Robert Michaux is a member of the firm’s Intellectual Property and Litigation departments. He regularly assists and advises corporate and small business clients with copyright and trademark matters, and represents clients with these “soft IP” issues before courts and administrative agencies. He also assists clients with securing, enforcing and maintaining trademark registrations in both the U.S. and in numerous international jurisdictions. In addition, Mr. Michaux has experience in a diverse range of commercial litigation disputes in both state and federal courts, including copyright and trademark infringement actions, trade secret misappropriation, unfair competition, false advertising cases, business tort and conspiracy claims, contract, real estate, and tax credit matters, and declaratory judgment actions.
Mr. Michaux is active in bar leadership and currently serves as an officer on the Intellectual Property and Information Technology Law Section Council for the Virginia Bar Association, and on the Board of Governors for the Virginia State Bar’s Intellectual Property Law Section. He also is a past president of the Greater Richmond Intellectual Property Law Association. In addition, he regularly writes and speaks on issues in copyright and trademark law, and is the author of a legal treatise chapter on unique and specific applications of copyright law online.
PRACTICE AREAS
Intellectual Property
Intellectual Property Litigation
Trials / Appeals / Alternative Dispute Resolution
ADMISSIONS
• Virginia
• U.S. District Court for the Eastern District of Virginia
• U.S. District Court for the Western District of Virginia
• U.S. Court of Federal Claims
Representative Litigation Matters
• Representation of federal trademark registrants and applicants in opposition and cancellation proceedings before the Trademark Trial and Appeal Board at the USPTO.
• Representation of trademark owners in infringement cases in federal district courts.
• Representation of franchisee in trade secret misappropriation and business tort and conspiracy case in state court.
• Defense of an online advertiser in trademark infringement action in the Eastern District of Virginia.
• Representation of real estate developer in declaratory judgment action concerning rehabilitation tax credits in state court.
• Defense of software developer in copyright authorship and ownership dispute in the Eastern District of Virginia.
• Representation of conservation easement donors in declaratory judgment action regarding land preservation tax credits in state court.
• Representation of software developers in copyright infringement suits in federal courts.
• Representation and defense of business owners in derivative and dissolution suits in court and in arbitration and mediation proceedings.
Representative Intellectual Property Matters
• Advising clients on branding decisions and with the clearance, selection, and adoption of trademarks and service marks.
• Filing applications for and maintaining trademark registrations before the USPTO, and in foreign jurisdictions, including Canada, Mexico, European Union, United Kingdom, and WIPO, and other countries in Africa, Asia, Central and South America, and Europe.
• Assisting copyright and trademark owners with policing and enforcement efforts, including writing and responding to cease and desist letters, and drafting and negotiating assignments, concurrent use agreements, and licensing agreements.
• Providing advice on copyright authorship, ownership, and fair use matters, and filing copyright registration applications.
• Responding to Office Actions from the USPTO.
University of Richmond School of Law, J.D., 2010
Editor-in-Chief, Richmond Journal of Law & Technology
Virginia Commonwealth University, B.S., Chemistry, 1996
PROFESSIONAL AFFILIATIONS
Virginia State Bar
• Intellectual Property Law, Board of Governors, 2017-present
Virginia Bar Association
• Council Member, Intellectual Property and Information Technology Law Section, 2020-present
The Bar Association of the City of Richmond
Greater Richmond Intellectual Property Law Association
• President, 2016-2017
International Trademark Association
Builders' Exchange Association of Virginia
• Board, 2014-present
Virginia Rising Stars
• Business Litigation, 2018-2020
• Intellectual Property, 2017
Legal Elite (Virginia Business)
• Intellectual Property, 2014, 2017, 2019-2020, 2022
SELECT PUBLICATIONS
• Extraterritorial Use of Domestic Trademarks is Now Beyond the Reach of the Lanham Act, 2023
• Understanding Generative AI and Trademark Infringement Risks, 2023
• Quoted, "Complexity, Ambiguity From Tech Innovations Spark Legal Opportunities," Virginia Business, May 2023
• Changes Made to Virginia Consumer Data Protection Act Enacted Before Its Effective Date, 2022
• The Copyright Claims Board: Key Considerations in This Alternative Venue for Small Copyright Disputes, 2021
• Preparing Your Business for Compliance with Virginia’s New Consumer Data Protection Act, 2021
• “What May Be Protected by Copyright: Unique and Specific Applications of Copyright Law Online,” Intellectual Property Law in Cyberspace, (2d ed., Supp. 2013-2016; 3d ed. 2017; 3d ed., Supp. 2018, Supp. 2019)
SELECT PRESENTATIONS
• Speaker, “Doc in a Box: How Artificial Intelligence is Changing Healthcare and Health Law," Virginia Bar Association Summer Meeting, 2021
• Speaker, “The Year in Intellectual Property and Information Technology Law,” Virginia Bar Association Summer Meeting, 2019
• Panelist, “Litigating IP Cases in the Eastern District of Virginia,” 30th Annual Intellectual Property Seminar, Virginia CLE, 2018