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Shoko Naruo
Partner
Thompson Coburn, LLP
Shoko Naruo is a partner with Thompson Coburn, LLP. Shoko helps companies protect their valuable brands in markets around the world through strategic trademark counseling and enforcement.
On behalf of major global brands, Shoko has registered and enforced trademarks in nearly 200 countries. She helps clients build and manage large trademark portfolios, carefully examining a client’s goals for a product launch or established brand and then advising them on the most effective strategies to enforce their IP rights. She regularly negotiates and drafts license agreements and other agreements related to intellectual property, and advises clients regarding domain name disputes, copyright ownership, registration, fair use and infringement issues.
Shoko advises companies in the manufacturing, food and agriculture and hospitality industries, and has extensive experience advising cannabis companies on trademark and other IP matters.
A native Japanese speaker who is also fluent in English, Shoko assists Japanese clients with other business and legal matters.
Shoko is the co-chair for the Firm’s Asian American Affinity Group.
Recent Articles by Shoko Naruo
Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.