[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 the value of clients’ IP portfolios.

Carolyn advises technology industry leaders on all aspects of IP litigation, 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 healthcare, robotics, 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 digital assets including 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.

Professional Highlights

  • Named as one of Los Angeles’ 75 Most Influential Woman Lawyers by the Los Angeles Business Journal (2019).
  • Recognized by World Trademark Review 1000 (California) for Enforcement & Litigation work (2020—2021).
  • 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
    • 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.
    • 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

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

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 Eastern District of Texas

    U.S. Patent and Trademark Office