The Legal 500

Debevoise & Plimpton’s trademark and advertising group includes litigators David Bernstein and Bruce Keller, who are highly regarded for handling complex trademarks litigation. An ‘IP powerhouse’, the team is particularly noted for its expertise in cases related to the technology sector and cyber law, advising household names such as The Gap Inc and the NFL on complex, often multi-jurisdictional, cases. Pernod Ricard is a major client for the practice; the firm represented it on several high-stakes disputes, including an appeal to the Third Circuit regarding a long-running dispute against Bacardi over the Havana Club trademark. Illustrative of the unusual, high-stakes litigation handled by the practice, it also advised the client on an infringement case to protect the color white as the trade dress of its Malibu rum product, obtaining a broad injunction against any use of a white bottle in the future for any spirit. Keller represented the NFL in an infringement case brought against Titlecraft’s fantasy football league trophies, recently winning partial summary judgment in the ongoing litigation. The team also prepared amicus briefs on behalf of The International Trade Association for some important internet-related trademark cases, including Tiffany v eBay and Rosetta Stone v Google.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s ‘practical, smart and effective’ trademark litigation practice receives high praise for its broad capabilities, and expertise in domain name disputes, and is ‘best of the best, especially when losing is not an option’. The East Coast-based team is mainly located in Washington DC, and is led by David Kelly, who is lead counsel for major names in hi-tech, insurance and industrial manufacturing. Also noted is experienced trial and appellate attorney Douglas Rettew, who recently defended Under Armour in a case brought by sporting goods company Rawlings alleging trademark infringement, and sought an injunction against the sale of Under Armour’s recently launched helmet line. The court denied the injunction. Mark Sommers provides experience in representing international clients, with a focus that includes domain name disputes. The practice is increasingly taking on high-stakes lawsuits before the Trademark Trial and Appeal Board, and had a successful result for Italian fashion label Emilio Pucci in a case arguing that the defendant’s mark ‘Emidio Tucci’ was confusingly similar to the client’s brand name. Other recent disputes have involved trade dress issues and household names in media, fashion and consumer products. Trademark attorney Monica Riva Talley left to join Washington DC firm Sterne, Kessler, Goldstein & Fox PLLC in August 2010.

‘Tuned into both the industry and client needs’, Fross Zelnick Lehrman & Zissu, P.C. has ‘unsurpassed depth of knowledge and experience’ in trademark disputes; these are a core focus for the IP firm, while internet-related disputes and anti-counterfeiting have been other key areas of activity. It successfully defended Estée Lauder/Clinique Laboratories against a trade dress infringement lawsuit brought by consumer skincare competitor Rodan & Fields, and also defended confectionery company Cadbury Adams USA against an injuction sought by Perfetti Van Melle to block the launch of Cadbury’s Dentyne Pure product, alleging the name was confusingly similar to its Mentos Pure Fresh brand. Roger Zissu, Barbara Solomon, Craig Mende and James Weinberger all have ‘an ability to cut through to the heart of the matter and provide skilful, cost-effective advice appropriate to the situation’. Other plaintiff clients include beverages company Dr Pepper Snapple Group, which it advised in a case against a UK entity before the USPTO, and CSC Holdings (Cablevision), which it advised in a trademark infringement case against Optimum Networks. Michael Chiappetta successfully represented music artist Calvin Broadus (publicly known as Snoop Dogg) in opposing an application to register the mark Snooptunes.

Kenyon & Kenyon has a strong team for trademark disputes, with practice head James Rosini advising leading names across various sectors, including telecoms, insurance, retail and publishing. He has a strong track record in domain name disputes, including recently acting for Wal-Mart before the WIPO. ‘A strong strategist and leader’, Edward Colbert’s track record includes successfully defending AT&T against AOL, and he recently won a case for bourbon distillery Maker’s Mark, which brought a trademark suit against Jose Cuervo in relation to the design of its distinctive red dripping wax seal, prohibiting the competitor from using it on bottles of its tequila brand. With experience in major trademark litigation, Howard Shire represented Ozzy Osbourne against Tony Iommi regarding ownership of the Black Sabbath trademark, with the case reaching an out-of-court settlement. Both Colbert and Michelle Mancino Marsh also recently won a victory of summary judgment for Jim Beam Brands, in another case against Jose Cuervo, regarding a settlement breach in relation to Jim Beam’s ‘Old Crow’ brand and design.

Kilpatrick Townsend & Stockton’s merger added further firepower to its trademark litigation capabilities through the arrival of a sizeable team in San Francisco. William Brewster leads the practice and is well regarded for his extensive trial and appeal experience; he recently represented key client adidas in a lawsuit against Herbalife International, claiming infringement of adidas trademarks through use of a similar logo on sporting apparel and in promotion of sporting events. The team also won an injunction for Chrysler regarding the use of the automotive manufacturer’s Jeep trademarks in its opponent’s products. New York-based Lisa Pearson has particular experience in representing fashion, luxury and other consumer goods companies. Highlights included obtaining a preliminary injunction for CVS in Zino Davidoff SA v CVS Corporation, an important ruling for anti-counterfeiting with a Second Circuit appeal affirming the decision. Charles Henn and Jerre Swann are also notable attorneys.

Arnold & Porter LLP’s practice has continued to be involved in some of the highest-profile trademark cases. The team includes nine partners, split across the firm’s California and East Coast offices. In New York, it continued to represent Gucci America in its long-running dispute against a former Gucci family member, with a district court ruling in favor of the client. Focused on brand protection and representing various luxury goods brands, Louis Ederer is also representing Gucci as plaintiff in a case against rival fashion label Guess. James Swire acted as lead counsel for Tiffany and Company in its appeal to the Second Circuit, which affirmed a previous non-infringement ruling but remanded the Tiffany v eBay case for further determination in relation to Tiffany’s false advertising claim. The Supreme Court also rejected an appeal by Tiffany. Roberta Horton, who leads the trademark practice in Washington DC, filed an amicus brief on behalf of various companies in support of appellant Rosetta Stone in its high-profile dispute with Google, alleging infringement of its trademarks through the use of online adwords which directed users to Rosetta’s rivals and counterfeiters. Los Angeles-based Suzanne Wilson focuses on representing hi-tech and consumer goods companies.

Primarily serving clients in the luxury goods, financial services and media sectors, Greenberg Traurig LLP’s sizeable team across the US handles the full spectrum of contentious trademark issues. In Los Angeles, the well-regarded Susan Heller advises on trademark litigation matters both domestically and internationally, particularly representing individuals in the entertainment field, as well as financial services companies. Representative clients include Barclays Global Investors and Exodus Entertainment. In the New York office, Roxanne Elings’ experience spans anti-counterfeiting, trade dress and domain name disputes, for apparel and fashion brand companies among others. James Donoian’s focus includes internet issues as well as representing consumer goods clients. The firm added Joseph Geisman in the Los Angeles office, who was formerly IP counsel at the Motion Picture Association of America.

Kirkland & Ellis LLP ‘demonstrates valuable business acumen and appropriateness of advice’ and is ‘extremely professional and responsive with tremendous expertise’, with a client base that includes leading names in the fields of entertainment, hi-technology, consumer products and fashion brands. Dale Cendali is a widely recognized figure in high-profile trademark disputes and, since joining the practice along with Claudia Ray and Diana Torres, has continued to represent well-known names on cutting-edge issues. Highlights included THOIP v The Walt Disney Company, representing the defendant against a case filed by the owner of the Mr Men and Little Miss trademarks, obtaining a partial summary judgment and dismissal of the plaintiff’s confusion theory. The practice is also acting in the defense of Directv, and represented Colgate-Palmolive as plaintiff in two lawsuits against competitors Johnson & Johnson and Chattem. David Callahan represents Dyson, recently filing an infringement case on its behalf against AAA Kitchen regarding its ‘Airblade’ trademark, concluding with a favourable settlement and a permanent injunction. In the Los Angeles office, Torres, ‘an extremely business savvy lawyer’, is also representing Victoria’s Secret as defendant in a trademark infringement lawsuit brought by apparel company Fortune Dynamic.

Morrison & Foerster LLP’s core group is based in San Francisco, led by Douglas Hendricks, who provides commercial litigation experience, and Jennifer Lee Taylor, who is active across IP litigation and counseling. The team has broad litigation experience before the USPTO and at trial and appellate level. It serves clients from a diverse range of industries, with previous successful representations for leading companies such as Robert Mondavi Winery, Lucasfilm, Indian Motorcycle International, and medical devices company NuVasive, as well as well-known names in retail services. Its recent focus has been on the medical devices, pharmaceuticals and hi-tech (particularly internet-based) sectors, representing both plaintiffs and defendants, including trademark fraud and anti-counterfeiting cases, and internet matters involving key word advertising – an area on which a number of recent high-profile trademark cases have focused. Trial and appellate attorney Benjamin Fox and Anthony Press successfully advised Konami Digital Entertainment as plaintiff in a high-profile dispute against Upper Deck, alleging the latter distributed counterfeit copies of its popular Yu-Gi-Oh! trading card game, with the case settled in Konami’s favor. Rosemary Tarlton has particular experience in domain name and anti-cybersquatting disputes. With experience representing software companies, Michael Jacobs represented Autodesk in its trademark infringement case against Solidworks, which considered the issue of whether computer file extensions can be trademark protected; the court held that they are not protectable but a later settlement between the parties agreed that ‘DWG’ was a valid trademark owned by Autodesk. Jacobs also settled on behalf of Yahoo! a trademark infringement suit brought against it by American Airlines regarding online key word advertising.

Cooley LLP’s trademark, copyright and advertising group draws on the firm’s commercial litigation expertise to handle trademark disputes, which has been one of the most active areas of IP for the group, and is reinforced by a high volume of counseling and portfolio handling. It maintains a strong reputation in representing hi-tech and internet clients, with leading names such as Facebook and VistaPrint among its client base. Its track record also includes representing music promoter Live Nation in a trademark infringement case filed by Black Sabbath band member Tony Iommi, which was settled. The team has also seen a recent increase in cases related to internet advertising. The team is based across the firm’s California and East Coast offices, with John Crittenden a highly reputed figure. Group chair Peter Willsey successfully represented language-learning software company Rosetta Stone in its dispute with Topics Entertainment over trademark and trade dress infringement regarding both parties’ product packaging; Topics counter-sued seeking a non-infringement judgment just hours after Rosetta Stone filed its lawsuit, but a district ruling deviated from the ‘first-to-file’ rule and dismissed Topics’ action. Janet Cullum, Michael Rhodes and Anne Peck also focus on internet and domain name trademark disputes, with clients including Facebook, Nvidia and Digital Chocolate.

Although IP boutique Fitzpatrick, Cella, Harper & Scinto is primarily a patent-focused firm with particular strength in serving pharmaceutical companies, it does handle some notable trademark disputes, with fashion brand Calvin Klein, apparel company Phillips Van Heusen and industrial manufacturer Schaeffler among its key clients. Edward Vassallo chairs the firm’s trademarks group and offers trial and appellate level experience. Vassallo represented The Dreyfus Corporation and MBSC Securities in a domain name dispute before the National Arbitration Forum, with the panel concluding in favor of the client as complainant regarding the use of dreyfuscorp.com and dreyfus-corp.com domain names by false aliases. Timothy Kelly has experience in e-commerce disputes, while Warren Olsen and Pasquale Razzano are other trademarks lawyers with significant litigation experience. Razzano has represented Mars and Nike in trademark and trade dress infringement cases. The practice recently led on both the plaintiff and defendant sides in infringement and interference cases for clients such as Disney Enterprises. It acted for travel agency Gap Adventures as defendant in a trademark infringement case filed by The Gap Inc, and advised Everest Gaming as plaintiff in a case against casino gaming giant Harrah regarding the use by the defendant of Everest Poker trademarks in relation to its world poker tournament.

Fulbright & Jaworski LLP’s trademark litigation group handles a wide spectrum of disputes, including anti-counterfeiting, trade dress and internet-related cases for well-known US-based and international companies. In the New York office, Mark Mutterperl and his team are well regarded for their counsel expertise. Mutterperl has experience in district courts across the US, as well as before Second and Fifth Circuits. Clients include high-profile names in telecoms, beverages, consumer products and retail services, in areas such as trade dress, trademark infringement and unfair competition disputes. From the Austin base, Richard Groos handles a broad range of trademark litigation as well as non-contentious matters. Acting alongside Minneapolis-based Timothy Kenny and Laura Borst, Groos represented General Mills in relation to a previous trademark infringement case it filed against a Turkish company regarding a brand-name product, with the defendant held in contempt when it violated a previous court order not to bring its brand of products into the US. Groos and Kenny also represented UnitedHealth Group in domain name and other cyber-related litigation.

Latham & Watkins LLP is perceived by clients to have particular strength in trademark litigation, with a team of lead lawyers with extensive experience across a range of issues, serving clients in a broad spectrum of sectors. Perry Viscounty focuses on the hi-tech, life sciences and media sectors, with clients including online and print publishers Entrepreneur Media, Omnicom and One True Vine. Viscounty settled a case for gaming company Trion Worlds, which was sued by game publisher Palladium Books for trademark infringement regarding the ‘Rifts’ name. The case went before district court and the TTAB, with the case dismissed and motions for expedited discovery and preliminary injunction denied. Viscounty was also part of a team representing as plaintiff Iconix Brand Group, a company that licenses to retailers and manufacturers, as appellate co-counsel in a successful appeal regarding a breach of licensing, trademark infringement and fraud case, with an original $40m damages award restored. Split between Los Angeles and Silicon Valley, Bob Steinberg is currently part of a team representing the trust that manages photographer Ansel Adams’ publishing rights, which has brought a suit against an individual and a media company, in a highly publicised trademark infringement case. In Chicago, litigator Matthew Walch has been lead counsel for clients such as online employment site Career Builder and the United States Olympic Committee.

Well regarded for its overall trademark capabilities, McDermott Will & Emery LLP serves a range of companies in the consumer goods, hi-tech and communications sectors, with a particular specialism in representing owners of apparel labels and alcoholic beverages. On the litigation side, experienced trial counsel John Dabney leads the firm’s global practice. Highlights included obtaining a seven-figure settlement for American Automobile Association, in an infringement case it brought against a domestic insurance company, as well as representing Tyco International subsidiary ADT Security as plaintiff in a lawsuit regarding its blue octagon company logo trademark, achieving a permanent injunction in court. Also based in Washington DC, Robert Zelnick has strong experience handling litigation related to trademarks at federal and appellate court level, as well as at the TTAB. Zelnick recently represented IT management company CGI Group before the TTAB in a trademark opposition filing. Following two years of litigation against competitor The CCI Group, the panel concluded that its trademark could cause confusion and that the client’s trademark is famous. Additional clients include Absolut Vodka, First Transit, Guggenheim Museum, eFax and hotel franchisor Howard Johnson.

IP boutique Pattishall, McAuliffe, Hilliard & Geraldson LLP has a strong specialisation in trademarks, with experience across a full range of litigation matters at TTAB and federal court levels. Based solely in Chicago, its capabilities are perhaps smaller than some larger specialist and general service firms, although it is well regarded for its track record. Clients include PepsiCo, Bayer Healthcare, Oracle America and Acer, and its experience includes significant disputes related to issues such as gray market goods, as well as internet and e-commerce matters. It successfully represented Mastercard International in a domain name dispute where the defendant had registered dozens of infringing domain names. More recently, the practice successfully led for The John Carson Foundation before the TTAB, which sustained a previous ruling granting summary judgment to the client and denying the defendant a trademark registration for ‘Here’s Johnny’; the decision affirmed the right of publicity to the former entertainer even after his death. Senior partner David Hilliard is a long standing figure in trademark litigation, with extensive trial and appellate experience, and is notable for representing Ford Motor Company and PepsiCo. Phillip Barengolts represented Bayer Healthcare as plaintiff in a domain name dispute against multiple defendants.

Covington & Burling LLP advises on a full range of trademark disputes, handling a high volume of cases for major clients including Pearson Education, McGraw-Hill, Microsoft, Yahoo!, Bacardi and Spirits International (SPI Group), as well as acting as national trademark counsel for American Automobile Association (AAA). It works closely with the IP practice’s internet enforcement group to litigate against cybersquatting, successfully recovering hundreds of domain names for clients such as Microsoft and AAA. The practice’s biggest case remains defending Spirits International in long-running litigation against the Russian government in relation to the Stolichnaya vodka trademark, of which the government is trying to reclaim ownership; a Second Circuit appeal affirmed dismissal of fraud charges but the litigation remains ongoing. The firm also advised The Wine Group against leading alcoholic beverages company Diageo, which owns world-famous brands such as Smirnoff and Johnnie Walker. Key attorneys are split across the firm’s Washington DC and California offices, with Neil Roman leading on trademark actions for AAA. He also represented Microsoft in a lawsuit brought against it by Bing Information Design for infringement by using the name for its search engine. Litigator Simon Frankel recently represented the German American Chamber of Commerce regarding rights to its name.

Cowan, Liebowitz & Latman, PC is well regarded for its contentious trademark capabilities. Richard Mandel handles internet-related issues and Eric Shimanoff advises clients across a wide range of consumer product sectors. The team successfully represented Ferrari at a Ninth Circuit appeal, in relation to enforcing an earlier settlement against replica car manufacturer Exoto, which prohibited the future use of ‘Ferrari’ marks. Mandel and Shimanoff are also part of the team representing longstanding client Promotion In Motion, a confectionery food manufacturer in high-profile trademark infringement litigation regarding its SwissKiss product. Rival company Hershey brought suit against the client, alleging that the product infringes its ‘Kisses’ product line. Arlana Cohen’s focus includes anti-counterfeiting issues. Cohen represented Norwegian lamp company Luxo in bringing a high-profile trademark infringement case against Disney and Pixar. The client alleged that its own Luxo lamp trademark was being infringed by Disney/Pixar’s limited edition Luxo Jr lamp product. Joel Schmidt counts international apparel companies among his clients; he represented design house Mercy of Canada in a well publicised claim against Diane von Furstenberg’s company, alleging that it had copied elements of one of its clothing designs.

Goodwin Procter LLP attracts praise from clients for its strong support and personalised service. Spread across New York, Washington DC and Boston, the litigation team works closely with the transactional side of the practice, with particular expertise in footwear and sports apparel matters, as well as serving financial groups such as JPMorgan and RBS. It acted for educational travel tour provider Explorica regarding a competitor’s use of the ‘Explorica’ name for rebranding its educational programs. It also represented New Balance Athletic Shoes in a trade dress and unfair competition case against Louis Vuitton regarding its well-known 574 model shoe, with a settlement reached in the client’s favor. It also successfully defended Triumph Learning before the TTAB in an opposition for trademark registration. Notable attorneys include Boston-based David Hosp and Mark Puzella, who are ‘smart, creative and anticipate everything’. Hosp and Puzella represent newspaper publications The New York Times and The Boston Globe, and Citizens Financial Group. Other clients include toy company Wham-O and Eric van Egeraat Associated Architects.

Kelley Drye & Warren LLP advises the companies behind well-known global consumer product brands such as Avon, Bacardi and Polo. New York-based IP chair William Golden is an experienced trial counsel, while Andrea Calvaruso leads the trademark and copyright group, with experience in district court, TTAB and ICANN proceedings. A particular highlight for Golden was successfully representing Bacardi in its long-running dispute with Pernod Ricard regarding the Havana Club trademark, with a district court ruling that no violation was found; the matter is now set to go to appeal at the Third Circuit. The practice was also involved in representing PRL USA Holdings in relation to its Polo fashion brand. Its track record also includes successful representations at New York district courts for various consumer product companies. It also successfully defended Perrigo against a lawsuit filed by Rexall Sundown regarding trademark violation and unfair competition in relation to a product description on Perrigo’s generic version of Rexall’s Osteo Bi-Flex brand product.

With a full-service practice, Mayer Brown can draw on a team across its East Coast, Central and West Coast offices, with broad experience in litigating at various levels and a notable client base which includes Nestlé USA and YouTube. IP litigator John Mancini led on many of the practice’s recent highlights, including a trademark infringement win for Entertainment One as defendant in a case brought by well-known television network E! Entertainment to prevent the client from re-branding itself with the ‘E1 Entertainment’ mark; the lawsuit was denied with the decision affirmed on appeal. Nestlé remains a major client, with two favorable settlements achieved for the global food corporation, including an infringement action brought by Weight Watchers International against Nestlé and Dreyer’s Grand Ice Cream regarding the ‘Weight Watchers’ and ‘Points’ trademarks. Other notable attorneys include Richard Assmus and Michael Adams in the Chicago office, who both have experience in federal court and TTAB proceedings, and recently acted on a case involving cybersquatting, infringement and unfair competition issues.

‘A go-to firm for trademark litigation’, Paul, Hastings, Janofsky & Walker LLP ‘provides practical advice that complements a client’s business needs’. The team is split across seven offices, mainly based in California, but also in Washington DC, New York and Atlanta. Robert Sherman leads the practice and is praised as being ‘a brilliant trial attorney and an expert in the field’ who offers ‘out-of-the-box thinking’. His extensive litigation experience includes representing leading global brands such as Nestlé Purina Pet Care, L’Oréal and Toni & Guy/TIGI Linea. Sherman led for FragranceNet.com as plaintiff in an internet keyword-related case, which stands out as one the first cases to cite the Second Circuit appeals ruling in Rescuecom v Google, which affirmed that the use of a competitor’s names as a keyword in an online search engine advertisement constituted a ‘use’ under the Lanham Act. In an illustration of the practice’s niche strength in acting to help protect well-known brands in fashion and cosmetics, including the likes of French Connection, Nine West and Jones New York, Sherman also advised the American Apparel and Footwear Association to help New York Senator Charles Schumer craft a bill for a new form of copyright protection for fashion designs. Additional highlights included advising L’Oréal in relation to a dispute between Polo Ralph Lauren (PRL) and USPA; L’Oréal, PRL’s exclusive licensee for fragrances, counterclaimed against USPA for trademark infringement, with the court prohibiting the defendant from using blue packaging.

Proskauer Rose LLP’s Brendan O’Rourke and Lawrence Weinstein co-chair the firm’s false advertising and trademark group, which has recently acted on some high-profile litigation regarding well-known competitor brands. The team includes ten partners, mainly based in New York, and the practice focuses on representing global consumer product companies and start-ups as well as individuals and corporations from the entertainment field. Fortune 500 energy company PPL Corporation, Mount Sinai Medical Center, a major casino operator and a sports governing body can be counted among clients recently represented in disputes. Highlights included successfully settling for Major League Baseball Properties (MLBP) as plaintiff in a lawsuit against The Upper Deck Company involving trademark infringement, unfair competition under the Lanham Act, and breach of contract allegations in relation to former licensing terms and the sale of unauthorized trading cards; the settlement included the defendant paying over $2.4m in past debts and being permanently enjoined from using any MLBP IP rights. The firm is also representing Colgate-Palmolive as defendant in a case brought by fellow leading toothpaste maker GSK, which alleges trademark and trade dress infringement regarding the ‘triple action’ formula and well-recognised ‘nurdle’ of toothpaste blob image used on the packaging of both parties’ products.

Weil, Gotshal & Manges LLP’s well-regarded IP and media litigation group is perceived as being highly pragmatic and business-oriented with good depth of expertise at both partner and associate level. Practice chair Bruce Rich and Benjamin Marks are noted for their ability to write strong briefs as well as being good on their feet, while Randi Singer and commercial litigator Bruce Meyer provide ‘solid and practical advice delivered in a very responsive manner’. The team has developed a strong reputation through its representation in arguably the most closely watched trademark dispute in recent years, Tiffany v eBay. A team consisting of Rich, Singer, Meyer and counsel Jonathan Bloom successfully represented eBay at district, Second Circuit appeal and Supreme Court levels against an allegation that it was responsible for monitoring counterfeit products offered on its website; the plaintiff’s argument was rejected to affirm that eBay did take appropriate action against counterfeit items, a false advertising claim was also dismissed and finally, a petition for certiorari was also denied. The case garnered huge interest in what was a potentially major challenge to major e-commerce businesses involved in third-party trading, with names such as Yahoo! and Google involved in amicus briefs. Rich focuses on the internet, communications and entertainment sectors, and has helped develop the practice’s reputation in acting for prominent names in high-profile disputes. Singer’s previous experience includes achieving a favorable settlement for Procter & Gamble as defendant in a false advertising proceeding against Kimberly-Clark.