Intellectual Property

Protecting Client IP Assets in Hawaii and Beyond

The Firm's Intellectual Property practice area is dedicated to providing comprehensive legal services to help clients protect and enforce their valuable intellectual property rights. Our experienced team of attorneys understand the unique challenges and opportunities that arise in the dynamic field of intellectual property law, and we are committed to delivering strategic counsel and aggressive advocacy for our clients.

Our services cover a wide range of intellectual property matters, including trademark law, patent law, copyright law, and trade secret law. We assist clients in all aspects of these areas, from conducting searches and filing applications, to managing portfolios, enforcing rights, and handling litigation or administrative proceedings. We also provide guidance on licensing, enforcement strategies, risk management, and alternative dispute resolution methods.

We take the time to understand our clients' businesses, industries, and goals, and we tailor our solutions to meet their specific needs. We work closely with our clients to develop strategies that align with their business objectives and provide practical and effective solutions to protect their intellectual property assets.

Hawaii Intellectual Property Group Attorneys:

JOHN W. KELLY heads the Firm's IP Practice Group. Prior to joining Starn O’Toole Marcus & Fisher, Mr. Kelly practiced at one of the nation’s oldest intellectual property firms based in New York. While there his practice included counseling clients from start-ups to Fortune 100 companies on the prosecution, opposition and enforcement of worldwide intellectual property rights, negotiating coexistence and settlement agreements, providing guidance on business transactions and conducting due diligence for divestments and acquisitions.

Since joining the Firm, Mr. Kelly has assisted a number of clients, from individuals and startups, to large and established corporations with a wide range of intellectual property matters.  Mr. Kelly has advised local clients on:

• domestic and international trademark registration;
• intellectual property maintenance and enforcement, including litigating matters before the Trademark Trial and Appeal Board (TTAB), state, federal, and administrative tribunals; and 
• issues relating to copyright, domain names, rights of publicity and unfair competition.  

Some of Mr. Kelly’s clients include local leaders in the food and beverage, hospitality, fashion, retail, luxury and tech industries in Hawaii.  Mr. Kelly is frequently sought out by Hawaii news entities for comment on IP matters. Read about the "Aloha Poke" case, where a Chicago-based business attempted to stop businesses from using the words "aloha" and "aloha poke".

Mr. Kelly has been selected to the Hawaii Super Lawyers®, "Rising Star" list in the practice area of IP Litigation since 2020, and has been named to The Best Lawyers in America©: Ones to Watch list in the practice areas of Intellectual Property Litigation, Real Estate Litigation and Commercial Litigation.

DOUGLAS S. CHIN serves as a Director of the Firm. Mr. Chin focuses his practice on commercial litigation, administrative law and government relations and has successfully represented clients in Federal courts and in arbitrations concerning intellectual property disputes. He has been named to The Best Lawyers in America© list,named “Lawyer of the Year” in Honolulu, in Chambers and Partners USA Leading Lawyers for Business, named a “Litigation Star” by Benchmark Litigation, and is rated AV Preeminent, Martindale-Hubbell’s® highest rating possible, for his skill and integrity. 

Mr. Chin served as Hawaii Attorney General, appointed by Governor David Ige and was a former Managing Director for the City and County of Honolulu. Mr. Chin has more than 20 years of litigation experience in trial courts in Hawaii. 

ANDREW J. LAUTENBACH serves as a Director of the Firm and has experience in litigating copyright and trade secret disputes before State and Federal courts in Hawaii. Mr. Lautenbach has been named to The Best Lawyers in America© list, selected to the Hawaii Super Lawyers® list, is in Chambers and Partners USA Leading Lawyers for Business and named a “Litigation Star” by Benchmark Litigation. Mr. Lautenbach is rated AV Preeminent®, Martindale-Hubbell's® highest rating possible for his skill and integrity.

NORMAN H.Y. CHENG, Managing Director of the firm, focuses in the practice area of real estate and business law. Mr. Cheng assists clients in identifying and protecting their intellectual property assets as part of his practice in the areas of business structuring and operations and commercial transactions. Mr. Cheng has been named to The Best Lawyers in America© list, selected to the “Top 25” Hawaii Super Lawyers® list, is in Chambers and Partners USA Directory of Leading Lawyers for Business. Mr. Cheng is rated AV Preeminent®, Martindale-Hubbell’s® highest rating possible for his skill and integrity.