Mark H. Miller

Mark H. Miller  -  Partner
Intellectual Property, Intellectual Property Litigation, Litigation, International, Internet / E-commerce, Life Sciences and Medical Technology, Technology, Privacy and Data Security, Antitrust, Entertainment

* B.A. Chemistry, Austin College (TX)
* J.D., St. Mary's University School of Law
* Selected for Phi Delta Phi honorary legal fraternity
  • Associate Editor of the St. Mary's Law Journal
  • Court Admissions
    * 1978, Texas
    * Supreme Court of the State of Texas
    * United States Supreme Court
    * United States Patent and Trademark Office
    * United States Courts of Appeals for the Fifth and Tenth Circuits
    * United States Court of Appeals for the Federal Circuit
    * United States District Courts for the Eastern, Northern, and Southern Districts of Texas


    For more than 30 years, Mark Miller has focused on counseling, transactions, and litigation concerning intellectual property (patents, trademarks, copyrights and trade secrets), franchise, license, and antitrust matters. His popular Intellectual Property Basics is available here.

    He has filed and defended dozens of intellectual property and franchise suits, primarily in federal district court, but also in state district court and before the Trademark Trial and Appeal Board for all types of industries including oil and gas, healthcare, information technology, resort industry, automotive, restaurants, and retail.

    Mr. Miller has helped numerous U.S. businesses obtain trademark registrations and protect their trademark rights in foreign countries including Canada, Mexico, European Economic Community, Latin America, Asia, Africa and elsewhere. He has negotiated dozens of agreements concerning development, licensing, assignment, purchase or sale of intellectual property in numerous industries, including software, restaurant, oil, and manufacturing.

    Since 1980, he has represented franchisors and franchisees in creating franchise systems, Franchise Disclosure Documents, and franchise agreements, obtaining state franchise registrations, buying and selling franchises on behalf of both franchisees and franchisors, and litigating on behalf of both franchisors and franchisees.

    Mr. Miller has prosecuted and obtained patents in the United States Patent and Trademark Office since 1978. He is intellectual property counsel for oil and gas companies, a medical device company, an international clothing company with operations in many countries, and many other businesses in various lines of commerce.

    Mr. Miller was previously a name partner in the intellectual property firm of Miller, Sisson, Chapman & Nash, P.C.

    Representative Matters


    Patent, Trademark, Copyright Litigation

     * Filed the Taco Cabana v. Two Pesos trade dress suit, one restaurant chain against another, affirmed by U.S. Supreme Court.

     * Defended against a patent ownership/inventorship/damages suit. In 2014, all of Plaintiffs' claims were dismissed and damages recovered from Plaintiffs.

     * Defended against patent infringement suits for: a medical products company, an international automotive products company, an auto parts manufacturer, an oil services company, and more.

     * Defended against trademark infringement litigation for: an international runway restoration company, a nationally known resort, an international medical supply and service company, a restaurant, and more.

     * Asserted trademark rights in litigation on behalf of: a national telecommunications company, a healthcare products company, a clothing retailer, a national medical equipment provider, a national medical clothing retailer, an international awning manufacturer, a business broadcaster, a national nonprofit organization, a food packager and retailer, a franchisor, an employment testing service, and more.

     * Asserted copyright infringement in litigation on behalf of: an advertising agency, a personality test company, a sculptor, and more.

     * Defended against copyright infringement suits for: a software retailer, an automotive information service company, and more.

     * Represented an international automotive products company in enforcement of its product design and software copyright rights against a competitor.

     * Represented a national restaurant equipment manufacturer in asserting patent against a competitor.

     * Asserted trade dress rights in litigation on behalf of: a national hamburger restaurant chain, national concession store supplier, and more.

     * Represented a hunting accessories manufacturer in a contract dispute with an international manufacturer.

     * Represented an international concession and convenience store supplier in a contract action with a manufacturer.


    Franchise/Franchisor Litigation

     * Represented a fast food franchisor against an area franchisee in termination litigation.

     * Represented a group of hair salon franchisees against their franchisor and launched them as an independent group with a new mark.

     * Represented a group of novelty shop franchisees against their franchisor, killing the franchisor.

     * Represented real estate franchisees against various franchisors.

     * Represented numerous copy services franchisees against their franchisor.

     * Represented a soft ice cream franchisee against its franchisor.

     * Represented a national restaurant chain against a city-wide multi-unit franchisee.

     * Represented an area developer against its franchisor.

     * Represented a terminated frozen drink franchise against its franchisor.

     * Represented a laundry franchisor against its franchisees.

     * Represented a Mexican food franchisee against its franchisor.

     * Represented an auto retail franchisor against franchisees in termination litigation.


    Patent, Trademark, Copyright Prosecution

     * Prosecuted hundreds of trademark applications in the United States Patent and Trademark Office for all types of industries.

     * Represented registrants and applicants in more than 30 Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.

     * Assisted dozens of foreign businesses obtain trademark rights in the U.S.

     * Represented numerous clients in securing copyright registrations in the United States Copyright Office.


    Other Litigation

     * Mr. Miller has represented parties in numerous general litigation matters.


    Transaction Matters

     * Mr. Miller has more than 30 years' experience in doing deals concerning technology, distribution, and sales. These include licenses, sales, franchises, acquisitions and the like in lines of commerce ranging from software, restaurants, patents, trademarks, research and development, distribution, manufacturing and retail.
    Mr. Miller is a member of the American Bar Association's Forum Committee on Franchising, and Antitrust and Intellectual Property Sections, and the State Bar of Texas' Intellectual Property Litigation and Antitrust Sections.
    Mr. Miller was selected by San Antonio attorneys as one of the "Best Lawyers in San Antonio" in Intellectual Property Law.
    Publications & Speaking Engagements
    Mr. Miller is a frequent speaker and writer on franchise, trademark, copyright, and patent law issues. Among the articles and papers to Mr. Miller's credit are:

    *  Copyright Infringement

    *  Intellectual Property Basics

    * Unintentional Franchising – St. Mary's Law School, Law Review

    *  The General Practitioner's Guide to Franchising

    *  You Did What§ – Potential Pitfalls for The Franchisor – Texas State Bar Association, Intellectual Property Section

    *  Arithmetic 101 for Prospective Franchisees

    * Neglected Copyright Litigation Issues – Texas State Bar Association – Intellectual Property Section

    *  Patents, Trade Secrets and the Success of a Small Chemical Business – American Chemical Society

    *  Valuable Intellectual Property

    *  The Madrid Protocol – Obtaining International Trademark Registrations

    *  Corporate IP Audits

    *  "Copyright Infringement Litigation," University of Houston – Intellectual Property for the General Practitioner

    *  "Landmine Poker – Malpractice Tips for Intellectual Property Attorneys" – Texas Bar Association – Intellectual Property Association

    *  "Copyright Infringement and Remedies"

    *  "Intellectual Property for General Attorneys"

    *  "Dealing With Y2K – When It Is Too Late§ The Legal Perspective" – San Antonio Certified Public Accountants

    *  "Franchising for the General Practitioner" – Texas State Bar Association, Corporations Section

    *  "Intellectual Property Basics for Business Lawyers"

    *  "Protecting Corporate Trade Secrets and Other Intangible Assets" – Texas Certified Public Accountants

    *  "Franchise Primer," Texas State Bar Association, Corporation Section

    *  "How to Represent Prospective Franchisees Effectively" – Texas State Bar Association, Intellectual Property Section

    *  "Patents, Trademarks, Franchising and International Trade"

    *  "The Importance of Trademarks to Franchising" – American Bar Association

    *  "Protecting Trade Secrets"

    The following papers are available electronically:

    * Intellectual Property Basics

    * Copyright Infringement

    * How To Represent Prospective Franchisees and Franchisors

    * The Top 10 Things You Wanted to Know About False Patent Marking But Were Afraid to Ask

    * Neglected Copyright Litigation Issues

    * Valuable Intellectual Property

    * Unintentional Franchising

    * THE MADRID PROTOCOL - Providing International Trademark Registration

    * The General Practitioner's Guide to Franchising

    * You Did What§ - Potential Pitfalls for The Franchisor

    * Patents, Trade Secrets and the Success of a Small Chemical Business

    * Arithmetic 101 for Prospective Franchisees

    * Corporate IP Audits

    112 E. Pecan Street, Suite 2400 San Antonio, TX 78205

     T: 210.978.7751 |  F: 210.242.4614 |