Matthew J. Schonauer

Counsel

Matt’s practice focuses on intellectual property prosecution. He has a variety of experience with federal trademark and copyright registration, patent prosecution, patent, trademark and copyright infringement litigation, trademark licensing, UDRP domain name disputes, and the representation of clients in Trademark Trial and Appeal Board (TTAB) proceedings. His practice includes the preparation and prosecution of domestic and international patent applications involving mechanical, electrical, aviation device, medical device, food and beverage preparation, business method, artificial intelligence, and software inventions. He also counsels clients on nationwide trademark licensing programs, branding strategies, Amazon marketplace disputes and brand protection, and international intellectual property portfolio protection.

Prior to obtaining his law degree, Matt gained engineering and technical experience while working in the printed circuit board, quality control, network consulting, software development, and mechanical product design industries.

Education & Admissions

Education

  • Purdue University School of Engineering and Technology

    (B.S., Mechanical Engineering, 2007)

  • Butler University

    (B.S., 2007)

  • The Ohio State University Moritz College of Law

    (J.D., 2010)
    CALI Award for Legislation Intellectual Property Law Society Member

Admissions

  • State of Ohio
  • U.S. District Court, Southern District of Ohio
  • U.S. District Court, Northern District of Ohio
  • U.S. Court of Appeals, Sixth Circuit
  • Federal Circuit Court of Appeals
  • U.S. Patent & Trademark Office

Experience

REPRESENTATIVE EXPERIENCE

  • Prepared and prosecuted domestic and foreign patent applications in mechanical, material sciences, artificial intelligence, electronic integrated circuits, optics, and software fields.
  • Negotiated and prepared distribution and nondisclosure contracts.
  • Counsels clients on trademark matters, regional licensing agreements, and national portfolios.
  • Litigated intellectual property, business, and privacy related claims on behalf of clients, including federal trial and appellate representation.
  • Counsels clients and negotiates with trademark owners in trademark disputes.
  • Counsels clients with respect to trademark use, clearance, and transfer.
  • Counseled clients in the management of domestic and international patent prosecution portfolios, invention disclosures, competitive marketplace analyses, and infringement or freedom to operate opinion drafting.
  • Counseled clients and negotiated with third parties with respect to invention licensing and sale.
  • Served as trial counsel and second chair in litigation cases concerning copyright infringement, unfair competition and trademark infringement, patent infringement, and trade secrets.
  • Secured a seven-figure jury verdict for the plaintiff in a trademark infringement and unfair competition trial in federal court.

Publications & Presentations

Publications

  • “Let the Babies Dance: Strengthening Fair Use and Stifling Abuse in DMCA Notice and Takedown Procedures,” 7 I/S: A Journal of Law & Policy for the Information Society 135 (2011)
  • “Lamebook Pokes Facebook,” Ohio State Bar Association’s Intellectual Property Section Newsletter (Spring 2011)
  • “Specimen Specificity: In re Anpath Group, Inc., Ohio State Bar Association’s Intellectual Property Section Newsletter (Summer 2011)
  • “How Safe is the Harbor? The Impact of the YouTube Decision on DMCA Safe Harbor Protections, Ohio State Bar Association’s Intellectual Property Section Newsletter (Summer 2012)
  • “Dysfunction Junction,” Ohio State Bar Association’s Intellectual Property Section Newsletter (Fall 2013)
  • “Trademark Modernization Act,” Ohio State Bar Association’s Intellectual Property Section Newsletter (Spring 2022)

Involvement

PROFESSIONAL AFFILIATIONS

  • Ohio State Bar Association, Intellectual Property Section (Former Chairman)
  • International Trademark Association
  • Columbus Intellectual Property Law Association