Caiola & Rose

Jimmy began his legal career and developed his expertise in trademark law at a top international law firm in Atlanta, where he practiced for over eight years on one of the largest trademark and copyright practice teams in the country.

Jimmy concentrates his practice in the areas of trademark litigation and prosecution, as well as advertising, copyright, and unfair competition. Jimmy has significant experience representing clients in intellectual property disputes in federal courts throughout the country, before the Trademark Trial and Appeal Board, and in arbitration. Jimmy also counsels clients in a variety of industries—including franchising, food and restaurant, retail, healthcare, social media, consumer products, and telecommunications—concerning the protection and enforcement of their intellectual property rights and advertising issues.

Jimmy is actively involved with the International Trademark Association, where he has served as a member of the Unreal Campaign Committee since 2016. Jimmy also serves as Liaison to the American Bar Association Forum on Franchising from the American Bar Association Section of Intellectual Property Law, and he is a member of the Franchise and Distribution Law and Intellectual Property Law Sections of the State Bar of Georgia.

Jimmy was recognized as a Georgia “Rising Star” in 2017, 2018, and 2019 for Intellectual Property Litigation by Super Lawyers magazine, and he is admitted to practice in all Georgia’s state, superior, and appellate courts, as well as the United States District Court for the Middle and Northern Districts of Georgia.

Prior to entering private practice, Jimmy interned with Judge William S. Duffey of the Northern District of Georgia. During law school, he was on the editorial board of the Case Western Law Review, and he worked as a judicial extern for Judge Kathleen O’Malley of the Northern District of Ohio. Before law school, Jimmy served for two years as a Peace Corps volunteer in Bulgaria.

In addition to his legal practice, Jimmy is an active parishioner at St. Thomas More Church in Decatur. Jimmy is also a volunteer soccer coach with Inter Atlanta FC.

Selected, Representative Experience:

• Nationwide trademark enforcement for several large franchise systems.

• Trademark clearance and prosecution for a variety of clients.

• Representation of a wide variety of clients in domestic opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

• Nationwide enforcement of de-identification and post-termination noncompete clauses on behalf of large franchise systems.

• Year-long secondment with the in-house legal advertising team of a large, multinational telecommunications company, providing counsel on a wide spectrum of advertising issues.

• Successful enforcement of right of first refusal to purchase trademark rights, eliminating geographic concurrent restriction on franchise company’s service mark registrations and creating national trademark rights.

• Successful enforcement of trademark and trade dress rights, through trial and final judgment, against a knock-off fragrance company.

• Preliminary injunction against a franchisee who was referencing his affiliation with the franchisor’s franchise system, without the franchisor’s authorization, in order to promote the services of the franchisee’s side business.

• International enforcement of retail company’s trademark rights against a copycat infringer in Dubai.

• Successful defense, through settlement following discovery, of a multi-jurisdiction dispute between two large food-related retail companies involving conflicting trademark claims.

• Successful settlement, following submission of summary judgment papers, of clothing company’s priority dispute concerning clothing logos.

• Successful coordination of large-scale enforcement efforts against infringing search engine advertisements on behalf of nationwide franchisor.

• Successful arbitration to discharge a novelty company’s obligations under an onerous, perpetual trademark license agreement.

• Successful defense of a class action lawsuit against a food manufacturer alleging false advertising claims arising from the manufacturer’s “trans fat” product labeling claims.

Education: 

• Case Western Reserve University School of Law, J.D. (2009) cum laude

• University of Missouri, B.A., History (2000)

Representative Publications and Speaking Engagements:

• Presenter for a CLE presentation on “Franchise Systems in Transition: Trademark, Contractual and Relationship Issues,” sponsored by the Franchise and Distribution Section of the State Bar of Georgia (December 5, 2018)

• Panel Moderator for a CLE presentation on “False Advertising, Domestically and Internationally,” sponsored by the Intellectual Property Law Section of the State Bar of Georgia (April 14, 2015)

• Panelist for “INTA’s Careers in Trademark Law,” sponsored by the International Trademark Association and Mercer Law School (February 25, 2014)

• Presenter for a CLE presentation on “Trademark Infringement in #Social Media,” sponsored by the Intellectual Property Law Section of the State Bar of Georgia (May 21, 2013)

• Author of the article “Prank as Parody?” in the Intellectual Property Litigation publication of the American Bar Association (May 10, 2013)

• Featured Speaker for “Navigating the Bounds of Trademark and Copyright Law in Social Media,” at the American Bar Association’s Young Lawyers Division Fall Conference (October 18, 2012)

• Co-Author of the article “Online Publication Subjects Foreign Author to U.S. Copyright Registration Requirement” in Cyberspace Lawyer (July 1, 2011)

• Author of the article “The Effect of Utility Patents on Trade Dress Protection Claims” in The Intellectual Property Strategist (November 1, 2010)

• Author of the Note “The Famous Foreign Marks Exception to the Territoriality Principle in American Trademark Law,” Case Western Law Review (59 Case W. Res. L. Rev. 451, December 1, 2009)