Tim Capria’s practice focuses on acquiring intellectual property, patent opinion practice and enforcing intellectual property rights. Tim manages international trademark portfolios each consisting of hundreds of trademarks worldwide. He advises clients in efficient and effective monitoring and enforcement of trademark rights, including navigating protection and strategies in popular online marketplaces. Tim helps clients with brand selection and clearance and assists clients in obtaining trademark registrations in the U.S. and abroad. He has successfully represented clients in over a dozen Trademark Trial and Appeal Board (TTAB) proceedings. His experience includes representing a national franchise retailer against a major sporting goods manufacturer in a highly publicized federal trademark infringement lawsuit, and he has successfully defended clients accused of trademark infringement.
Prior to joining Bradley, Tim clerked with Amazon.com, Inc. in Seattle, Washington, in its Intellectual Property Acquisition and Investments group. His technical background is in the life sciences, and he has worked as a laboratory technician for one of the world’s largest medical device and diagnostic companies.
Listed in Chambers USA, Intellectual Property, 2021-2023 Listed in The Best Lawyers in America® Trademark Law, 2022-2023 Ones to Watch, Intellectual Property Law, 2021 Listed in WTR 1000 as “Recommended,” 2023 Bradley Diversity Leadership Award, 2022 Honored as an “Attorney for Justice” by the Tennessee Supreme Court Access to Justice Commission, 2019 President’s Award, Nashville Bar Association, 2018 Retail brand counseling Counseled national food manufacturer regarding brand best practices and potential strategies to support manufacturer’s nationwide sales to a major warehouse club. Retail and alcohol Trademark Trial and Appeal Board (TTAB) proceedings Represented multiple brand owners in numerous opposition and cancellation proceedings before the TTAB, including proactive cancellations of existing trademark registrations to eliminate uncertainty and strengthen brand owners’ marks. Apparel on-demand manufacturer and retailer Serve as intellectual property counsel for an apparel on-demand manufacturer and retailer client, including assisting the client in identifying and documenting inventions, preparing and prosecuting patent applications, brand counseling, trademark filing and prosecution, and advising on complex issues of licensing and ownership of client’s intellectual property assets. Medical device patent preparation and prosecution Manage domestic and international patent portfolio of a leading medical device company and start-up medical device companies. Prepare new patent applications and prosecute pending patent applications to secure issued patents on medical devices, including medical devices implementing executable computer software. Nutraceuticals patent preparation and prosecution Managed domestic and international patent portfolio of a major infant formula manufacturer. Prepare new patent applications and prosecute pending patent applications to secure issued patents on formulations and containers. Freedom to operate and non-infringement opinions Advise clients of patent landscape by drafting dozens of freedom to operate and non-infringement opinions for proposed product launches in the U.S. and abroad. Trademark portfolio management Manage large trademark portfolio of premier manufacturer of bathroom products, including filing strategy, filing new applications for registration, prosecution of pending applications for registration, and maintenance of existing registrations. Cross border patent procurement Coordinate strategy and manage international patent application prosecution for dozens of patent applications in Europe, Japan, China, Canada, Australia, New Zealand, Taiwan, Brazil, India, Mexico, Argentina, Chile, India, and United Arab Emirates, among other jurisdictions. Advise non-U.S. attorneys and their clients regarding obtaining patent protection in the U.S., and represent the non-U.S. clients before the United States Patent and Trademark Office. Cross border trademark procurement Advise on, procure, and manage international trademark protection for a leading manufacturer of bathtubs, shower units, and spas. Assist non-U.S. attorneys and their clients in obtaining U.S. trademark protection. Privacy policy Counsel Fortune 1000 construction materials company regarding updating its website and mobile application privacy policy. Transactional work Perform due diligence for worldwide intellectual property in relation to an asset sale. Textbook copyright issues Advised co-author of a mathematical textbook concerning copyright issues related to rights of a co-author and publisher. Competitive patent search analyses Perform patent and patent application landscape searches for recently issued patents and filed patent applications by competitors and advise client regarding search results. Monitor and counsel client regarding newly filed patent applications and issued patents on an ongoing basis. Trademark knockout search Perform numerous trademark clearance searches to advise clients regarding adoption and registration of proposed marks.
