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We provide a full range of services related to Intellectual Property, Patent, Trademark, Copyright, Trade Secret, Unfair Competition, Franchise, Insurance Coverage, and Licensing Law. We also litigate Complex Business cases.
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Surjit Soni vCard
Attorney at Law
Surj is respected as a litigator and his achievements on behalf of clients and the quality of legal representation he provides have been chronicled in a number of published decisions.

Surj has over four decades of business management and marketing experience, including extensive experience in international trade, finance and U.S. Government regulatory procedures. His extensive business experience has been effectively applied in diverse transactional and litigation settings.

University of Miami School of Law,
• J.D. (Cum Laude), 1984
• Recipient: Society of Wig and Robe;
• Moot Court Board
• Award of Distinction
University of Toronto, B.Sc., Physiology, 1974

Sheldon & Mak, Inc. Pasadena, CA, 1986-1999
Partner since 1989
Senior Partner since 1991
Head of Litigation Group

Satnam Enterprises, Inc. 1980-1986
Vice-President Operations

Paul Soni Of America, Inc. 1974-1980
Vice-President Technical Services

Admissions & Affiliations

State Of California
U.S. District Court for the Central District California
U.S. District Court for the Northern District of California
Fourth Circuit Court Of Appeals
Eighth Circuit Court of Appeals
Ninth Circuit Court Of Appeals
Tenth Circuit Court of Appeals
Eleventh Circuit Court of Appeals
Court Of Appeal For The Federal Circuit


American Bar Association
• International Trade Comm Subcomm. (1991-1994)
• Patent, Trademark & Copyright Comm.(1991- Present)
• Product Simulation and Functionality Subcomm.

American Intellectual Property law Assoc.
California Trial Lawyers Assoc. (1992-1996)
Complex Litigation Inn of Court - Founder, Pres. (1993-1996)
Continuing Education of the Bar
• Business Law Advisory Comm. (1992-Present)
• Trial Practice - Advisory Comm. (1992-Present)

Federal Bar Association - Dir. (1992-Present)
Indian Lawyers Association - Founding Dir.
Licensing Executive Society (1989-1994)
• Technology Acquisition Comm.

Los Angeles County Bar Assoc.
• Litigation Section - Exec. Comm. (1992-1995) & Programs Chair (1993-1994)

Pasadena Bar Assoc. (Past-Director) (1988-1991)
• Pasadena Young Lawyers Assoc, (Past-Pres.) (1987-1989)

Southern California Defense Counsel
The State Bar of California
• Intellectual Property Section (Executive Comm.) (1989-1992) United States Trademark Assoc.

Program Chair:
"Intellectual Property in State Courts",
A 3 day program presented to the California Judges Association & Intellectual Property Section of State Bar of California
"Emerging Issues In Intellectual Property",
For a half-day program presented 5 times for CEB between April, 1994 and Aug., 1994
"Emulation Without Infringing: The American Experience";
European Studies Conference (Oct. ’90, London, England)

"Trade Dress, Packaging and Labeling"
European Studies Conference (Oct. ’90, London, England)

"Avoiding Trade Dress and Product Configuration Infringement";
State Bar of California, Intellectual Property Section (April ’91)

"Malpractice Issues re: Intellectual Property in International Business Transactions";
State Bar of California, Intellectual Property Section (Feb. ’92)

"Trade Secrets," CEB, 5 programs circuit 1994
"Arbitrating and Mediating Intellectual Property and Complex Business Disputes,"
Matthew Bender & San Francisco Bar Association (April 1999)

Adjunct Professor & Guest Lecturer:
Southwestern University School of Law;
La Verne University School of Law Intellectual Property Course;
Trademark, Copyright, State Claims & Litigation
The Los Angeles Daily Journal:
Inconsistent ’Trade Dress’ Decisions Create Confusion" (Dec. ’87)
"Complex Patent Litigation Made More Complex" (Apr. ’89)
Refac Learns a Tough Lesson" (Apr. ’89)
"Protection of Trade Dress" (Oct. ’90)
"You Can Protect Distinctive Product Packaging" (Jan. ’91)

Trademark World:
"Trade Dress and Unfair Competition: What Are the Rules?" (Apr. ’88)

The Legal Intelligencer:
"A Patent Infringement Suit that Backfired" (Apr. ’89)

Best’s Review: "Patently Offensive Claims" - (Apr. ’89)

CEB Business Law Reporter:

Copyright Registrations:

Easy To GetBut Not Always Upheld (June ’92)
Defining Fairness - A Year in Review (Oct. ’92)
The Supreme Court Puts In Its "Two Pesos" on Trade Dress (July ’92)
"Trademark Infringement liability Gets Real Personal (April ’92)
Transactions (Or Avoiding International Ineptness) (April ’92)
"Copyright Protection for Computer Software - What Exactly Is protected?"
"Malpractice Issues In Relation To International Business"
"Trade Dress and Unfair Competition: Who Has the Rule Book?"

"California Intellectual Property Handbook" Matthew Bender;

"NEW MATTER" Newsletter of the State Bar of Ca. Intellectual Property Law Section (1987-91)

Contributing Editor:

Intellectual Property:
Business Law Reporter; CEB

Consulting Editor:
"Competitive Business Practices" 2nd Ed.; CEB;
"Proof in Competitive Business Litigation", CEB;
California Civil Practice", Bancroft Whitney;
"Civil Practice Before Trial" 3d Ed., CEB
Some Key Legal Considerations in Drafting Technology Transfer Agreements by Joel D. Bonfiglio
A New Way of Defending Copyright - Infringement Cases, by Andrew Won

Locomotor v. Korus Company. Represented defendant in trademark, trade dress, trade secret, unfair competition, interference and breach of contract. Summary judgment on all counts obtained for client.

Pan-Asia v. Ng Hing Kee. Copyright infringement action in which client counterclaimed for anti-trust violation. Heavily litigated; initial claims on 504 works reduced to 42. Plaintiff offered to settle without recovery.

Adizes v. Faust. Substituted in on behalf of plaintiff after prior counsel was unsuccessful in maintaining claims. Settled with payment to plaintiff client and restrictions on defendants.

Miller Freeman v. Business Incentives. Trademark action against the plaintiff client. Settled. Client made whole through insurance coverage.

ATS v. State Farm. Insurance bad faith claim. Insurer offered to settle by payment of claim.

Sunburst Products v. Phillip Morris Co. Design Patent, trade dress, unfair competition case against producer of MARLBORO cigarettes over infringement of design of a waist pack through advertising, distribution of waist pack in conjunction with the Marlboro Adventure Team promotion campaign. Settled with Phillip Morris paying $520,000.

Sunburst Products v. CYRK International, Inc. Trade Dress and unfair competition action against supplier to Phillip Morris, producer of MARLBORO cigarettes over infringement of design of a waist pack through sale to Philip Morris of waist pack in conjunction with the Marlboro Adventure Team promotion campaign. Tried to jury with jury determining that Sunburst lost profits of $920,000. Judgment for Plaintiff.

O’Well Novelty v. Department 56 Declaratory relief action to establish non-infringement of copyrights claimed in porcelain houses. Case settled without an acknowledgment of any liability and without any payment to claimant.

Countdown Clocks, Inc. v. Suncoast Merchandise Corp. Trade Dress claim over the shape of a plastic desk clock. Plaintiff lost on preliminary injunction and elected to dismiss rather than pay client it’s fees and costs.

S.C. Johnson v. Victory Wholesale Grocers; Clorox v.Victory Wholesale Grocers; L & F Products v. Victory Wholesale Grocers Client was sued for trademark infringement after having been sold counterfeit Windex, Clorox and Mop & Glo. Case settled with plaintiffs and client being paid by counterfeiter. Client paid nothing and was vindicated in its claim that it was victimized. Client recovered all losses including attorneys’ fees incurred in connection with the three cases over a two and a half year period.

Sunburst Products, Inc v. M.Z. Berger Trade dress infringement action over watch designs. Client was plaintiff and succeed on preliminary injunction. Case settled with infringer paying $100,000 and terminating infringing activities.

Sunburst Products, Inc. v. Reebok Int’l, Inc. Trade dress case regarding watch designs. Client prevailed and Reebok terminated infringements.

Dreamwerks Production Group v. DreamWorks SKG Trademark infringement case involving reverse confusion issues. Obtained reversal of a summary judgement On appeal.

Speakercraft Inc. v. Northbrook Ins. Insurance coverage litigation. Settled with carrier paying $600,000.

Sonance v. Speakercraft, Inc. Trade secrets litigation. Settled with plaintiff paying client over $300,000.

Soannce v. Speakercraft, Inc II Patent infringement and trade dress infringement action. Settled with plaintiff paying client $150,000.

Emirates Airlines v. Emirates Travel, Inc. Trademark infringement and cancellation action. Settled with palintiff purchasing the mark for $450,000.

Refac v. Hitachi, a patent infringement action in which the firm represented 18 out of 118 named defendants. Secured a judgment of non-infringement, which applied to all 118 named defendants. The Court of Appeals for the Federal Circuit affirmed awarding fees and double costs to Sheldon & Mak’s clients. On remand, on the cross appeal filed on behalf of clients, plaintiffs were declared to have violated Rule 11 of the Federal Rules of Civil Procedure and recovered all of defense fees and expenses.

Price Pfister v. Pioneer Industries, Inc. (trademark infringement, unfair competition litigation: Retained 30 days before trial upon disqualification of prior counsel)

Ensotech v. Thio (Judgment for plaintiff $121,00)

Free Style v. Advance Watch Company, et al. - trade dress infringement action. Successfully obtained preliminary injunction on behalf of plaintiff, which was sustained by the Ninth Circuit in 5 concurrent appeals. Settled matter on very favorable terms for client.

Microsoft v. Wugo - complicated breach of contract, and alleged trademark counterfeiting matter. Represented defendants and countersued for R.I.C.O. and various other claims. Obtained insurance coverage for defendant, and the case was settled for a fraction of the initial demand, with the insurance carrier paying the bulk of the settlement.

Alfred Dunhill Co. v. American Economy Ins. Action on a judgment against insurance carrier of defendant, REBOAN’s on a $300,000 judgment. Collected $320,000.

Montblanc v. Prime Trading Trademark, trade dress infringement action resulting in a judgment for client in the amount of $42,000. Total of $90,000 collected on the judgment.

Material World v. General Motors, Inc. Copyright infringement action. Settled with General Motors paying over $160,000 in cash and services.

Multiple and Various Matters: Insurance tenders and prosecution on behalf of clients to secure coverage, defense reimbursement, and indemnification with respect to intellectual property matters. High recovery rates.

Serviced numerous clients in the acquisition and sales of businesses.

Negotiated and drafted contracts and agreements, licenses.

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