Ian G. McFarland

Associate
Knoxville
9717 Cogdill Road, Suite 101
Knoxville, TN 37932
D: 865.380.5990
Contact My Assistant
Megan Fee
D: 865.380.5964

Education

University of Tennessee College of Law
J.D., 2011

University of Missouri
B.A. Biological Sciences, 2008

Bar and Court Admissions

Tennessee Supreme Court
United States Patent and Trademark Office
Eastern District of Tennessee
Sixth Circuit
Federal Circuit

Professional Affiliations

American Intellectual Property Law Association
Tennessee Intellectual Property Law Association
Tennessee Bar Association
Knoxville Bar Association
The Hamilton Burnett American Inn of Court

Awards & Recognition

Selected for inclusion in Mid-South Rising Star, 2015-2016

Magna Cum Laude, Order of the Coif, Order of Barristers, Cunningham Excellence in Legal Writing Award, 2011

Merchant & Gould Intellectual Property Award, 2011

Publications & Speaking

Demonstrative Evidence Under the Rules: The Admissable and Inadmissable, Litigation Commentary & Review, co-authored with Allen Hinderaker, July 2015

“The Sky Could Be Falling:  Discussing Prometheus and its Implications on the Life Sciences Industry," TIPLA Spring Conference, 2012

Comment, In the Wake of Therasense and Nisus Corp., How Can Patent Attorneys Defend Themselves Against Allegations of Inequitable Conduct, 78.2 Tenn. L. Rev. 485, 2011

Ian’s practice focuses on intellectual property counseling, enforcement, and litigation encompassing patent, copyright, trademark, false advertising, unfair competition, and trade secret matters.  He regularly represents clients in federal district and appellate courts across the country, state courts in Tennessee, and the United States Patent and Trademark Office. Ian is a registered patent attorney and admitted to practice before the Tennessee Supreme Court, the U.S. District Court for the Eastern District of Tennessee, as well as the U.S. Court of Appeals for the Sixth, Ninth, and Federal Circuits. Ian has experience representing clients across a wide array of industries and technology fields, including financial services, cosmetics, jewelry, consumer goods, pet products, insurance services, medical software, educational services, material analysis devices, pharmaceuticals, industrial safety equipment, food and beverage products, electronic measuring equipment, and apparel, among others.

Having helped secure courtroom victories and favorable settlements on behalf of numerous clients, Ian is a frequent and integral member on the firm’s trial teams. Ian has experience coordinating written discovery and document production, deposing potential witnesses, drafting all types of pre- and post-trial motions, and examining witnesses at trial. Due to the often times overwhelming and complex nature of litigation, Ian develops close relationships with his clients and maintains open lines of communication before and during the case to address strategy, risks, budgets, timelines, and other concerns. He understands the sensitivities of his clients’ businesses and the significant impact that litigation often has on them. His primary goal is always to identify and obtain solutions that effectively and efficiently satisfy the client’s objectives.

Ian also serves on several client service teams charged with the ongoing acquisition, management, and enforcement of global IP portfolios. He counsels clients on how best to strengthen their IP rights while controlling attendant risks. This includes preparing trademark and patent opinions, conducting trade secret audits, registering trademarks and copyrights, reviewing marketing and advertising claims, preparing and vetting licensing and coexistence agreements, handling trademark oppositions and cancellations, investigating and pursuing trademark and copyright infringement in the market, and liaising with international associates on behalf of his clients. Ian also has experience in performing patentability and infringement searches as well as drafting and prosecuting patent applications. 

When he is not practicing law, Ian enjoys hiking and kayaking with his dog, Cello, on the trails and streams throughout East Tennessee, discovering great barbeque, and sampling new craft beers by local breweries. Though he has lived and worked in Knoxville since graduating from the University of Tennessee College of Law in 2011, Ian frequently explores the food, beverages, and landscapes offered by neighboring communities, such as Nashville, Oak Ridge, Chattanooga, Morristown, Johnson City, and Asheville. Ian met his wife, Kara, at the University of Missouri. Prior to that, Ian graduated from the Illinois Math and Science Academy after growing up in Quincy, Illinois.  

Representative Cases

Represented numerous plaintiffs and defendants in Trademark Trial and Appeal Board cancellation and opposition proceedings, securing denial of registrations and preventing denial of registrations. Ian has coordinated discovery and evidential phases of proceedings, prepared pre-trial motions, deposed witnesses, and drafted trial briefs.

Obtained judgment as a matter of law following jury trial in patent infringement lawsuit involving electronic pet containment and training systems. Ian was responsible for trial graphics and took a lead role in pre- and post-trial briefing. Radio Systems Corporation and Innotek, Inc. v Tom Lalor and Bumper Boy, Inc., (W.D. Wash.)

Obtained multi-case settlement following close of plaintiff’s proof in bench trial in trademark infringement lawsuit involving electronic pet containment products. Ian was chiefly responsible for discovery, pre-trial briefing, and trial graphics. Invisible Fence, Inc. v Fido’s Fences, Inc., (E.D. Tenn.)

Obtained default judgment and contempt ruling in trademark infringement lawsuit involving electronic pet containment products. Ian successfully argued for contempt sanctions at oral hearing. Invisible Fence, Inc. v. Neosel, et al., (E.D. Tenn.)

Obtained case-settlement in patent infringement lawsuit involving pet door systems. Ian primarily handled pre-trial briefing that preceded settlement.  Accession, Inc. v. Radio Systems Corporation, (D. N.J.)

Obtained case-settlement in trademark infringement lawsuit involving insurance services. Ian had a leading role in coordinating discovery and drafting pre-trial motions that preceded settlement.  Applied Underwriters, Inc. v. American Employer Group, Inc., (E.D. Tenn.)

Obtained case-settlement in patent infringement lawsuit involving medical software. Ian assisted with discovery, pre-trial briefing, and the preparation of expert report on claim construction that preceded settlement. PPS Data v. Passport Health Communications, (D. Utah)

Obtained case-settlement in patent infringement lawsuit involving generic pharmaceutical. Ian coordinated discovery and assisted the preparation of expert report on claim construction that preceded settlement. Pfizer Inc., et al. v. CFT Pharmaceuticals LLC, (D. Del.)

Obtained case-settlement in trademark infringement lawsuit involving snack products. Ian was chiefly responsible for coordinating discovery, drafting pre-trial motions, and working with trademark survey expert to prepare report that preceded settlement. Candyland, Inc. v. Snyder’s-Lance, Inc., (D. Minn.)

Obtained default judgment in trademark infringement lawsuit involving well-known brand of bottled water. Ian coordinated with local counsel to swiftly secure default judgment. Voss of Norway, A.S.A. v. King, (D. Nev.)

Obtained favorable jury verdict in trademark infringement lawsuit involving clothing and cosmetics. Ian coordinated discovery, handled pre- and post-trial motions, examined witness as member of trial team, and took lead role in preparing briefs on appeal. Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd., (C.D. Cal. & 9th Cir.)