Background - Practices (Details)

Trademark Counseling & Litigation

For many companies, their trademarks and brands are more enduring and valuable than the tangible assets of the company and, in certain instances, the company itself. We help our clients monetize these assets: we structure, negotiate, and implement IP transactions, especially those involving trademarks and copyrights. We help our clients defend and enforce these assets: our trademark and brand protection lawyers have litigated cases involving consumer product brands, company service marks, sound marks, and more. We regularly enforce and defend trademark actions in U.S. federal and state courts, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), counterfeit actions before the U.S. International Trade Commission (ITC) and customs enforcement with the IPR Branch of U.S. Customs and Border Protection (CPB), and in Europe. We engage in UDRP proceedings and routinely arbitrate over domain names before the World Intellectual Property Organization as well.

We also help our clients develop these assets: we assist our clients in developing brand protection and maintenance strategies, and routinely advise on new product and brand launch, relaunch, and expansion plans. Finally, we help our clients protect these assets: our team has significant experience devising and executing proactive strategies to address our clients’ needs, including disruption and deterrence of harmful conduct to protect intellectual property in both the physical and digital domains. This involves counterfeit products, pirated content, intellectual property theft and fraud, cybercrime, global enforcement of legal rights, mitigation of legal risk, and deterrence of adversaries. We have developed models for protecting intellectual property, defending supply chains, stopping illegal activity and dismantling malicious technical infrastructure.

Trademark Litigation and Enforcement. Our work focuses on claims arising under state law and the Lanham Act including trademark infringement and dilution, counterfeit and gray market goods, unfair competition, and false advertising matters. We also handle brand enforcement and contested proceedings including trademark oppositions and cancellations before the TTAB, counterfeit actions before the ITC and customs enforcement actions at CPB.

Trademark Clearance, Prosecution, Maintenance, and Claims Review. We manage global portfolios for our clients, and review trademarks for clearance and prosecution purposes. We help our clients develop, audit, and maintain robust brand protection programs and strategies, including providing in-house training to lawyers and non-lawyers alike on best practices. We also counsel clients on whether trademarks may communicate advertising claims or claims otherwise susceptible to scrutiny by the FTC or state regulators.

Transactions and Agreements. From negotiating substantial license and co-brand deals, to conducting due diligence of IP assets in M&A transactions, we protect clients’ brands, help them generate revenue, and help them prioritize brand asset investment.

Sponsorship, Broadcast, and Naming Rights. We have significant experience negotiating brand sponsorship, media rights, promotion, and naming rights deals with sports leagues and teams, athletes, entertainment properties, music artists, celebrity chefs, and many others.

Representative Engagements

  • Defending ViaClean Technologies, LLC in a trademark litigation brought to challenge our client’s long-standing use of its marks in connection with antimicrobial products that have been shown to be effective in fighting pathogens and viruses, such as COVID-19. Recently beat the plaintiff’s attempt to obtain a preliminary injunction, obtaining a very favorable ruling that holds the marks at issue are not confusingly similar.
  • Manage trademark portfolio and prosecution for brands in a variety of industries, including apparel, technology, grocery, entertainment, industrial manufacturing, and industry trade associations.
  • Represented iconic outdoor equipment brand in a trademark and design patent ITC investigation related to water bottle knockoff imports from China. In less than six months, complainant client won early consent order against an international fashion brand respondent, early settlement with an online marketplace respondent, and a stay of the investigation pending settlement with a manufacturer respondent. All 20 other respondents are in default.
  • Defended U.S. Soccer, a national sports federation, in a trademark lawsuit brought by the U.S. Soccer Foundation.
  • Represented a natural remedy products company against a competitor in false advertising and trademark infringement action brought under the Lanham Act.
  • Defended Molson Coors in trademark infringement action brought to challenge launch of new hard seltzer product, Vizzy. Denial of preliminary injunction upheld on appeal to the 5th Circuit.
  • Defending Lycoming Engines in a trademark litigation involving the ability to trademark product model numbers in the aviation industry.
  • Defending Molson Coors in a trademark litigation against a competitor related to Keystone Light brand.
  • Negotiated sports sponsorship and naming rights agreements for leading financial services, travel and appliance companies.
  • Negotiated a co-branded product trademark license agreement for a nationwide baked goods manufacturer.