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Carolyn S. Toto, Partner

Carolyn S. Toto

Partner
Los Angeles

Partner, Los Angeles

T: +1.213.488.7238
T: +1.213.488.7238

Areas of Focus

[Carolyn] affords the highest level of representation and provides key insights on strategy [and is] detail oriented and maintains a mastery of all aspects of her cases.
—World Trademark Review 1000 (2020)

Carolyn Toto, a Pillsbury Intellectual Property partner, litigates in state and federal courts and provides strategic counseling to optimize and protect the value of clients’ IP portfolios.

Carolyn advises technology industry leaders on all aspects of IP litigation and enforcement, strategic prosecution and portfolio management, and licensing. She has successfully resolved patent, trademark, trade secret and copyright infringement cases through jury trial, on appeal and by negotiated settlement. Carolyn has obtained patent and trademark protection for clients in various industries, including health care, robotics, automotive, consumer products, chemical manufacturing and restaurant services in jurisdictions worldwide. Well versed in the legal issues involving social media, online content distribution and advertising, and virtual worlds and digital assets, including the Metaverse and NFTs, Carolyn co-leads the firm’s Internet and Social Media team and manages the firm’s Internet & Social Media Law blog.

Representative Experience

  • Providing ongoing strategic patent prosecution and counseling for various technology companies including a global imaging technology company, a medical device company and an avionics company.
  • Providing global trademark prosecution and counseling related to brand portfolios of major companies in various industries, including handling trademark oppositions before the Trademark Trial and Appeal Board.
  • Providing ongoing counseling to gaming companies and mobile applications developers on issues relating to intellectual property and privacy issues.

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  • Represented the plaintiff in a successful patent infringement case filed in the Eastern District of Texas involving a medical device used in pacemaker implantation that was tried to a jury and resulted in a finding of validity and infringement for the client.
  • Served as lead counsel and successfully represented a popular restaurant chain in a trademark, unfair competition and false advertising case filed in the Central District of California against a large competitor that settled after a favorable summary judgment ruling.
  • Serve as lead counsel in charge of expert discovery for a large plumbing parts manufacturer in a string of nationwide class actions alleging product liability engineering claims.
  • Achieved a successful settlement for a children’s entertainment company in a copyright infringement case filed in the Central District of California concerning a popular animated television series.
  • Obtained default judgment for a Mexican restaurant chain against a competitor in a trademark infringement and unfair competition case filed in the Central District of California.
  • Secured favorable resolution and dismissal for a retail store chain in a copyright infringement case filed in the Middle District of Florida involving solar-powered toys.
  • Secured favorable resolution and dismissal for cloud services and digital media company in a patent infringement case filed in the Eastern District of Texas involving cloud storage technology.
  • Secured favorable resolution and dismissal for an inventor and entrepreneur in a patent infringement case filed in the Central District of California involving food processing.
  • Secured favorable resolution and dismissal for a dispensed beverages manufacturer in a trademark infringement case filed in the Eastern District of Michigan.
  • Negotiated and achieved favorable resolution and settlement for a European airline in a patent infringement dispute involving website technology.
  • Negotiated and achieved favorable resolution and settlement for an online insurance brokerage company in a trademark infringement dispute.
  • Negotiated and achieved favorable resolution and settlement for a professional football league in a trademark infringement dispute.
  • Negotiated and achieved favorable resolution and settlement for a global medical supply company related to various trademark infringement disputes, including negotiating settlement and coexistence agreements and handling trademark oppositions.
  • Providing ongoing brand enforcement for a large manufacturer of aftermarket automotive parts, including negotiating settlement and coexistence agreements and handling trademark oppositions.
  • Providing ongoing brand enforcement for various restaurant industry clients, including negotiating settlement and coexistence agreements and handling trademark oppositions.
  • Providing ongoing brand enforcement for a global restaurant chain, including negotiating settlement and coexistence agreements and handling trademark oppositions.
  • Achieved a successful settlement for a popular retail chain in a trademark infringement case filed in the Central District of California relating to footwear.
  • Achieved a successful settlement for a financial services and loyalty rewards company in a trademark infringement case filed in the Southern District of New York.

Professional Highlights

  • Recognized by World Trademark Review 1000 (California) for Enforcement & Litigation work (2020 – 2024).
  • Named as one of Los Angeles’ 75 Most Influential Woman Lawyers by the Los Angeles Business Journal (2019).
  • Recognized as an outstanding litigation attorney by the Los Angeles Business Journal in its annual Top Litigators & Trial Lawyers report (2019).

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  • Honors & Awards
    • Recognized among the top 100 corporate women leaders in STEM by Million Women Mentors Summit in 2017.
    • Honored by Working Mother magazine as the “Working Mother of the Year” in 2013.
  • Speaking Engagements
    • Served as chairperson and provided opening remarks for “’Technotainment’ 2023: Distributing Content Across Multiple Platforms,” at the October 2023 Practising Law Institute program in San Francisco.
    • Co-presented on “NFT Pros and Cons: What Companies Need to Know,” for a Pillsbury webinar on June 28, 2021.
    • Co-presented on “Demystifying NFTs: Securities Law and other Legal Considerations for the Latest Investment Phenomenon” at the American Law Institute Continuing Legal Education program on May 18, 2021.
    • Co-presented on “How Not to Get Sued for Social Media Practices,” at the Social Shake-Up in Atlanta in 2019.
    • Spoke on panel on “Lessons Learned From Leaders, Litigators & Deal-Makers,” at the September 2018 Women’s IP Strategy Summit: Patent Law & Strategy in Silicon Valley.
    • Moderated a roundtable discussion on “Successful Leadership Transitions for Women,” at the November 2017 National Asian Pacific American Bar Association Annual Convention in Washington D.C.
    • Co-presented on “Social Media is Risky” at the Startups In the Sky program on May 18, 2017 in Los Angeles.
    • Presented “NAPABA Women Rising: Learning What It Takes to Make It to the Top,” at the November 2015 National Asian Pacific American Bar Association Annual Convention in New Orleans.
  • Associations
    • Co-Chair, National Asian Pacific American Bar Association (NAPABA) Women’s Leadership Committee (2015-2017)
    • Member, American Bar Association
    • Member, Los Angeles Bar Association
    • Member, National Asian Pacific American Bar Association
    • Member, American Intellectual Property Law Association
  • Firm Publications
    • SCOTUS Holds Rogers Test Is All Bark and No Bite in Jack Daniel’s Trademark Suit Against Dog Toy Maker, Authors: Sam Eichner, Cecilia P. De Armas, Nalani M. Wilson, Carolyn S. Toto, 06/20/2023
    • Hermès’ Trademark Tussle: The Birkin and MetaBirkin Dispute, Authors: Carolyn S. Toto, Aya Hatori, 02/08/2023
    • The Black Box Conundrum: Go Weak or Stay Strong?, Author: Carolyn S. Toto, 08/01/2022
    • Soulbound Tokens: Moving Away from the Hyper-Financialization of Digital Assets, Authors: Carolyn S. Toto, Michael S. Horikawa, Nathan Lewko, 07/20/2022
    • Department of Treasury Study Addresses NFTs, Online Platforms and the Emerging Digital Art Space, Authors: Carolyn S. Toto, Aaron R. Hutman, 02/10/2022
    • A NFT Primer on Potential IP Ownership Legal Issues, Authors: Carolyn S. Toto, Joel Simon, 08/11/2021
    • Episode 35: An NFT Primer on Potential Legal Issues (Carolyn Toto), Speakers: Joel Simon, Carolyn S. Toto, 08.05.2021
    • Can You #Hashtag the Liability Away?, Authors: Carolyn S. Toto, Tannaz Noormohammadi, 08/02/2021
    • Fractionalized NFTs: Breaking Down Investing in Art, Author: Carolyn S. Toto, 03/31/2021
    • Fungible Banksy: NFTs, Copyright and Digital Art Collide with the Burning of Morons, Author: Carolyn S. Toto, 03/08/2021
    • Non-Fungible Tokens and Art that Lives on the Blockchain, Authors: Carolyn S. Toto, Chaz Hales, 02/22/2021
    • Of Platforms and Permissions: Legislation Seeks to Simplify the Menu in Regard to Restaurants and Food Delivery Services, Authors: Carolyn S. Toto, Robert L. Wallan, 12/11/2020
    • Social Media Posting, Copyright Infringement and the Rights Balancing Act, Author: Carolyn S. Toto, 09/29/2020
    • Protecting Elections: Regulating Deepfakes in Politics, Author: Carolyn S. Toto, 08/06/2020
    • California ABC and TTB Provide Guidance to Wineries on Virtual Tastings, Author: Carolyn S. Toto, 06/03/2020
    • Intellectual Property Sharing in Response to COVID-19, Author: Carolyn S. Toto, 05/19/2020
    • COVID-19, COPPA and the CCPA: Educators Face Privacy Questions as Students Move to Remote Learning, Authors: Carolyn S. Toto, Catherine D. Meyer, 04/02/2020
    • The FTC, Kidfluencers and the Looming Challenge of Child-Proof Disclosures, Author: Carolyn S. Toto, 03/10/2020
    • CCPA, GDPR and the Future of Cross-Device Tracking, Authors: Carolyn S. Toto, Catherine D. Meyer, 07/29/2019
    • Hashing Out the Differences: Hashtag-Powered Promotion or Trademark Infringement? , Author: Carolyn S. Toto, 01/22/2019
    • On Baseball, Bobbleheads and … Blockchain?, Authors: Chaz Hales, Carolyn S. Toto, 10/23/2018
    • Keeping a Handle on Social Media Management by Employees, Author: Carolyn S. Toto, 10/16/2018
    • When Do the Perils of Programmatic Advertising Undermine Its Value?, Authors: Carolyn S. Toto, Monica Parra, 06/19/2018
    • Boeing Decision Forges New Balance Between NLRA Rights and Social Media Policies, Author: Carolyn S. Toto, 01/17/2018
    • Can a Software Developer Copyright the Output of Its Software?, Author: Carolyn S. Toto, 11/28/2017
    • Stumbling “Blocks”: When Is Social Media Moderation a First Amendment Violation?, Author: Carolyn S. Toto, 08/07/2017
    • The “Commander-in-Tweet” and the First Amendment, Author: Carolyn S. Toto, 07/05/2017
    • Internet Vino Veritas: Rules and Guidelines for Social Media Efforts Related to Alcohol Sales, Author: Carolyn S. Toto, 04/03/2017
    • The Freedom to Yelp: Congress Curbs ToS Overreach, Author: Carolyn S. Toto, 12/12/2016
    • When It Comes to the DMCA, a Red Flag Becomes Harder to Fly, Author: Carolyn S. Toto, 11/14/2016
    • Murky Media: How Companies and Celebrities May Fall Short of the FTC’s “Clear and Conspicuous” Standard, Author: Carolyn S. Toto, 09/15/2016
    • Should Social Media Have a Role in Mergers and Acquisitions?, Author: Carolyn S. Toto, 09/12/2016
    • Beacons, Basketball and the App that Hears Too Much, Authors: Kimberly Buffington, Carolyn S. Toto, 09/06/2016
    • Pokémon Go Ushers in a New, Augmented World of Legal Liability Concerns, Author: Carolyn S. Toto, 07/14/2016
    • Warner Bros.’s “Paid to Play” Disclosures Draw FTC Action, Author: Carolyn S. Toto, 07/13/2016
    • Six Ways Site Design Can Potentially Render TOS Agreements Unenforceable, Authors: Carolyn S. Toto, Kimberly Buffington, 06/14/2016
    • Clickwrap Kryptonite: Don’t Let Site Design Undermine Your TOS, Authors: Carolyn S. Toto, Kimberly Buffington, 06/09/2016
    • How Binding Is Your Browsewrap Agreement?, Authors: Carolyn S. Toto, Kimberly Buffington, 06/06/2016
    • Hulk Hogan’s Legal Leg Drop Sets Precedent for Celebrity Journalism, Authors: Kimberly Buffington, Carolyn S. Toto, 05/31/2016
    • FTC Guidance: Update Privacy Disclosures to Keep Pace with Advances in Online Tracking, Author: Carolyn S. Toto, 05/02/2016
    • Do Kanye’s Words Speak Louder than Tidal’s TOS?, Authors: Carolyn S. Toto, Kimberly Buffington, 04/25/2016
    • From Ashley Madison to the Panama Papers: Is Hacked Data Fair Game?, Authors: Elaine Lee, Carolyn S. Toto, Kimberly Buffington, 04/22/2016
    • Rehearing Denial Leaves ITC’s Jurisdiction Tethered to the Material World, Authors: Carolyn S. Toto, Kimberly Buffington, 04/06/2016
    • Google and Oracle Agree to Ban Internet Research on Jurors … this Time Around, Authors: Carolyn S. Toto, Kimberly Buffington, 04/04/2016
    • The Dancing Baby Returns: Computer Algorithms, Good Faith and Fair Use, Author: Carolyn S. Toto, Kimberly, 03/30/2016
    • The FTC Act and the Importance of Staying Transparent, Authors: Kimberly Buffington, Carolyn S. Toto, 03/28/2016
    • Lord & Taylor Case Shows the Importance of Transparency in Advertising, Authors: Kimberly Buffington, Carolyn S. Toto, Lauren Lynch Flick, Lori Levine, 03/24/2016Rolls-Royce & the Rapper: Social Media Activity Helps Decide a Trademark Tussle, Authors: Carolyn S. Toto, Kimberly Buffington, 03/23/2016
    • Google Searches & Jury Selection: What Role Should Social Media Have in Voir Dire?, Authors: Carolyn S. Toto, Kimberly Buffington, 03/21/2016
    • 50 Cent Breaks the Golden Rule of Social Media Posting, Authors: Carolyn S. Toto, Kimberly Buffington, 02/29/2016
    • The Case of the Hacked Hospital: When a Cyber Breach Becomes a Health Crisis, Authors: Carolyn S. Toto, Kimberly Buffington, 02/25/2016
    • The ITC Tries an En Banc Shot to Redefine Its Regulatory Authority, Authors: Carolyn S. Toto, Kimberly Buffington, 02/03/2016
    • Uber and Lyft Choose Different Routes in Navigating Legal Challenges, Authors: Kimberly Buffington, Carolyn S. Toto, 02/01/2016
    • Shielding Your Patent from “Abstract” Reasoning, Authors: Carolyn S. Toto, Josh Tucker, 12/07/2015
    • Traditional Discovery Rules Still Apply in Disputes Involving Social Media, Authors: Kimberly Buffington, Carolyn S. Toto, 09/14/2015
    • The Evolving Role of the Hashtag in Trademark Law, Authors: Kimberly Buffington, Carolyn S. Toto, 09/08/2015
    • Twitter and the (Alleged) $10 Million Tweet, Authors: Kimberly Buffington, Carolyn S. Toto, 08/31/2015
    • Twitter, the DMCA and Copyright in the Age of Sharing, Authors: Kimberly Buffington, Carolyn S. Toto, 08/19/2015
    • The Growing Scrutiny of Social Media by U.S. Courts and Agencies, Authors: Kimberly Buffington, Carolyn S. Toto, 08/17/2015
    • Ashley Madison and Coming to “Terms” with Data Protection, Authors: Kimberly Buffington, Carolyn S. Toto, 08/11/2015
    • Avoiding Uber Trouble via Good Terms of Service, Authors: Kimberly Buffington, Carolyn S. Toto, 08/03/2015
    • Angie’s List Accuses Amazon of Home Improvement Hijinks, Authors: Carolyn S. Toto, Kimberly Buffington, 07/28/2015
    • Social Media Adds Kick to Beer-Themed Trademark Battle, Authors: Carolyn S. Toto, Kimberly Buffington, 07/24/2015
    • Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications., Authors: Carolyn S. Toto, Mark R. Kendrick, Bobby Ghajar, 05/22/2014
    • What You Should Know About Electronic Subscriptions and Copyright Law: A Best Practices Guide, Authors: Carolyn S. Toto, Mark R. Kendrick, 08/19/2013

Education

  • J.D., University of California, Hastings College of the Law, 2004

    B.S., Microbiology & Molecular Genetics, University of California, Los Angeles, 1999

Admissions

  • California

    U.S. Patent and Trademark Office

Courts

  • U.S. Court of Appeals for the Federal Circuit

    U.S. District Court for the Central District of California

    U.S. District Court for the Southern District of California

    U.S. District Court for the Northern District of California

    U.S. District Court for the Eastern District of Texas

Carolyn's Insights

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