Partner
Four United Plaza
8555 United Plaza Boulevard
Baton Rouge, LA 70809
225.248.2022 tel
225.248.3022 fax


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Justin Ourso is a native of Baton Rouge who has practiced throughout Louisiana since 1977. Mr. Ourso practices primarily in the areas of business litigation and intellectual property and trade regulation law. His litigation practice has included trademark, copyright, and patent infringement actions; unfair competition, trade secret, trade regulation, and noncompetition covenant actions; the defense of defamation and privacy actions against newspaper publishers, television and radio broadcasters, and network news program producers; construction and product liability actions; and various federal statutory and constitutional actions, including antitrust and commerce clause litigation. Mr. Ourso’s trademark practice includes trademark and domain name selection and clearance counseling, and has included numerous applications and trademark opposition proceedings in the PTO. His intellectual property practice includes counseling and transactions related to trademark and copyright law; trademark, copyright, patent, and technology licensing and related contracts; computer and technology related agreements; and counseling technology start-ups, including Internet and electronic commerce agreements.

Mr. Ourso has been a liaison from his law firm to the International Trademark Association (formerly, United States Trademark Association) since 1993, and an active participant in INTA’s committee work since 1994. When he served as Chair of the Functionality As A Defense Subcommittee, Mr. Ourso’s subcommittee drafted reports and legislation and worked with the House Subcommittee on Courts and Intellectual Property of the Committee on the Judiciary on a bill to amend the Lanham Act to make functionality a statutory defense to infringement of an incontestable mark and a ground for cancellation of an incontestable registration. While serving as Chair of the New Legislation (U.S.) Subcommittee, his subcommittee continued working on the functionality bill and worked on the proposed trade dress bill. The functionality legislation that these two committees drafted and worked on was passed by Congress on October 9, 1998, as a part of the implementing legislation for the Trademark Law Treaty. When Mr. Ourso served as chair of the North American Regulatory Analysis Subcommittee his subcommittee prepared INTA’s submissions to the PTO on its congressionally mandated inquiry into Native American tribal insignia and to the FDA on the FDA Draft Guidance on placing the therapeutic equivalence code on prescription drug labels, among other projects.

Noteworthy

• AV® Peer Review Rating in Martindale-Hubbell. CV, BV and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedures, standards and policies. Martindale-Hubbell is the facilitator of a peer review rating process. Ratings reflect the confidential opinions of members of the Bar and the Judiciary. Martindale-Hubbell Ratings fall into two categories—legal ability and general ethical standards.

Representative Matters

• Representation of a privately owned operator of a seafood restaurant in a dispute with a nationally known operator of restaurant chains in a trademark dispute, including prosecuting a pending trademark infringement and unfair competition legal action pending in state court in Baton Rouge.
• Counseling a publicly held NYSE-listed operator of a regional chain of restaurants in trademark and trade name matters, including a service mark infringement dispute in Virginia. (1999 to date)
• Counseling a publicly held telecommunications company headquartered in Jackson, Mississippi, that is a broadband wireless broadcaster and Internet service provider in trademark and trade name matters, including pending applications in the PTO and prosecuting and defending two opposition proceedings in the PTO. (1998 to date)
• Counseling a privately owned management consultant for summer camps, including negotiating a management agreement, trademark licensing agreement, and copyright licensing agreement with counsel for the Archdiocese of New Orleans and other parties for summer camps operating in approximately 20 schools. (1989–1999)
• Representation of Dutch manufacturer of soil aerator as co-counsel with New Orleans patent firm in federal court declaratory judgment patent infringement action and in separate declaratory judgment trademark infringement and unfair competition action by former distributor of manufacturer. Filed counterclaims for patent and trademark infringement, unfair competition, and other claims. Succeeded in consolidating the two actions, to our client’s economic and tactical advantage. Then initiated settlement negotiations, concluded by client, requiring the former distributor to license the patent from our client in order to practice the invention. (1995–1997)
• Representation of perfume manufacturer, retailer, and mail order seller in negotiation with internationally known Parisian haute couture designer for license or sale of perfume trademark. Succeeded in negotiating sale of mark for six-figure sum, with royalty-free license back to client to continue using mark. Also succeeded in negotiating for purchaser to pay client’s attorneys’ fees. (1995–1996)
• Representation of radio broadcaster in state court defamation action presenting res nova issues, arising from a telephone call to public forum public interest radio program. Succeeded in obtaining stay order from Louisiana Supreme Court after district court and state appellate court denied stay pending writ application from denial of motion for summary judgment. Louisiana First Circuit Court of Appeals then granted writ application, reversed the trial court, and dismissed the action. Louisiana Supreme Court and U.S. Supreme Court then denied plaintiff’s writ applications. (1992–1995)
• Defense of retail record store company in federal court trademark infringement action by publicly held company operating a chair of record stores in Southeast U.S. using same name. Succeeded in establishing Lanham Act § 33(b)(5) “limited area defense” on summary judgment on behalf of local record store as intermediate junior user. Also succeeded in establishing large “limited area” and additional defense of laches at trial. On appeal favorable judgment below affirmed and succeeded on cross-appeal in having U.S. Court of Appeals for the Fifth Circuit expand client’s territory even more. (1992–1995)
• Representation of nonprofit corporation owning the trademark for a well-known music club in New Orleans, “Tipitina’s,” in trademark infringement, unfair competition, breach of license agreement, and declaratory judgment federal court action by our client against their licensee, which operated the club. Operator counterclaimed for dissolution of the agreement and reimbursement of royalties. A corporation owning rights in the musical properties of the late well-known New Orleans musician, “Professor Longhair,” intervened claiming an interest in the trademark. All claims were settled favorably to our client, preserving the licensing agreement for additional royalties, with the intervener gaining an interest in the royalties. (1993–1994)
  

News

• Ourso Reappointed to Amicus Committee of the International Trademark Association
• Jones Walker Team Obtains Preliminary Injunction
• Ourso Appointed to ABA Task Force on the Federal Trademark Dilution Act
• Ourso Reappointed to INTA U.S. Legislation Committee

Memberships

• American Bar Association (Member, Sections on Litigation and Intellectual Property Law, Federal Trademark Legislation Committee; and Communications Law Forum)
• Baton Rouge Bar Association
• Dillard Legal Fellow
• International Trademark Association [formerly U. S. Trademark Association] (Regulatory Analysis Committee and Chair, North American Regulatory Analysis Subcommittee,1998–1999; Legislative Analysis Committee and Chair, New Legislation (U. S.) Subcommittee, 1997–1998; Issues & Policy Committee and Chair, Functionality As A Defense Subcommittee, 1996–1997)
• Louisiana State Bar Association (Member, Sections on Civil Law & Litigation, Intellectual Property Law, and Antitrust & Trade Regulation Law)
• New Orleans Bar Association (Member; Intellectual Property Law Committee)
• U.S. Legislation Committee (Past Chair, 1994–1996; Ad Hoc Federal Legislation Subcommittee, 1995–1996)