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  1. Trademarks: litigation
  2. Leading lawyers

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Debevoise & Plimpton LLP is ‘one of the finest law firms in the country’ for complex trademark disputes. The ‘outstanding’ team is praised as ‘committed, thoughtful, experienced and extremely responsive’. It represents Havana Club Holding and the Cuban state-owned Empresa Cubana Exportadora de Alimentos y Productos Varios in the long-running dispute over the ownership of the ‘Havana Club’ trademark with Bacardi, which purchased the rights from a company that used the mark before the Cuban revolution. Other highlights included representing Merck KGaA Darmstadt in its multi-jurisdictional dispute with Merck & Co regarding the use of the name Merck, specifically how the 1970 coexistence agreement is applied on the internet, and acting for the Snyder’s-Lance subsidiary Princeton Vanguard before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) regarding the registration of the client’s ‘Pretzel Crisps’ trademark. Other clients include Snap, Highline Capital Management and GlaxoSmithKline. David Bernstein, Michael Schaper and Jyotin Hamid in New York are recommended.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is a highly regarded boutique with remarkable litigation expertise; it has been handling a large number of trademark disputes in a broad range of industries and has particular expertise in survey research. Recent highlights include the successful representation of PNC Bank in a dispute with mobile application developer Keith Alexander Ashe regarding the use of the ‘Spendology’ mark, and obtaining a preliminary injunction for LG against 18 companies that sold counterfeit LG TONE Bluetooth headsets. The team also handled several contentious matters for Under Armour, including a recent defense against a trademark infringement claim by Healthbox Global Partners regarding the client’s newly launched connected fitness product under the name ‘Healthbox’. Recommended experts include practice head Douglas Rettew as well as Mark Sommers, Danny Awdeh and Julia Anne Matheson, all of whom are based in Washington DC.

The practice at Kilpatrick Townsend & Stockton impresses with its large team of high-profile trademark litigators, which spans many locations and has expertise in a broad range of industries. Particularly recommended are practice head William Brewster, Judith Powell and Charles Henn in Atlanta, Dennis Wilson, Larry McFarland and David Caplan in Los Angeles, and Lisa Pearson in New York. Highlights included the successful defense of FX Networks and Fox in a trademark lawsuit filed by ExxonMobil, which alleged that the stylized ‘FXX’ mark used by a new Fox television network was likely to infringe and dilute Exxon’s ‘interlocking X’ mark. The team also successfully defended Instagram against developer Michael Swanson, who claimed common law trademark rights for his mobile app ‘Layout’ after the client launched an app with the same name; the claim was denied based on the genericness of the term. On the plaintiff side, the firm represented adidas in an action against competitor Skechers regarding several trademark and trade dress infringements.

Cooley LLP is particularly recommended for handling contentious trademark matters in the technology sector and also regularly acts for clients in a variety of other industries. The highly regarded team litigated several cases for key client Google, including a long-lasting dispute with VIA Technologies regarding rights to the ‘Chrome’ mark and an action to prohibit the internet marketing firm Local Lighthouse Corp from using Google’s trademarks. The team also assisted Sazerac to protect its ‘Fireball’ brand of cinnamon-flavored whiskey with a trademark infringement suit regarding an online search advertising feature against competitor Jack Daniels and with another action against Stout Brewing Company regarding its ‘Fire Flask’ malt liquor. Practice chair Peter Willsey in Washington DC is recommended along with Janet Cullum in New York and John Crittenden in San Francisco. The Los Angeles office of the firm has been strengthened with the arrival of Bobby Ghajar from Pillsbury Winthrop Shaw Pittman LLP.

The ‘excellent’ boutique Fross Zelnick Lehrman & Zissu, P.C. in New York covers the full spectrum of trial, appellate and TTAB litigation and has experience across a broad range of industry sectors. Recent work includes representing Aquazzura Italia in a trade dress infringement suit against Ivanka Trump regarding two shoe designs, acting for Robert Kirkman as plaintiff in a trademark infringement and dilution action against Phillip Theodorou regarding the defendant’s use of the mark ‘The Walking Dead’, and the successful defense of The Gap against a claim by Hoop Culture regarding alleged infringement of its ‘Eat...Sleep...Ball.’ trademark. The team also represents Royal Crown and Dr Pepper/Seven Up in an ongoing dispute with Coca-Cola regarding the latter’s right to register ‘Zero’ and various Zero-formative marks for soft drinks. Other clients include Becton Dickinson, Cartier, Chanel, Hewlett-Packard, Fatboy, Estee Lauder, Tiffany and Warner Bros. Barbara Solomon, Richard Lehv, James Weinberger and Laura Popp-Rosenberg are recommended.

Jones Day regularly handles high-profile disputes for big brands. Procter & Gamble is a key client, for which the team recently secured a consent judgment and permanent injunction against Onuge Personal Care, which infringed P&G’s trade dress packaging and trademarks for its Crest Whitestrips line of products. On the defense side, it has been representing P&G in a trade dress dispute with Hard Candy regarding the client’s Katy Perry cosmetics line. A new client of the firm is vacuum cleaner manufacturer SharkNinja, which it is representing in a trademark and false advertising dispute with competitor Dyson. Other clients include Avid Technology, BMW, eos Products and Wendy’s. Washington DC-based practice co-head John Froemming is particularly recommended for non-traditional trademark and trade dress matters. Other recommended lawyers include practice co-head Meredith Wilkes in Cleveland and Susan Kayser in Washington DC.

Excellent’ boutique Kelly IP LLP in Washington DC handles a large number of TTAB and Uniform Domain-Name Dispute-Resolution Policy (UDRP) matters as well as some high-profile litigation at trial and appellate levels. David Kelly, Robert Litowitz and Stephanie Bald have been representing Philips in a long-running dispute with Hunt Control Systems regarding claims that the former Philips tagline ‘sense and simplicity’ created reverse confusion with Hunt’s mark ‘Simplicity’. The team also has remarkable expertise regarding unconventional marks, as was shown in their successfully defense of the purple color mark for AstraZeneca in a dispute with Camber Pharmaceuticals and Dr Reddy’s Laboratories. Former TTAB judge Linda McLeod handles numerous opposition and cancelation proceedings, including the successful representation of Fox in an opposition against the mark ‘Miltonduff’ for wines, spirits and liqueurs based on the mark ‘Duff’ from The Simpsons television series.

Kirkland & Ellis LLP’s ‘excellent’ practice is regularly involved in high-profile trademark litigation and has particular expertise in trademark dilution and reverse confusion cases. It successfully defended AT&T, defeating a preliminary injunction motion brought by Citigroup alleging that the defendant’s new customer appreciation program ‘AT&T Thanks’ infringes the mark of its customer loyalty program ‘Thankyou’. On the plaintiff side, the team has been representing SoulCycle in a dispute with Soul Pose to protect its ‘Soul’ family of marks. The practice also continues to assist Nike subsidiary Converse in a trade dress dispute with Walmart, Skechers and several other companies regarding the plaintiff’s ‘Chuck Taylor All-Star’ shoe design; currently in an appeal against an ITC decision. Other clients include Accenture, California Credit Union, Droga5, Facebook and Oracle. Practice head Dale Cendali and Claudia Ray in New York are recommended, as is Diana Torres in Los Angeles.

Quinn Emanuel Urquhart & Sullivan, LLP benefits from its exceptional all-round commercial litigation capabilities in handling high-stakes trademark disputes. Highlights included representing football team The Washington Redskins in a very prominent dispute with several Native American groups, who seek to cancel the client’s trademark on grounds that it is offensive, and acting for the Russian government agency Federal Treasury Enterprise Sojuzplodoimport in its dispute with Yuri Shefler regarding ownership of the Stolichnaya vodka brand. In a reverse confusion case, the practice defended Tinder against a lawsuit brought by WildFireWeb, which had a prior registration in a ‘Tinder’ trademark, and managed to settle the case. The team also defended Alibaba against several contributory trademark infringement claims, for example in a case brought by Spy Optic regarding the use of its trademarks in posts by third-party sellers on Alibaba’s e-commerce platforms. Robert Raskopf and Todd Anten in New York and Margret Caruso in Silicon Valley are recommended.

Newly merged firm Andrews Kurth Kenyon LLP houses several highly regarded trademark litigators. Particularly recommended are James Rosini in New York and Edward Colbert and Susan Smith in Washington DC. Recent work includes representing Jim Beam Brands in a dispute with a competitor regarding the use of non-traditional decorative elements and the question of whether they serve as trademarks. The team also continues to act for Dish Network in its dispute with Digital Satellite Connections regarding the ‘DishNet’ trademark. Other clients include Constellation Brands, Horizon Group, Jewelry Channel, Olympus, Pintrips, and the United States Olympic Committee.

Recently merged firm Arnold & Porter Kaye Scholer LLP combines the strengths of two trademark practices. Louis Ederer and his team, formerly of Arnold & Porter, have particular expertise in design and trade dress protection and regularly handle litigation for clients from the luxury goods sector, including Gucci, LVMH and Richemont. Recent work includes representing Sweet People Apparel in a trademark infringement suit against Phoenix Fibers regarding the defendant’s resale of jeanswear products that were intended for destruction and recycling. Paul Llewellyn, formerly of Kaye Scholer, has been handling several contentious matters for Hershey, including a suit against Maryland senator Steve Hershey, who replicated the client’s trade dress for his political campaign material. All mentioned attorneys are based in New York.

Cowan, Liebowitz & Latman, PC’s ‘excellent’ practice in New York handles contentious trademark proceedings for clients from a broad range of industry sectors. Jonathan King and Richard Mandel successfully represented the National Tobacco Company in a dispute with DRL Enterprises, obtaining a decision that 1.0, 1.25 and 1.2 are generic designations for cigarette rolling papers. Eric Shimanoff and William Borchard successfully represented Empire State Building and obtained a decision that the building’s image is a famous mark to be protected against dilution by a beer logo featuring an image of the building. Mary Kevlin regularly handles contentious trademark matters brought by Major League Baseball Properties and recently succeeded in having the TTAB find that ‘World Series’ has a high level of fame, preventing a registration of ‘High School World Series’.

The ‘very knowledgeable’ team at Katten Muchin Rosenman LLP regularly handles contentious trademark matters for well-known brands in a variety of industries. It is particularly recommended for settlement agreements, where it provides ‘practical solutions to complex problems’. Recent work includes the defense of longstanding client Microsoft against claims by the National Grange of the Order of Patrons of Husbandry regarding the client’s use of the term ‘Grange’ in its State of Decay video game. The team has also been defending Forever 21 against allegations by Robert Lopez that garments bearing the phrase ‘Lower East Side’ infringe his trademark ‘LES NYC’. Recommended lawyers include Floyd Mandell and Kristin Achterhof in Chicago, Roger Furey in Washington DC and Karen Artz Ash in New York.

Latham & Watkins LLP draws on its wider commercial litigation capabilities to handle notable trademark disputes. The ‘very efficient’ practice provides ‘high-quality’ legal services, is particularly strong in the technology sector and has niche expertise in contentious trademark matters in the non profit sector. It has handled several matters for craigslist, including a successful trademark infringement, dilution and cybersquatting lawsuit against TheTreasury.Com regarding its use of the ‘Craigpay’ mark and the craigpay.org domain name for online payment services. The team also successfully represented Yucaipa, the owner of the Aloha Airlines trademark portfolio, in a dispute with Hawaiian Airlines over the use of the ‘Aloha’ mark. Practice head Jennifer Barry in San Diego is ‘exceedingly intelligent, thoughtful, responsive and approachable’. Orange County-based Perry Viscounty is praised for his ‘strategic insight and management skills’.

McDermott Will & Emery LLP is well known for its work in the food and beverages industry and is particularly strong in the alcoholic beverages sector. The team has been handling several matters for The Absolut Company and many other Pernod Ricard companies, including Chivas Brothers, Martell and Perrier-Jouët. Recent work includes the successful representation of Absolut subsidiary Kahlua Coffee Liqueur in a trademark infringement suit against Happy Hearts Wine, which had to stop selling a ‘Kahfua’ branded coffee liqueur. The team also successfully defended 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 Brooklyn Brewery, Heineken, Lotte Confectionery, and Sunrise Senior Care. Practice head John Dabney and fellow Washington DC lawyer Robert Zelnick are particularly recommended.

Morrison & Foerster LLP’s practice ‘has the depth and breadth to handle complex trademark cases’ and acts for clients from a broad variety of industries. The team has particular expertise in trademark dilution and reverse confusion cases as well as in matters regarding third-party liability on the internet. Highlights included the representation of Restoration Hardware in a trademark infringement suit against Houzz regarding the appearance of third-party products in search results on the defendant’s marketplace website, and assisting One World Foods with the protection of its Stubb’s BBQ sauce brand by filing a trademark infringement suit against Stubb’s Austin Restaurant. The team also handled several contentious matters for Ubiquiti Networks, including a recent trademark dispute with AstroNova. Jennifer Lee Taylor in San Francisco and Benjamin Fox in Los Angeles are recommended.

The ‘excellent’ boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago regularly handles high-profile trademark litigation for clients from various industries. Phillip Barengolts and Bradley Cohn successfully represented Bayer in a suit against Belmora before the Fourth Circuit regarding the cancelation of the defendant’s ‘Flanax’ trademark for pain relief medicine. Cohn and Thad Chaloemtiarana successfully represented Robert Bosch in a trademark infringement suit against North Shore Imports regarding its sale of counterfeit Bosch canister purge valves for automobiles. On the defense side, Ashly Boesche acted for David Ward Advanced Lubrication in a trademark infringement dispute with Royal Purple and managed to settle the case, and Belinda Scrimenti successfully protected the mark ‘Crossfire’ for AMD in litigation with several defendants.

Proskauer Rose LLP’s ‘very good’ practice is particularly noted for its industry expertise in alcoholic beverages. Diageo is a longstanding client of the firm and has been represented in many contentious trademark proceedings; recent work includes a suit against competitor Mexcor regarding a conflict between the client’s ‘Crown Royal’ whiskey brand and the defendant’s ‘Crown Club’ whiskey brand, and a defense against a suit by Allied Lomar regarding alleged infringement of its ‘Stitzel’ trademark by references to the defendant’s Stitzel-Weller Distillery in Kentucky. The team also defends Madonna against trademark infringement claims by beauty and fashion brand Hard Candy over the use of the mark ‘Hard Candy’ for fitness clubs and related products. Practice co-chair Brendan O’ Rourke and Sandra Crawshaw-Sparks in New York are recommended.

Weil, Gotshal & Manges LLP’s ‘excellent’ team in New York is particularly noted for its expertise regarding secondary liability of intermediaries in trademark infringements. It has been handling several such matters for eBay, including a recent defense against a suit by Wimo Labs, which alleges that eBay permits the sale of counterfeit versions of the plaintiff’s phone cases on its e-commerce marketplace. The team also defends Alibaba against contributory trademark infringement and counterfeiting claims from a group of luxury brand owners, including Gucci, Bottega Veneta and Yves Saint Laurent. In the offline world, the firm successfully defended 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 and Randi Singer are recommended.

Covington & Burling LLP’s practice handles a broad range of contentious trademark proceedings before the federal courts and the TTAB. Highlights included the defense of Expedia against a putative class action by several hotels, which claim that Expedia included them in its search without permission and inaccurately listed them as having no vacancies, constituting trademark infringement and false advertising. On the plaintiff side, the team acts for John Deere in pursuing trademark infringement and dilution claims against a company that is using the widely recognized Deere colors on its towed agricultural equipment. Simon Frankel in San Francisco as well as Neil Roman and of counsel Ronald Dove in Washington DC are recommended.

Fish & Richardson P.C.’s practice has extensive experience in trademark litigation before various courts and is especially known for its representations on the defendant side. It has been handling several contentious trademark matters for New Balance Athletic Shoe, including a recent successful defense before the ITC against trade dress claims by Converse regarding its ‘Chuck Taylor’ sneaker. The team also defended Samsung against trademark infringement allegations by Milk Studios regarding the client’s music application ‘Milk’ and the matter was resolved in a settlement. Mark Puzella and David Hosp in Boston are recommended.

Foley & Lardner LLP’s team is noted for its experience representing clients from various industries before federal courts and the TTAB. Highlights included the successful representation of Herman Miller in trade dress litigation against Office Star regarding the Eames chair design, while another dispute regarding the Aeron design is still ongoing. The team has also been representing Citigroup in several proceedings against multiple parties to protect the client’s customer loyalty program brand ‘Thankyou’, and it continues to act for home security specialist SimpliSafe in a trademark infringement action against ArcSoft regarding the defendant’s launch of a home monitoring camera under the name ‘Simplicam’. Jonathan Moskin and Robert Weisbein in New York are recommended.

Greenberg Traurig LLP’s team is particularly noted for handling trademark disputes in the technology and fashion industries. Daniel Schloss in New York has been defending Ralph Lauren against an appeal brought by Rolex against a TTAB decision that found no likelihood of confusion between the Rolex brand and the client’s marks Ralph Lauren RLX and RLX Ralph Lauren. Steven Wadyka in Washington DC has been representing Underwriters Laboratories in numerous anti-counterfeiting disputes.

Kelley Drye & Warren LLP’s ‘smart’ Andrea Calvaruso in New York leads a very broad practice, with a particular strength in the fashion industry. She successfully defended WME-IMG against a temporary restraining order and preliminary injunction seeking to enjoin the client and the Council of Fashion Designers of America from using the name New York Fashion Week and NYFW. She also continues to represent Ralph Lauren in its long-running disputes with the US Polo Association regarding the use of the polo player logo. Michael Zinna has been representing Mansur Gavriel in trade dress litigation regarding handbags against an Italian company and two of its retail outlets.

Loeb & Loeb LLP is especially noted for its trademark litigation work in the entertainment, consumer products and financial services industries, but the broad practice extends beyond these sectors. Highlights included an appellate victory on behalf of Viacom at the Ninth Circuit against Gibson Guitar, which claimed that the client’s licensed toy ukulele featuring SpongeBob SquarePants infringed its protected ‘flying V’ guitar body shape. On the plaintiff side, the team has been representing POM Wonderful in a trademark infringement action against Pur Beverages regarding the sale of Pur Pom energy drinks. Douglas Masters in Chicago and David Grace in Los Angeles are recommended.

Mayer Brown’s team is experienced in handling contentious trademark matters for clients from a variety of industry sectors. It has represented key client Nestlé in several disputes, including a recent victory against Africa America Coffee Trading in a trademark and trade dress infringement action regarding its marketing of Nespresso-compatible capsules. The team also successfully represented the lifestyle magazine publisher DM Luxury in a suit against Celebrity Cruises regarding the ‘Modern Luxury’ trademark. Other clients include Goya Foods and LastPass. Practice head John Mancini and Allison Levine Stillman in New York and Richard Assmus in Chicago are recommended.

The ‘extremely intelligent and diligent’ team at Norton Rose Fulbright US LLP is particularly recommended for its industry expertise in the pharmaceuticals sector, but has also handled contentious trademark matters for clients from a variety of other industries. Highlights included the successful representation of Nestlé Health Science-Pamlab in a false advertising dispute with Method Pharmaceutical and its manufacturer J&D Laboratories. The team also represents Jarabes Veracruzanos, distributor of the Delicia brand of health conscious beverages, in trademark litigation against a Mexican manufacturer of Deliciosa branded drinks. Practice head Timothy Kenny in Minneapolis, Saul Perloff in San Antonio and Michael Metteauer in Austin are recommended.

The ‘excellent’ team at O’Melveny & Myers LLP is noted for handling high-stakes trademark disputes. Highlights included the successful representation of Trader Joe’s before the Ninth Circuit in a dispute with Michael Norman Hallatt, who does business as ‘Pirate Joe’s’ in Canada, setting a precedent on the extraterritorial reach of the Lanham Act, and successfully defending 20th Century Fox against a trademark infringement claim by Empire Distribution regarding the Empire television show. The team also defends eBay against third-party liability claims by Wimo regarding the sale of counterfeit goods on its marketplace. Daniel Petrocelli and Drew Breuder in Los Angeles are recommended.

Orrick, Herrington & Sutcliffe LLP’s ‘excellent’ team is particularly noted for its work in the alcoholic beverages and apparel industries, but it also handles trademark litigation outside of these key areas. It has been handling several matters for the wine and spirits company Chatham Imports, including a recent victory against Bomberger’s Distillery, Thistle Finch Distilling and Heritage Spirits regarding the use of the designation ‘Bomberger’s Distillery’. Another highlight was the successful representation of Coorstek Medical and C5 Medical Werks in challenging the registration of the pink color mark for hip replacement products by competitor Ceramtec. Practice head Peter Vogl and Lisa Simpson in New York are recommended.

Sheppard, Mullin, Richter & Hampton LLP draws on its wider commercial litigation capabilities to handle contentious trademark matters in a variety of industries. Highlights included successfully defending Walmart, as co-counsel with Finnegan, Henderson, Farabow, Garrett & Dunner LLP, before the ITC against trade dress infringement allegations by Converse regarding its ‘Chuck Taylor’ sneaker. The team also successfully represented Paletería La Michoacana in a dispute with Productos Lácteos Tocumbo regarding an image of an Indian girl on packaged Mexican ice cream products sold in the United States. Recommended lawyers include co-practice head Laura Chapman in San Francisco, Carlo Van den Bosch in Orange County and Paul Garrity in New York.

Steptoe & Johnson LLP’s practice is especially known for its work in the luxury goods sector, but it also handles trademark litigation for clients from a variety of other industries. It has represented key client Burberry in several contentious matters, including a recent victory in a trademark infringement and counterfeiting suit against Beyond The Rack Enterprises, in which the court awarded statutory damages of $16m. The team has also been acting for LVMH in several matters, including the successful defense of Moët Hennessy against an attempt by ACCA Global to cancel a trade dress for a sparkling wine bottle. Practice chairs Michael Allan and William Pecau in Washington DC are recommended.

Stroock & Stroock & Lavan LLP’s team is noted for handling high-stakes trademark disputes for clients from various industries. Highlights included the successful representation of PODS as plaintiff in a long-running trademark infringement dispute with U-Haul, protecting the ‘PODS’ mark for portable moving and storage containers and securing a $41.4m settlement for the client. The team has also been representing ProSight Global in a trademark infringement claim against Amimon regarding the sale of aftermarket cameras under the name ‘ProSight’, and it represented Saint Laurie in its trademark dispute with Yves Saint Laurent, which was settled in 2016. Steven Pokotilow and Laura Goldbard George in New York are recommended. Since publication Charles Cantine has moved to King & Spalding LLP.

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