The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Work +1 202 408 4000

Doug Rettew, Partner

Trade mark practice group leader Doug Rettew explains what sets Finnegan apart

What do you see as the main points that differentiate Finnegan from your competitors?

While some firms have a few trade mark specialists, we have a deep bench of lawyers who focus exclusively in trade mark law – day in and day out. As a result, we are able to handle the enforcement and litigation for entire portfolios of numerous world-famous brands. And we know the ins and outs of trade mark litigation. Having taken important cases through trial and appeals in courts around the country, we boast a broad range of experience with preliminary injunctions and temporary restraining orders, experts to use (and avoid), how to construct and attack confusion and other consumer surveys, and whether cases are best tried before a judge or jury. We also pride ourselves on providing timely, practical, business-centered counsel. We are sensitive to how litigation strategies and goals should be used to achieve our clients’ business objectives.

Which practices do you see growing in the next 12 months? What are the drivers behind that?

First, the trade mark Trial and Appeal Board (TTAB) rule changes, which streamline the admission of direct testimony (among other things), will likely result in TTAB cases going further. International clients in particular should be more willing to go the distance in these cases, as the new rules eliminate the need for them to come to the United States for a live testimony deposition or submit testimony through written questions (a cumbersome and time-consuming process).

Second, the Apple/Samsung cellphone wars have increased clients’ awareness of the power of design patents and trade-dress rights. We have seen an uptick in the number of clients seeking to protect and enforce their product packaging and product configuration trade dress, and we expect that trend to continue through 2017.

Third, the ever-expanding generic top-level domains (gTLDs) and use of social media has increased enforcement/litigation based on or involving domain names and online infringements.

Fourth, with the improving economy, companies seem more willing and able to protect and enforce their brands in the courts and at the TTAB. This has been particularly true with respect to enforcement actions against counterfeiters, where courts are willing to grant ex parte asset restraints and clients can obtain significant monetary judgments.

What's the main change you've made in the firm that will benefit clients?

Over the past year, we’ve made a number of changes that will significantly benefit our clients. With clients’ increased need for predictable budgeting, we have added in-house resources to allow us to better track, predict, and report on expense levels. We are very experienced in working closely with clients’ in-house legal teams to learn the ins and outs of their billing cycle, and adjust our billing policies to ensure our systems are as streamlined as possible. Recognizing the importance of remaining flexible to our clients’ needs when it comes to pricing, our former Director of Financial Services transitioned to Director of Pricing to oversee alternative fee arrangements.

Additionally, recognizing our clients’ expanding enforcement needs in China, we have hired native-speaking attorneys skilled in the strategic challenges of enforcing marks in Asia to assist our client teams.

We have also continued to expand our expertise in the online arena. We have one lawyer dedicated exclusively to domain name issues and a group of people who closely monitor trends and issues arising from the ever-increasing use of social media as an advertising tool and communication medium.

Is technology changing the way you interact with your clients, and the services you can provide them?

Definitely. When we meet with potential clients, Finnegan’s extranet capability is often cited as a key factor in their decision to add us to their team. We routinely provide our clients with personalized extranet sites that offer 24/7 access to their portfolios, dockets, case documents, and enforcement databases. Each extranet is designed by our in-house programmers, and is customized for each client—in order to accommodate specific needs that can vary based upon portfolio size, enforcement history, and other factors. Here at Finnegan, we’ve also adapted our methods of communication and information gathering to evolve with technology. We’ve modified the format of our opinions, investigations, and reporting letters to accommodate trends in the legal marketplace.

Can you give us a practical example of how you have helped a client to add value to their business?

Value in litigation often comes through victory. For example, two months after our client Under Armour launched its new connected fitness product under the HEALTHBOX/UA HEALTHBOX mark and name, Healthbox Global Partners, LLC (HGP), a consulting firm for healthcare organizations and startups, operating under the HEALTHBOX mark and name, sued Under Armour for trade mark infringement, unfair competition, Delaware dilution, and Delaware deceptive trade practices. HGP also filed a motion for preliminary injunction, asking the court to immediately order Under Armour to stop using HEALTHBOX/UA HEALTHBOX and to recall all products from store shelves. This would have been devastating to the client’s new business venture into connected fitness—both from a financial and reputational standpoint. After oral argument, the court ruled in favor of Under Armour on all key points. HGP dropped the suit against Under Armour shortly thereafter.

In 2016, we also helped a national retailer prevail against Converse in an almost two-year trade mark battle at the ITC, which resulted in the ITC invalidating Converse’s seventy-year-old trade mark for its Chuck Taylor sneakers. As a result, our client was able to continue selling its accused sneaker product line. trade mark actions before the ITC are relatively rare, and we were able to combine our firm’s trade mark insight with our deep bench of ITC experience to achieve this significant victory for the client.

These are just two examples of our many victories in 2016. These two, however, illustrate how we were able to protect and save two different product lines for our clients.

Are clients looking for stability and strategic direction from their law firms - where do you see the firm in three years’ time?

With the increased activity in the merger and acquisition space, and increased health of the economic landscape generally, has come a significant uptick in the amount of litigation work. And given the employee turnover that is a necessary consequence of this type of activity, we find that clients are looking to their law firm more and more to be their repository of institutional memory. In many cases, outside attorneys have more experience with a company and its IP history than the in-house team.

The clients who are sophisticated enough to come to our firm for assistance recognize the importance of using intellectual property to advance their business interests and assets—both offensively and defensively. They come to our firm for our zealous advocacy and strategic, proactive, practical, and consistent counsel on national and worldwide issues. They expect their counsel to keep on top of international legal developments, maintain international relationships, and approach their portfolio with an eye towards business and resource realities. We do that now, and fully expect to continue to evolve our services with marketplace and legal changes over the next three years.

Legal Developments worldwide

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • Awards of excessive compensation under Turkish Intellectual and Industrial Property Law

  • EU: High-Level Expert Group on Sustainable Finance delivers early recommendations

    On 13 July 2017, the High-Level Expert Group (" HLEG ") on Sustainable Finance published its interim report (" Interim Report ") setting out concrete steps to create a financial system that supports sustainable investments. This Legal Insight is part of our dedicated newsletter series on the European Capital Markets Union (" CMU "). Background The growing awareness of environmental challenges and sustainability risks as well as the adoption of the UN 2030 Agenda and the conclusion of the Paris Climate Agreement by the EU in 2015 call for an EU strategy on sustainable finance. Establishing an EU strategy on sustainable finance is a priority action of the CMU. In December 2016, the HLEG was established to advise on the development of such an EU strategy . The recently published HLEG Interim Report was recently presented in a public hearing on sustainable finance on 18 July 2017. At the same time, the HLEG presented an online questionnaire on the Interim Report aimed at obtaining targeted feedback until 20 September 2017, which would be reflected in the final report of the HLEG scheduled for publication by the end of 2017.
  • Serbian Competition Authority Steps Up Antritrust Enforcement

    The Serbian Commission for Protection of Competition (the " Commissio n") recently intensified its antitrust activities before the new Administrative Act came into effect. In one week alone the Commission initiated four antitrust cases and conducted two dawn raids. 1. What/who will be on the Commission's radar?
  • First Annual Privacy Shield Review to take place in September 2017

    One of the core principles of the EU-US Privacy Shield (" Privacy Shield ") is its Joint Review mechanism, which obliges the European Commission, the US Department of Commerce and the Federal Trade Commission to jointly review the functioning of the Privacy Shield on an annual basis, together with its national security and law enforcement aspects. The very first Joint Review is scheduled for September 2017. This first review is considered especially important, as it will be the first opportunity for US and EU regulators to closely analyse the operation of the Privacy Shield, address possible concerns about its functioning, and seek to ensure that the Privacy Shield continues to be a valid legal basis for transfers of personal data from the EU to the US.
  • The role of the supervisory board in investor relations

    - Dorda
  • An Introduction to Personal Guarantee

    The economic boom in UAE has resulted in huge developments and a considerable increase in trade. This in turn has led to a rise in transactions which require a fast debt recovery mechanism. According to common practice in the UAE, the most secure and quickest method is the post-dated -  and in some cases undated – cheque. This is often requested by creditors (financial institutions) and sellers, mostly in real estate transactions and trade. The rationale is mostly economic to individuals who are issuing the cheque, and how does personal guarantee play a role? In this Article, we attempt to analyze and overview UAE laws on Personal guarantee.
  • [Legal Update] Proposed Amendment to Reduce Capital Gains Exemptions...

    The Ministry of Strategy and Finance announced its proposed tax law amendments for 2018 on August 2, 2017. This tax alert highlights the proposed change to the capital gains exemption currently available to foreign investors engaged in on-the-market transactions.
  • Constitutional Court's Recent Judgments on Rent in Austria

    The Constitutional Court has recently provided two judgments on 28 June 2017 on the rent control legislation in Austria ruling that the current system for flats complies with Austrian Constitutional Law and the European Convention on Human Rights. The Constitutional Court visibly failed to take the opportunity to initiate a change to the current legislation. Further appeals to the Constitutional Court are likely and worthwhile with the Austrian parties currently involved in their campaigns for the general election in October 2017.
    - Dorda
  • The importance of the effective date in tax laws

    8 Aug 2017 at 04:00 / NEWSPAPER SECTION: BUSINESS

    Law on Pledges over Movable Property in Commercial Transactions No. 6750 is published in the Official Gazette No. 29871 and dated October 28, 2016 and entered into force as of January 1, 2017. Law on Pledges over Movable Property in Commercial Transactions No. 6750 abolished the Commercial Enterprise Pledges Law No. 1447 and dated July 21, 1971 and introduced many new innovations to movable pledges. However, Commercial Enterprise Pledges Law No. 1447 will remain applicable for commercial enterprise pledges that are already established before 1 January 2017.