Ximena Solano Suarez

Ximena Solano Suarez helps clients license, protect and defend their intellectual property worldwide.

Areas of Practice

With a particular expertise in the sports, fashion, beauty, food and beverage industries, Ximena has a diverse practice that includes a variety of transactional as well as litigation matters.

Ximena counsels clients on all aspects of brand protection and enforcement in the U.S. and internationally, including selection and clearance of trademarks, prosecution of copyright and trademark applications, and licensing and transactions.

She litigates patent, trademark, trade dress, false advertising and copyright cases before United States District Courts, United States Courts of Appeal, and the International Trade Commission. She also represents clients in disputes before the Trademark Trial and Appeal Board, and in Uniform Domain Name Dispute Resolution proceedings regarding the registration of domain names.

Ximena’s experience includes advising on drafting and negotiating intellectual property licensing, distribution agreements, manufacturing agreements, marketing services agreements, supply agreements, sponsorship agreements, venue projects, media rights agreements, and agreements related to other commercial and transactional matters.

She formerly served as in-house counsel, as well as outside general counsel, for companies in the food and beverage, beauty and apparel industries.

Ximena maintains an active pro bono practice, focusing on intellectual property and immigration matters. For example, she currently represents the San Diego Humane Society. She also represents clients in a variety of other matters, such as adoption, domestic violence, criminal and veteran rights.

Experience

Trademarks Matters

• Ximena represents clients in litigation and prosecution of domestic and foreign trademarks. She also provides opinions and counseling relating to trademark infringement and availability issues in the context of litigation and licensing.

License Agreements Matters

• Represented U.S. sports apparel and equipment company in nonexclusive, copyright and trademark license agreements in Costa Rica and South America.
• Represented a U.S. sports apparel and equipment company in license and distribution agreements in Europe and Japan.

Patent Litigation Experience

• Continental Automotive Systems, Inc. v. Avanci, LLC et al., No. 3:19-cv-2933 (ND Tex). Represents Continental in a lawsuit seeking declaratory relief for determination and imposition of FRAND licensing terms for the 2G, 3G, and 4G SEPs..
• Sun Patent Trust v. HTC Corp., 2:20-cv-286 (ED Tex). Represented HTC in a six-patent lawsuit involving alleged SEPs asserted to cover the LTE and LTE-Advanced cellular standards.
• INVT SPE LLC v. HTC Corp. et al., No. 2:17-cv-3740 (DNJ). Represents HTC in a seven-patent infringement action relating to alleged Standard Essential Patents (SEPs) directed to the 2G EGPRS, 3G UMTS/WCDMA/HSPA and 4G LTE standards. HTC has counter-claimed for breach of FRAND.
• Evolved Wireless, LLC v. HTC Corp. et al., No. 1:15-cv-543 (D Del). Represents HTC in a five-patent infringement lawsuit relating to alleged SEPs directed to the 4G LTE standard. HTC has counter-claimed for breach of contract, alleging that Evolved Wireless failed to license its patents on FRAND terms.

Other Litigation Experience

• Citizens Equity First Credit Union v. San Diego County Credit Union, No. 92066165 (TTAB). Represents SDCCU in a trademark cancellation proceeding brought by CEFCU.
• Cubic Transportation Systems, Inc. v. Matrix Transactional, LP, JAMS No. 1240022968. Represented Cubic in a breach of contract, fraud, misappropriation of trade secrets and violation of unfair competition arbitration proceeding against Matrix.

Articles

Intellectual Property Law Blog Posts

• "Don’t Spill Your Trade Secrets: Protecting Your Competitive Advantage in the Food and Beverage Industry (Part 2 of 2)," July 22, 2019
• "Don’t Spill Your Trade Secrets: Protecting Your Competitive Advantage in the Food and Beverage Industry (Part 1 of 2)," July 17, 2019