesperson/wrestler Jordan Burroughs in a dispute against Burroughs' previous licensee. Represented ASICS in a contract litigation involving Lutte Licensing.
- Successfully licensed the Bel Air brand for numerous film and television projects
- Settled a patent infringement case for Chart Industries, Inc. against GP Strategies Corporation and continues to represent Chart Industries, Inc. in its patent matters before the US Patent and Trademark Office
- Representing The Brain Observatory, a non-profit research and public benefit organization, in trademark and licensing matters.
- Represents Upper Deck International in a litigation adverse to The Upper Deck Company.
- Represents Pony, Inc. in its trademark matters around the world
- Represented Michelle “Bombshell” McGee in a contract dispute.
- Represented Stephen Slesinger, Inc. regarding rights to the Winnie-the-Pooh characters, obtaining summary judgment against the Walt Disney Company
- Represented Stormceptor Corp., obtaining a favorable jury verdict of patent infringement.
- Represented New Name, Inc. against Disney Enterprises, Inc., regarding trademark and copyright infringement, obtaining a favorable settlement.
- Represents Red Ryder with respect to trademark matters.
- Represented Cook Like a Chef, Inc., regarding the television program, Cook Like a Chef.
- Assist Fantasy Sports, LLC in managing their growing IP portfolio.
- Represents the Sierra Nevada Corporation in various intellectual property matters.
- Represented Avid Identification Systems, Inc., obtaining a mandatory preliminary injunction against Banfield, the Pet Hospital.
- Representing Chelsea’s Light Foundation, a non-profit organization working to protect children from sexual predators, in trademark and contractual matters.
- Represented Intel Corporation, obtaining summary judgment against a major competitor
- Represented Equiplite, in a patent infringement litigation, obtaining a favorable result.
- Represented Clariti Eyewear, Inc. in successfully appealing to the Federal Circuit, obtaining summary judgment in a patent infringement case. See Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F. 3d 1305 (Fed. Cir. 2010)
- Represented Angles BeautyCare Group, Inc. in a jury trial concerning trademark infringement and unfair competition, obtaining a favorable settlement
- Represents Bullets2Bandages, an apparel brand designed to give thanks to veterans and their families, in various intellectual property matters.
- Represented Pony, Inc. in two separate trademark disputes against Ford Motor Company and Nike, obtaining favorable results in each case.
- Obtained judgment for client and maximum statutory damages award for cybersquatting, trademark infringement, and unfair competition
- Obtained a $12 million summary judgment motion for a breach of contract related to pet food ingredients.
- Settled a patent infringement case for Suicide Fantasy Sports against ESPN Inc.
Recognition & Awards
- San Diego Super Lawyers: Intellectual Property Litigation (2019 - 2021)
- Southern California Super Lawyers: Intellectual Property Litigation (2013 - 2017)
- San Diego Daily Transcript: Top Attorney: Intellectual Property Litigation, Intellectual Property Transactional (2008)
Involvement
- Board Member, Chelsea's Light Foundation
- Board Member, U.S. - Georgia Friendship Association
- Advisory Board, ZIP Launchpad Incubator
- Arbitrator, Better Business Bureau (2000 – present)
Recent Insights
Viewpoints
How NFTs and Blockchain Secure Digital Sports Collectibles
May 24, 2021 |Blog
Obviousness-Type Double Patenting and Divisional Applications in Canada
March 23, 2021 |Blog
News & Press
In an article published by Bloomberg Law, Mintz Member Andrew Skale commented on a trademark infringement lawsuit brought by a local roller derby team against Major League Baseball's Cleveland Indians in advance of the Indians’ anticipated name change to the Guardians. Mr. Skale joined other intellectual property and trademark attorneys in suggesting that a settlement would be in both parties’ interests.
Mintz Member Andrew Skale was among trademark lawyers to provide insights for a Reuters article on a trademark infringement lawsuit brought by a local roller derby team against Major League Baseball's Cleveland Indians in advance of the Indians’ anticipated name change to the Guardians.
Viewpoints
EXCLUSIVE RIGHTS: Intellectual Property — Protecting Music (and Other Creative Works) with Copyrights
July 8, 2021 | Podcast | By Daniel Weinger, Andrew D. Skale
In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz Intellectual Property attorneys Andrew Skale and Daniel Weinger explore copyright protections for music and other creative works.
Read more
How NFTs and Blockchain Secure Digital Sports Collectibles
May 24, 2021 | Blog | By Keith P. Carroll, Andrew D. Skale, Justin J. Leisey
Today, there are new opportunities to own a bit of sports history. It is now possible to even own a digital collectible of your favorite athlete making a play during a game. NFTs (non-fungible tokens) are being used to provide digital provenance that affords unique ownership of sports most memorable moments.
Read more
Obviousness-Type Double Patenting and Divisional Applications in Canada
March 23, 2021 | Blog | By Andrew D. Skale, Justin J. Leisey
Obviousness-type double patenting (“OTDP”) arises when two or more patents or applications include claims that, while not being identical, are not patentably distinct from each other. In the U.S., OTDP rejections can be overcome by filing a terminal disclaimer that limits the term of the rejected application to be no greater than the term of the disclaimed patent.
Read more
Understanding Chinese Voluntary Divisional Application Patent Practice
February 10, 2021 | Blog | By Andrew D. Skale, Justin J. Leisey
For many parts of the world, a voluntary divisional application (known as a continuation application in the U.S.) may be filed at any time during the pendency of any parent application. The claims in the voluntary divisional application must be supported by the original specification and cannot introduce any new matter.
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Recreating the Prior Art
October 7, 2020 | Blog | By Andrew D. Skale, Justin J. Leisey
In high-stakes litigation, parties go to great lengths to prove their case. One such example is ongoing litigation between two giants in the paint and coatings world. Sherwin-Williams Co. and PPG Industries, Inc. are involved in a patent infringement dispute over BPA-free can coatings.
Read more
Ex parte WILHELM HEINE: PTAB Rejects Examiner’s Unreasonable Claim Construction
October 7, 2019 | Blog | By Andrew D. Skale, Justin J. Leisey
During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims. When responding to these rejections, it is important to remember that there are limits to an Examiner’s broadest reasonable interpretation.
Read more
U.S. Supreme Court Holds That Copyrights Must Be Registered before Plaintiffs Can File Infringement Suits
March 5, 2019 | Blog | By Susan Neuberger Weller, Andrew D. Skale, Harold Laidlaw
The U.S. Supreme Court held today that bringing a suit for copyright infringement requires that the infringed work actually be registered with the U.S. Copyright Office, and that a mere application for registration will not suffice.
Read more
Trade Dress Protection
August 27, 2018 | Video | By Andrew D. Skale
Andrew Skale explains the importance of federally registering a restaurant’s “trade dress” in order to protect the substantial investment of time, money, and energy from encroachment by the competition.
Read more
News & Press
Roller Derby Team Ups Heat in Cleveland Guardians Trademark Fight
October 29, 2021
In an article published by Bloomberg Law, Mintz Member Andrew Skale commented on a trademark infringement lawsuit brought by a local roller derby team against Major League Baseball's Cleveland Indians in advance of the Indians’ anticipated name change to the Guardians. Mr. Skale joined other intellectual property and trademark attorneys in suggesting that a settlement would be in both parties’ interests.
Cleveland Team Sued by Roller Derby Team Over Guardians Name Change
October 28, 2021
Mintz Member Andrew Skale was among trademark lawyers to provide insights for a Reuters article on a trademark infringement lawsuit brought by a local roller derby team against Major League Baseball's Cleveland Indians in advance of the Indians’ anticipated name change to the Guardians.
Mintz Member Andrew Skale was quoted in an article published by The New York Times on trademark issues related to the anticipated name change of Cleveland’s professional baseball team in response to nationwide social reform efforts. Specifically, Mr. Skale offered insights for those launching new products, emphasizing the importance of filing with the U.S. Patent and Trademark Office prior to making any public announcements to avoid trademark squatting, a process in which individuals or companies try to predict valuable names and file trademarks to sell for profit.
Mintz, Practitioner Ranked in 2021 World Trademark Review 1000
February 23, 2021
Mintz Levin is pleased to announce that nine attorneys have been named San Diego Super Lawyers for 2018 while two others have been named San Diego Rising Stars. The annual publication identifies lawyers who have attained a high degree of peer recognition and professional achievement.
How to Avoid Someone Stealing Your Restaurant Décor
February 7, 2018
Two Members in the Mintz San Diego office, litigators Andrew Skale and Ben Wagner, wrote an article published in QRS magazine on the topic of restaurant décor, specifically the importance on the part of restaurant owners to protect trade dress.
Equitable Estoppel: What You Need to Know to Protect Yourself
August 18, 2017
Andrew Skale, a San Diego-based Member, and Associates Eric Eastham and Richard Maidman authored a Bloomberg Law article discussing what patent holders and accused infringers need to know about equitable estoppel defense.
Twelve Mintz Attorneys Named 2017 Southern California Super Lawyers and Rising Stars
February 14, 2017
Seven Mintz attorneys have been named Southern California Super Lawyers for 2017 and five have been named Southern California Rising Stars. Only five percent of area lawyers were named 2017 Southern California Super Lawyers and Rising Stars.
Ex-NFL Linebacker Files Suit Over 'Lights Out' Pajamas
April 12, 2016
This Law360 article discusses a former NFL player Shawne Merriman's trademark lawsuit against Vermont Teddy Bear Co. Inc. for using his "Lights Out" nickname on their products without his permission. Mintz Member Andrew Skale and Associate Natalie Prescott are mentioned as counsel for Merriman.
Eleven Mintz Members Named Southern California Super Lawyers
January 17, 2014
Nine Mintz Members Named San Diego Super Lawyers
June 10, 2013
Events
Speaker
May
12
2016
Essential Copyright: It's What You Need to Know
The State Bar of California
Universal Hilton 555 Universal Hollywood Drive, Universal City, CA
Speaker
Apr
21
2016