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United States > Intellectual property > Trademarks: litigation > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Trademarks: litigation
  2. Leading lawyers

Debevoise & Plimpton LLP is ‘among the very best for the most complex trademark disputes’. The team is praised as ‘very responsive, business-oriented, and dedicated to the interests of the client’. Work highlights included the successful representation of Snyder’s-Lance subsidiary Princeton Vanguard in a Federal Circuit appeal against a decision by the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) to cancel the client’s ‘Pretzel Crisps’ trademark on the grounds that it was generic; the Federal Circuit found in the client’s favor, ruling that the ‘genericness’ of a multi-word trademark cannot be decided based on the genericness of its component words. The team also represented Swiss Watch International as defendant in a trade dress dispute with Audemars Piguet. Other clients include Pernod Ricard, KIND and Kate Spade. ‘Excellent trademark litigatorDavid Bernstein is recommended along with Michael Schaper and Jyotin Hamid in New York. Bruce Keller became an assistant US attorney in New Jersey.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is an ‘excellent’ boutique with ample trademark litigation experience across a broad range of industries, and has particular expertise with survey research. Recent highlights included the successful representation of PNC Bank as defendant in a dispute with mobile application developer Keith Alexander Ashe before Maryland District Court, which, referring to the Supreme Court decision in B&B Hardware v Hargis Industries, gave preclusive effect to an earlier TTAB decision regarding the defendant’s use of the Spendology mark and dismissed the plaintiff’s infringement claim. The team has also been handling several trademark disputes for Under Armour, including a trademark and trade dress infringement suit against Skechers, and defending an infringement claim brought by Hydro Clothing. Other clients include Bridgestone, Caterpillar, Giant Bicycle and Starbucks. Recommended lawyers include the ‘outstandingDouglas Rettew, the ‘experienced and pragmaticMark Sommers, the ‘responsive and accurateDanny Awdeh, and the ‘brilliant strategistJulia Anne Matheson, all of whom are based in Washington DC.

The ‘outstandingFross Zelnick Lehrman & Zissu, P.C. is experienced in the full spectrum of trial, appellate and TTAB litigation across a broad range of industry sectors. ‘Excellent litigatorBarbara Solomon has handled several matters for the luxury goods company Chanel, including a successful opposition before the TTAB to a real estate developer’s attempt to register the mark CHANEL for real estate services. Richard Lehv successfully represented Jack Wolfskin before the Federal Circuit, which reversed a TTAB decision to reject the client’s paw print trademark application for clothing based on likelihood of confusion with New Millennium Sports’ Kelme trademark for soccer shoes. James Weinberger and Laura Popp-Rosenberg represented Gap and successfully defeated a motion for preliminary injunction brought by Hoop Culture regarding alleged infringement of its ‘Eat...Sleep...Ball.’ trademark. All mentioned attorney are based in New York.

Kilpatrick Townsend & Stockton’s practice is praised for its ‘excellent legal and industry knowledge’ and ‘very short response times’. The widely recognized William Brewster, based in Atlanta, leads a large team that includes many ‘excellent’ litigators, including Dennis Wilson, Larry McFarland, and David Caplan in Los Angeles, Lisa Pearson in New York, and Judith Powell and Charles Henn in Atlanta. The team represented Flowers Bakeries Brands in a trademark infringement suit against its competitor Bimbo Bakeries regarding the similarity of the plaintiff’s Nature’s Own trademark with the defendant’s Nature’s Harvest trademark. On the defense side, it successfully represented Instagram against infringement claims regarding the photo-editing mobile application Layout, and it continues to act for Adidas in a dispute with Skechers. Other clients include Chrysler, FN Herstal, Energizer, Yahoo!, and Ikea.

The ‘efficient, practical and results-focused’ team at Cooley LLP is particularly noted for its work in the technology sector. San Francisco-based John Crittenden is especially recommended for online-related trademark disputes. Work highlights included his defense of Global Personals, creator of an online dating platform, in a suit filed by Avid Life Media alleging trade dress and trademark infringement. Practice chair Peter Willsey in Washington DC and the ‘remarkable’ Janet Cullum in New York successfully defended Google against two individuals who challenged the Google trademark based on its generic use to describe internet searches. Other work came from Facebook and RedPad.

The ‘excellent’ team at Jones Day often handles high-profile disputes for big brands. Washington DC-based practice co-head John Froemming is a ‘diligent, professional and knowledgeable trademark litigator’ and has particular expertise in non-traditional trademarks. He successfully represented eos Products in a trade dress dispute with Oralabs, which agreed to stop selling egg-shaped lip balm. The ‘phenomenal’ Cleveland-based practice co-head Meredith Wilkes continues to represent Victoria’s Secret in several cases throughout the US aimed at shutting down the sale of merchandise that infringes the client’s PINK trademark and trade dress, and she also acted for Avid Technology in a trademark infringement suit against competitor Media Gobbler. Washington DC-based Susan Kayser obtained multiple wins for several Richemont luxury brands, including Chloé, Cartier, Montblanc, and A. Lange & Söhne, in a contributory infringement case against the B2B website operator TradeKey.

Washington DC-based boutique Kelly IP LLP provides ‘high-quality and efficiency’ in its work and is ‘good value for money’. The team is skilled across the spectrum of trial, appellate and TTAB litigation and has particular expertise regarding unconventional marks. The ‘outstandingDavid Kelly and Robert Litowitz successfully defended the purple color mark for AstraZeneca and obtained temporary restraining orders and preliminary injunctions against Camber Pharmaceuticals and Dr. Reddy’s Laboratories. Kelly and Stephanie Bald successfully represented Aston Martin in a dispute with its former design director Henrik Fisker, who then agreed not to build an automobile he had shown at an automotive show in Florida. Former TTAB judge Linda McLeod handles numerous opposition and cancellation proceedings, including the successful representation of Disney subsidiary Playdom in a cancellation against David Couture’s registration for the mark PLAYDOM. Other clients include Harley-Davidson, Philips, Yahoo! and the BBC.

Kirkland & Ellis LLP’s ‘exceptionally savvy and talentedDale Cendali in New York is frequently involved in high-profile trademark litigation and has particular expertise in trademark dilution and reverse confusion cases. Other notable partners are Claudia Ray, who is also based in New York, and Los Angeles-based Diana Torres. Cendali and Ray successfully represented Nike-subsidiary Converse before the International Trade Commission (ITC) in a trade dress infringement suit against Walmart, Skechers and other companies regarding the plaintiff’s Chuck Taylor All-Star shoe design. Cendali and Torres continue to represent the smartphone case manufacturer LifeProof in a trademark infringement suit against Seal Shield and KlearKase regarding the defendants’ use of the LIVEPROOF mark. On the defense side, Ray is representing the advertising company Droga5 against trademark infringement and unfair competition claims brought by Dov Seidman and LRN.

Morrison & Foerster LLP’s team ‘is very effective in handling complex trademark matters’, according to a client. San Francisco-based Jennifer Lee Taylor is a ‘levelheaded and effective negotiator and litigator’ and has particular expertise in non-traditional marks, trademark dilution and reverse confusion cases. Recent highlights include representing NOVADAQ, which uses the SPY mark for medical fluorescence imaging, in a reverse confusion case against competitor Karl Storz regarding its launch of a product under the name SPIES. She also acted for MI Technologies in obtaining a temporary restraining order against Electrified Discounters regarding infringement of the OSRAM trademark for projection lamps. Los Angeles-based Benjamin Fox represented the Swiss jewelry and watch maker Philippe Charriol in litigation against its former US distributor A’lor, after the defendant launched a competing brand.

Quinn Emanuel Urquhart & Sullivan, LLP draws on its excellent commercial litigation capabilities in handling high-stakes trademark disputes. New York-based practice head Robert Raskopf is praised as a ‘very experienced and knowledgeable litigator’, and he continues to defend the football team Washington Redskins against attempts by different Native American groups to cancel its trademark on grounds that it is offensive. Margret Caruso in Silicon Valley has handled several disputes for Google, including a successful defense against trademark infringement claims by Hangingout regarding Google’s use of the term ‘Hangouts’ in connection with video-conferencing and communication services. On the plaintiff-side, New-York-based Todd Anten represented IMS to protect its OneKey trademark for healthcare database services against Veeva Systems, which launched a competing service under the name OpenKey.

Arnold & Porter Kaye Scholer LLP’s practice is especially prominent in the luxury goods sector, where it has handled contentious trademark matters for clients such as Gucci, LVMH, Pernod Ricard and Richemont. New York-based Louis Ederer often leads in such matters and has particular expertise in design and trade dress protection. Work highlights included his successful representation of Bottega Veneta before the TTAB in a dispute with Marc Fisher regarding the registration of the client’s weave design for leather goods. He also acted for jewelry brand David Yurman in a trademark infringement suit against warehouse retailer Sam’s Club. The firm also acts for the Washington Redskins in defense of attempts by different Native American groups to cancel its trademark on grounds that it is disparaging.

The ‘excellent’ team at Cowan, Liebowitz & Latman, PC in New York handles federal court and TTAB litigation across a broad range of industry sectors. Jonathan King successfully represented Car-Freshner in a trade dress infringement suit against Exotica Fresheners. Eric Shimanoff and William Borchard have been assisting Empire State Building with the protection of its brand, including the recent opposition against a registration of a beer logo featuring an image of the building. Richard Mandel handled several disputes for candy manufacturer Promotion in Motion, including a trade dress infringement suit against Aldi regarding its Welch’s Fruit Snacks brand. Mary Kevlin regularly handles contentious trademark proceedings brought by Major League Baseball Properties as well as its constituent clubs.

The team at Katten Muchin Rosenman LLP is ‘extremely responsive and very business-oriented’ and acts for well-known brands in a variety of industry sectors. Highlights included the defense of ArcBest subsidiary Panther Premium Logistics against trademark infringement claims by Jaguar Land Rover over its leaping feline logo, acting for electronic cigarette manufacturer PAX Labs in a trade dress dispute with Philip Morris, and representing bicycle parts manufacturer ENVE Composites in a trademark infringement suit against Giant Bicycle. Other work came from Mattel and Kimberly-Clark. Recommended lawyers include ‘very skilled litigatorFloyd Mandell and the ‘client-focusedKristin Achterhof in Chicago, as well as the ‘very experiencedRoger Furey in Washington DC and the ‘pragmaticKaren Artz Ash in New York.

The very experienced team at Kenyon & Kenyon LLP has handled many trademark cases over the years. Work highlights include the successful defense of online travel planning service Pintrips against trademark infringement claims by online service provider Pinterest regarding the term ‘pin’, acting for the distiller William Grant & Sons in the dispute with Federal Treasury Enterprise Sojuzplodoimport over the Stolichnaya vodka trademark, and representing Dish Network in its dispute with Digital Satellite Connections regarding the DishNet trademark. Recommended lawyers include practice head James Rosini in New York as well as Edward Colbert and Susan Smith in Washington DC. Michelle Mancino Marsh went to Arent Fox LLP in September 2015.

Latham & Watkins LLP’s skilled and wide-ranging litigation practice incorporates a significant number of trademark disputes, particularly in the technology sector, and it has a niche in contentious trademark matters in the nonprofit sector. Practice head Perry Viscounty in Orange County and San Diego-based Jennifer Barry successfully represented craigslist in several trademark and copyright suits against 3Taps and its apartment listing websites. The firm also represented Yucaipa, the owner of the Aloha Airlines trademark portfolio, in a dispute with Hawaiian Airlines over the use of the ‘Aloha’ mark. In the nonprofit sector, the team successfully represented The Heroes Project in a trademark infringement suit against Fitco Cares Foundation and Fitco Fitness Center Outfitters regarding the defendants’ use of the HEROES PROJECT mark.

The team at McDermott Will & Emery LLP is praised for its ‘great industry knowledge’ in the alcoholic beverages sector. Recent work highlights in this area included acting for Kahlua Coffee Liqueur in a trademark infringement suit against a competitor selling ‘Kahfua’ branded coffee liqueur, assisting Brooklyn Brewery with several TTAB and UDRP proceedings, as well representing Heineken before the TTAB in opposition of Marcon’s registration of the Heineken mark for ‘meat juices’, such as chicken broths. The team also handles disputes for clients in a variety of other industries. For example, it has been defending Tyson Foods subsidiary Hillshire Brands against trademark infringement claims by Parks regarding the defendant’s launch of ‘Park’s Finest’ hot dogs. Other clients include Korean Air Lines and Sunrise Senior Living. Practice head John Dabney and Robert Zelnick in Washington DC are particularly recommended.

Chicago-based boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP has a long history of handling contentious trademark matters for clients from various industries. Bradley Cohn and Phillip Barengolts represented Bayer in a dispute with Belmora before the Fourth Circuit regarding the cancellation of the defendant’s Flanax trademark for pain relief medicine. Cohn and Thad Chaloemtiarana successfully represented Robert Bosch in a trademark infringement and false advertising dispute with Euro-Star Industries; Robert Sacoff represented Belgian company Donnay International in a dispute with its trademark licensee Donnay USA regarding the termination of a tennis racket license; and Jonathan Jennings acted for Icelandair in a dispute with Delta Air Lines before the TTAB over the Economy Comfort trademark.

Proskauer Rose LLP’s trademark practice is praised for providing ‘value for money’ and is noted for its industry expertise in alcoholic beverages as well as the entertainment and sports. Practice co-chair Brendan O’Rourke is recommended as an ‘outstanding’ litigator. He has been handling several contentious matters for longstanding client Diageo, including defending against a suit filed by Allied Lomar regarding alleged infringement of the plaintiff’s Stitzel trademark by references to the defendant’s Stitzel-Weller Distillery in Kentucky. Sandra Crawshaw-Sparks has been defending Madonna and her manager against trademark infringement allegations by beauty and fashion brand Hard Candy over the use of the trademark Hard Candy in association with fitness clubs and related products.

The practice at Sheppard, Mullin, Richter & Hampton LLP draws on its wider commercial litigation capabilities to handle high-stakes trademark disputes. The ‘very experienced and practicalCarlo Van den Bosch in Orange County successfully represented Hana Bank in a long-lasting dispute with Hana Financial regarding the question of who used the Hana mark first in US commerce, with the final victory before the US Supreme Court in 2015. Jill Pietrini in Los Angeles successfully represented Life Alert Emergency Response in a trademark infringement suit against LifeWatch, and New York-based Paul Garrity acted for Walmart in a trade dress dispute with Converse before the ITC. Lisa Martens in San Diego joined the practice from Fish & Richardson P.C..

The ‘excellent’ team at Weil, Gotshal & Manges LLP in New York has outstanding expertise regarding secondary liability of intermediaries for trademark infringements and has been handling such matters for eBay and Facebook. A highlight was the defense of Alibaba against contributory trademark infringement and counterfeiting claims from a group of luxury brand owners, including Gucci, Bottega Veneta and Yves Saint Laurent. The firm is also defending Core-Mark, a provider of marketing and distribution services for retail stores, against allegations of having unknowingly distributed counterfeit 5-HOUR Energy products. Practice chair Bruce Rich has ‘a wealth of experience’ and Randi Singerhas remarkable knowledge of all aspects of trademark law’ and is praised for her ability to ‘bring cases to a close before they get to court’.

Covington & Burling LLP handles a range of trademark litigation before federal courts and the TTAB. San Francisco-based Simon Frankel has been representing Fitbug, a maker of exercise tracking equipment and software, in its trademark infringement suit against competitor Fitbit. Neil Roman and of counsel Ronald Dove in Washington DC have been defending A.T. Kearney in a dispute with Toffler Associates over the service trademark ‘future proof’ for strategic consulting. Roman also continues to act for the SPI Group in its dispute with the Russian agency Federal Treasury Enterprise Sojuzplodoimport regarding the Stolichnaya vodka trademark.

Fish & Richardson P.C.’s team has extensive experience in federal and state court as well as TTAB proceedings. Boston-based Mark Puzella and David Hosp have been handling several contentious trademark matters for New Balance Athletic Shoe, including securing the favorable settlement of a dispute with Karl Lagerfeld regarding the trade dress for the 574 shoe. New York-based Kristen McCallion and John Johnson successfully represented Full Circle United, organizer of the Brewskee-Ball league, in a dispute with the skee-ball machine manufacturer Skee-Ball Inc. Lisa Martens moved to Sheppard, Mullin, Richter & Hampton LLP.

The ‘very strong’ team at Foley & Lardner LLP has a wealth of experience representing clients from various industries before federal courts and the TTAB. Highlights included acting for Herman Miller in trade dress litigation against Office Star regarding the Eames and Aeron chair designs. The team has also been representing home security specialist SimpliSafe in a trademark infringement suit against ArcSoft regarding the defendant’s launch of a home monitoring camera under the trademark Simplicam. Other clients include Citigroup, Kayak Software, and the New York Jets. Jonathan Moskin and Robert Weisbein in New York are recommended.

Greenberg Traurig, LLP’s practice, led by Susan Heller in Los Angeles, is particularly noted for trademark disputes in the technology and fashion industries. Steven Wadyka in Washington DC successfully represented TracFone Wireless in a trademark infringement and dilution suit against American Wireless. Alan Sutin in New York has been defending Ralph Lauren in an action brought by Rolex concerning the proposed use of the marks Ralph Lauren RLX and RLX Ralph Lauren.

Kelley Drye & Warren LLP’s team handles trademark disputes for a variety of clients and has a particular strength in the fashion industry. It has been representing Ralph Lauren in several disputes with the U.S. Polo Association, including in litigation before federal courts and the TTAB and in arbitration proceedings. Practice chair Andrea Calvaruso in New York is praised for her ‘smart approach to dispute resolution - fighting the fights that need to be fought and settling disputes where appropriate’. The practice has recently grown with the integration of New Jersey-based boutique Ward & Zinna and its principals John Ward and Michael Zinna.

Loeb & Loeb LLP’s team is especially noted for its trademark litigation work in the entertainment, consumer goods and financial services industries, but the broad practice extends beyond these sectors. Douglas Masters in Chicago successfully represented POM Wonderful before the Ninth Circuit, which reversed the district court’s order denying a preliminary injunction in a trademark infringement action against Pur Beverages over the sale of Pur Pom energy drinks. David Grace in Los Angeles represented Fidelity Investments in a dispute with Fidelity Atlantic Investments regarding the client’s Fidelity trade name and service mark.

The ‘extremely capable’ team at Mayer Brown is led by John Mancini in New York. Further notable trademark litigators include Richard Assmus in Chicago and New York-based Allison Levine Stillman. It has been handling several contentious matters for Nestlé, including a dispute with HiLine Coffee regarding trademark and trade dress infringement of the client’s Nespresso capsules. It also continues to represent the lifestyle magazine publisher DM Luxury in a suit against Celebrity Cruises regarding the defendant’s alleged use of the plaintiff’s Modern Luxury trademark and its application to register the mark ‘That’s Modern Luxury’.

Norton Rose Fulbright US LLP’s team has handled contentious trademark matters for a variety of clients before federal courts and the TTAB. The team is led by Timothy Kenny in Minneapolis. Other notable trademark litigators are Saul Perloff in San Antonio and Michael Metteauer in Austin. Work highlights included the representation of Nestlé Health Science-Pamlab in a dispute with Virtus Pharmaceuticals. Other mandates came from The Men’s Wearhouse, Mary Kay, NRG Energy, and Fair Isaac Corporation.

Orrick, Herrington & Sutcliffe LLP is especially strong in trademark litigation in the apparel and alcoholic beverages sectors, but it also handles disputes outside of those key areas. Practice head Peter Vogl has been handling several matters for the wine and spirits company Chatham Imports, including a recent dispute with Bomberger’s Distillery, Thistle Finch Distilling and Heritage Spirits. He is also acting for Coorstek Medical in challenging the registration of the pink color mark for hip replacement products by competitor Ceramtec. Lisa Simpson is noted for her work in the fashion industry. The mentioned attorneys are based in New York.

Pillsbury Winthrop Shaw Pittman LLP’s team has been handling several high-stakes court disputes and appeals, as well as TTAB proceedings. Practice chair Bobby Ghajar in Los Angeles acted for Facebook in multiple contentious trademark matters, including the successful defense of Facebook subsidiary Oculus VR against a trademark infringement claim brought by video hosting service Oculu, LLC. ‘Strong and relentless litigator’ Callie Bjurstrom in San Diego successfully represented HM Electronics as plaintiff in a trademark infringement and unfair competition suit against R.F. Technologies.

Steptoe & Johnson LLP’s practice is particularly strong in the luxury goods sector, but also handles contentious trademark matters for clients from a variety of other industries. The Washington DC-based practice chairs Michael Allan and William Pecau have been representing LVMH in several contentious trademark matters. Highlights include the successful representation of Louis Vuitton Malletier in a suit against Sunny Merchandise Corporation regarding counterfeit products and infringing Louis Vuitton trademarks in connection with sunglasses and eyewear, and the representation of Moët Hennessy in a dispute with La Maison Du Vigneron regarding the infringement of the client’s Ice Imperial trademark and trade dress for champagne.

Stroock & Stroock & Lavan LLP has been handling several high-stakes disputes for clients from various industries. Charles Cantine successfully represented PODS as plaintiff in a trademark infringement suit before the Middle District of Florida, which decided that defendant U-Haul cannot use the term ‘pods’ for portable moving and storage containers and awarded PODS $60.7m in damages. Laura Goldbard George and Steven Pokotilow have been representing Deutsche SiSi-Werke in a trade dress infringement suit against Faribault Foods regarding the defendant’s alleged copying of the client’s Capri-Sun packaging. Pokotilow also represents Saint Laurie in its trademark dispute with Yves Saint Laurent. All mentioned attorneys are based in New York.

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