philip g. hampton, ii - Haynes and Boone, LLP

Senior Counsel
[email protected]
PRACTICES: Intellectual Property, Intellectual Property Litigation, Social Media,
Trademarks Advertising and Brand Management, Trademark Cancellations and
Oppositions, Trademarks, Copyright, Trade Secret Litigation, Patents, Patent Litigation,
Trademark Litigation; INDUSTRIES: Chemical
T +1 202.654.4533
F +1 202.654.4270
J.D., University of Chicago
Law School, 1980, member
of Visiting Committee,
S.M., Chemical Engineering,
Massachusetts Institute of
Technology, 1977, Monsanto
Scholarship for Graduate
Study, Thesis: "Dynamic
Mechanical Properties of
Network Polymers"
S.B., Chemical Engineering,
Massachusetts Institute of
Technology, 1977
Whether litigating a Section 337 case at the U.S. International Trade Commission,
testifying as an expert witness in a high stakes trademark case, serving as the courtappointed master in a billion dollar biotech patent case, testifying before Congress
regarding changes to the Lanham Act, or discussing needed changes to the patent statute
at bar association meetings, Philip G. Hampton, II has been a multi-faceted IP practitioner.
Phil’s practice spans more than thirty years and focuses on patent and trademark litigation,
patent and trademark counseling, trademark prosecution, and licensing and merchandising
agreements based on patents, trademarks, trade secrets, and copyrights as well as
transactions related to the transfer of intellectual property pursuant to corporate
acquisitions. As corporations and individuals continue to extract value from their intellectual
property, Phil continues to think outside-of-the-box for his clients in order to find valuebased business solutions to tough intellectual problems and issues.
New York
District of Columbia
U.S. Patent and Trademark
As a freshly minted lawyer, Phil began his career as a patent attorney at a large IP
boutique in New York. There, he learned the ropes of patent prosecution and patent
litigation. Since then, Phil been involved in all aspects of patent litigation in district court
and the ITC, as well as mini-trials and arbitrations and he has argued cases before the
Federal Circuit. Phil has prepared, filed, and prosecuted U.S. and foreign patent
applications. He has prepared opinions regarding patentability, validity, and infringement
issues, and participated in appeals before the Board of Patent Appeals and Interferences.
He also has conducted interviews of examiners, SPEs, and technical center directors at the
Early in his career, Phil also volunteered to learn trademarks, then a rather moribund
practice at most IP firms. And learn trademarks he did - Phil has been involved in all
aspects of trademark litigation in U.S. District Courts, mini-trials, ITC Section 337 hearings,
and Trademark Trial and Appeal Board opposition and cancellation proceedings. Phil has
prepared, filed, and prosecuted hundreds of U.S. and foreign trademark applications and
prepared scores of trademark opinion letters. He also has prepared and filed appeals to the
Trademark Trial and Appeal Board and conducted oppositions and cancellations.
Phil became so adept at trademark law that President Clinton nominated, and the United
States Senate confirmed, Phil to be the Assistant Commissioner for Patents and
Trademarks, responsible for the Trademarks Office (1994 - 1998). In that role, Phil had
overall responsibility for trademark operations, and focused on restructuring the trademark
Senior Counsel
registration process and improving the policies of the USPTO to align them more closely
with the needs of its customers. Under Phil’s leadership, the Trademark Office became one
of the first government agencies to receive applications electronically from its customers,
perhaps the first government agency to allow its staff to work at home and during his
tenure, the customer service award winning Trademark Assistance Center was created.
Phil advanced trademark jurisprudence by promulgating almost 200 Commissioner’s
Decisions and overseeing the first new edition of the Manual of Trademark Examining
Procedure in almost ten years. While at the PTO, Phil testified before Congress,
represented the United States at diplomatic conferences and international meetings and
spoke to dozens of bar associations and industry groups regarding trademarks and/or the
operations of the USPTO. But even while heading up the Trademark Office, Phil stayed
involved with developments in patent law: as a member of the executive staff of the
USPTO, Phil provided senior level input on proposed changes to the Patent Act and the
Manual of Patent Examining Practice.
Since his return to private practice in 1998, Phil has been an expert witness in several
trademark infringement actions, and also has served as a Special Master in patent
infringement actions for the U.S. District Court for the District of Maryland. Because of his
knowledge of the people and processes of the USPTO, Phil has conducted investigations
of “atypical” prosecutions of both patent and trademark applications within the USPTO. And
while not afraid to litigate, Phil tries to find cost effective means to resolve disputes. For
example, once he convinced a district court judge to vacate his own published summary
judgment decision and allow the parties in a patent infringement action to settle their patent
Throughout his career, Phil has worked to make intellectual property a more inclusive area
of the law. To that end, he has mentored numerous minority and women law students and
young lawyers, and his dedication was rewarded in 2016 when he was named an inaugural
recipient of the Diversity in Tech Awards by the IP Section of the National Bar
Association. He is the former President of the American Intellectual Property Law
Education Foundation (“AIPLEF”) which since its inception in 2002, has awarded almost
$2,000,000 in scholarships to minority IP law students. To share his love of trademark law,
since 2009, Phil has taught trademark law at Howard University School of Law, one of the
four historically black law schools. In every firm since returning to private practice, Phil has
been a member of that firm’s Diversity Committee, including serving in a leadership
position of the overall committee or important subcommittees.
Believing that a lawyer must be fully engaged with his or her community, Phil is active in
educational activities, bar associations and civic affairs. For instance, Phil has served on
the Visiting Committee of his law school alma mater and the IP advisory board of DePaul
Law School. Phil has served on the board of directors of two national bar organizations, as
chair or co-chair of prominent committees of the IP Section of the ABA, and as general
counsel of the Washington Bar Association, the local African-American bar association.
Phil is also a member of Leadership Greater Washington and the board of the Council for
Court Excellence.
Senior Counsel
Phil is AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory. In
addition to his law degree, Phil holds an S.M and an S.B. in chemical engineering.
Selected Publications and Speeches
• “The Mystifying World of World-Wide Branding,” 7th Annual IP Law Symposium,
Florida Bar and Business Law Section, Orlando, FL, April 8, 2016
• “In re Tam: Will the Issue of Social Justice Reach the Supreme Court,” Howard
University School of Law 13th Annual Intellectual Property and Social Justice CLE
Seminar, Washington, DC, March 4, 2016
Professional Recognition
• Selected for inclusion in Washington, D.C. Super Lawyers, Thomson Reuters, 2015
• Recognized in World Trademark Review (WTR) 1000, Globe Business Publishing Ltd,
2011, 2013-2016. In 2013, clients surveyed by WTR praised Hampton for his "rare
level of procedural insight, which he combines with litigation and counseling nous
honed over many years in private practice."
• Recognized in Expert Guides, Euromoney Institutional Investor PLC, 2011
• Named a "Top Minority IP Partner" in Diversity & the Bar, May/June 2003
• Named one of "America's Top Black Lawyers" by Black Enterprise Magazine, 2003
Professional and Community Activities
• American Intellectual Property Law Education Foundation; President
(2008-2011); Chairman, Scholarship Committee (2004-2008)
• American Bar Association, Intellectual Property Law Section; Co-Chair, Trademark
Legislation Committee (2007-2008); Chair, PTO-Trademarks Committee (2005-2007)
• American Intellectual Property Law Association (AIPLA), Board of Directors, 2004-2007
• Master, Giles S. Rich American Inn of Court, 2004-2008
• DePaul University College of Law, Intellectual Property Advisory Board, 1999-2003
• National Bar Association, Life Member; Executive Committee (1990-1993); Board of
Governors (1989-1994); Chair, Intellectual Property Section (1989-1991); Chair,
Budget Committee (1992-1993)
• International Trademark Association, member of various committees