Adam R. Villanueva
Atlanta,GA
Summary
Senior Corporate Counsel – IP with 12+ years of experience managing global trademark and patent portfolios and resolving complex IP disputes for retail, technology, and entertainment clients. Skilled in IP prosecution, negotiating coexistence and settlement agreements, and counseling cross-functional teams on licensing, AI, SaaS, and marketing-related IP matters to align legal strategy with business objectives. Focused on driving scalable IP protection, minimizing litigation risk, and enabling product and partnership innovation through pragmatic, business-oriented legal counsel.
Overview
13
13
years of professional experience
1
1
Certification
Work History
Senior Corporate Counsel – IP
Fanatics, LLC
08.2022 - Current
- Provide trusted and expert legal advice to leading global sports apparel, memorabilia and e-commerce company on complex litigation, commercial disputes, license agreements, and indemnity requests to achieve business-savvy solutions.
- Partner with internal stakeholders to strategize and advise on intellectual property portfolio needs, including patents, trademarks and copyrights; work with outside counsel.
- Negotiate coexistence agreements and undertakings to preserve registry and market exclusivity, draft settlement terms to resolve misuse of IP, and review retail trademark license agreements.
- Collaborate cross functionally with legal teams, as well as key business stakeholders, to draft and negotiate artist collaboration, influencer, technology, SaaS, partner, manufacturing, non-disclosure, AI, model release, and trademark license agreements.
- Counsel marketing, design, and other internal business units on font and image/content license terms to ensure compliance.
- Defensive examination of IP owner complaints for DMCA compliance; evaluation of potential IP and right of publicity infringement claims and resolution thereof.
- Manage global IP portfolio, oppositions, clearance searches/freedom to operate analysis, customs registrations and IP prosecution and renewals in conjunction with outside counsel.
- Partner with engineering and manufacturing teams to identify new innovations and associated risks.
- Lead internal IP clearance process for all product names and designs for global portfolio of apparel and partner brands.
- Coordinate with outside counsel to review litigation pleadings, motions, and settlement agreements, and manage budgetary concerns.
- Assist in maintaining aggressive IP protection around watch notices, piracy, unauthorized merchandise/ derivatives, false associations, and Lanham Act claims.
- Act as outside lead IP counsel for six of the most well-known collegiate institutions in the US, including counterfeit enforcement, dispute resolution, portfolio management, trademark licensing, and strategic counseling.
- Review consumer facing marketing collateral, website and advertising copy to ensure compliance with copyright, trademark and right of publicity laws, internal and third party partner IP policies.
- Develop protocol for engineering and manufacturing teams related to use of open-source software; advise stakeholders on issues related to license terms.
- Conduct and manage enterprise-wide IP and social media training targeted to key business segments and stakeholders.
- Actively participate as a member of internal legal AI committee to assist with developing policies related to company procurement and use of LLM and AI platforms; testing and evaluating AI platforms applicable to legal team; counseling and advising internal design and marketing teams on terms and use related to AI platforms.
- Cultivated strong relationships with internal teams, fostering collaboration that enhanced alignment on legal strategies and business objectives.
- Mentored summer legal interns, providing guidance and networking opportunities that contributed to their professional development within the legal team.
Senior Trademark Associate
Dunlap Bennett & Ludwig PLLC
09.2020 - 08.2022
- Counseled federal government entities, technology, consumer products and tobacco companies on selection and clearance of trademarks and related properties domestically and internationally; prosecute trademark applications for the same.
- Managed, coordinated, and oversaw international trademark filings via both Madrid Protocol and direct country trademark applications; managed and oversaw foreign trademark filings, prosecution, and enforcement/ oppositions; managed foreign associates in relation to substantive law and client budgetary expectations.
- Managed, directed, and prosecuted disputes before the Trademark Trial and Appeal Board; and domain name claims through UDRP proceedings and under ACPA in federal litigation.
- Prepared and analyzed federal litigation claims and filings; prepare and conduct discovery and pre-trial motions; work with expert witnesses to develop reports; attend and sit second chair for depositions in federal litigation.
- Prepared, sent, and defended cease-and-desist letters; prepared and filed social media take downs to enforce client intellectual property rights; counseled clients on customs registration.
Senior Trademark Associate
Munck Wilson Mandala
09.2019 - 06.2020
- Drafted and negotiated consent, co-existence, and settlement agreements for various trademark and other intellectual property disputes.
- Provided creative and strategic counsel to assist start-up clients with creation of intellectual property and related advertising/marketing materials.
- Managed and prosecuted domestic and international trademark portfolio for international software, video games, clothing, and retail product companies.
- Counseled multinational and startup companies on IP protection; developed internal IP policies; prepared analysis and consult on litigation strategy; worked with in-house counsel on budget management and direction of outside international counsel for new mark filings performed domestic and international clearance searches; CorSearch.
- Managed team - 6 in Dallas and 1 in Los Angeles; dotted-line reporting with firm partner for Trademarks.
- Managed docket of domestic and international opposition proceedings for international video game studio; worked with outside counsel in individual countries to direct and strategize international litigation; represented company before the Trademark Trial and Appeal Board.
Counsel
Klemchuk LLP
01.2017 - 09.2019
- Federal Trademark Litigation; researched and prepared memos, draft petitions, long-form agreements for federal courts nationwide; on the spot experts; negotiated licenses, settlement and coexistence agreements.
- UDRP proceedings; drafted petitions and any related motions or papers; strategized with clients and outside counsel on domain names for protection and enforcement.
- Prosecuted, developed and managed trademark portfolio for service and retail companies, entertainers and athletes; strategized with outside international counsel to protect client marks in Europe, Asia and Canada.
- Enforced and defended client brands; cease and desist and demand letters, social media and DMCA takedown requests.
- Represented clients before the United States Patent and Trademark Office; trademark applications, responses to office actions, statements of use, trademark renewals and letters of protest.
- Counseled entertainment industry businesses and individuals; corporate transactions, copyright, trademark and moral rights issues.
Managing Attorney
Fears Nachawati, PLLC
06.2013 - 01.2017
- Managed 6 attorneys and 2 legal assistants; developed training program for new attorneys; managed trademark docket using WebTMS and other trademark docketing programs; improved trademark pendency time from filing to registration by 30+ days.
- Represented clients before Trademark Trial and Appeal Board in Opposition and Cancellation proceedings; drafted and filed notices of opposition, petitions to cancel and answers; conducted discovery; prepared and responded to requests for admissions, requests for production, interrogatories, and depositions.
- Assisted with corporate formation and governance matters, including divestures, dissolutions, record keeping and administration.
- Negotiated and drafted trademark coexistence agreements, trademark assignments, license agreements and purchases of intellectual property.
Education
J.D. -
Texas A&M School of Law
Fort Worth, TX05.2012
B.A. - History
University of Texas at Austin
Austin, TX05.2009
Skills
- Intellectual Property
- Trademark Law
- Litigation
- Negotiation
- Legal Advice
- Portfolio Management
- IP Prosecution
- Legal Research
- Contract Drafting
- Client Counseling
- Dispute Resolution
- Training Facilitation
- Trademark Clearance
Certification
- Texas Bar
- Licensed November 2012
AWARDS
Winner – World Trademark Review Industry Awards – Fashion and Apparel Team of the Year (Fanatics), 2024, Super Lawyers, Best in Texas, 2022, D Magazine - Best Intellectual Property Lawyer in Dallas, 2020, Texas Monthly; Super Lawyers, Rising Star, 2020, Best Attorneys Under 40 in Dallas, 2019, Best Intellectual Property Attorneys in Dallas, 2017, Best Intellectual Property Attorneys in Dallas, 2016
SPEAKING, WRITING & VOLUNTEER
- Texas Execs – Atlanta Chapter Vice President (August 2023-Current)
- Fanatics Global Volunteer Day (April 2023-Current)
- Dallas Association of Young Lawyers Committee Chair (January 2017-December 2020); Roundtable Host, Wisdom of the Ages panel | Solo Small Firm Summit 2018; Co-Host | Solo Small Firm Summit 2017
- Texas Entertainment and Sports Law Association Council Member (June 2018)
- Author Just Did It! Nike Prevails in Jordan Brand Logo Dispute (May 2018)
- East Dallas Pet Rescue (April 2014–April 2017)
Timeline
Senior Corporate Counsel – IP
Fanatics, LLC
08.2022 - Current
Senior Trademark Associate
Dunlap Bennett & Ludwig PLLC
09.2020 - 08.2022
Senior Trademark Associate
Munck Wilson Mandala
09.2019 - 06.2020
Counsel
Klemchuk LLP
01.2017 - 09.2019
Managing Attorney
Fears Nachawati, PLLC
06.2013 - 01.2017
B.A. - History
University of Texas at Austin
J.D. -
Texas A&M School of Law