Trademarks: litigation in United States
Debevoise & Plimpton LLP provides ‘the very best in trademark litigation representation’ and has ‘a breadth of experience across all industries and sectors’. David Bernstein is hailed as the ‘best trademark litigator in the country’ and heads the practice alongside ‘trademark litigation superstar’ Jeremy Feigelson. Cross-border litigation is a particular specialty, with the team recently representing WeWork Companies in a multi-jurisdictional dispute that resulted in the global rebranding of UrWork, a similarly named China-based competitor of the client. Bernstein and Michael Schaper are also currently acting for Costco Wholesale Corp in an attempt to appeal a ruling that the client willingly infringed and counterfeited the trademark of Tiffany & Company. Jyotin Hamid is recommended for his ‘tremendous knowledge and experience’, while counsel Megan Bannigan ‘translates complex legal issues into clear pragmatic legal advice’. Named attorneys are based in New York.
The ‘knowledgeable and experienced’ lawyers at Finnegan, Henderson, Farabow, Garrett & Dunner LLP are ‘deeply engaged IP experts’ who ‘think ahead of the curve’. In a recent highlight, the team represented Under Armour in a lawsuit brought by Michael Calmese, who alleged that motivational phrases on the client’s products infringed upon his 'PROVE IT!' trademark. Douglas (Chip) Rettew and Virginia Carron also notably assisted Nestlé in a trademark infringement, unfair competition and dilution lawsuit against Gigi Anthony related to the similarities between the client’s 'HOT POCKETS' and 'LEAN POCKETS' trademarks and the defendant’s 'PIZZA POCKET' and 'PIZZA POCKETS' marks. Practice head Danny Awdeh is ‘an expert in the field’ and is noted as ‘the best’ and ‘most efficient attorney’. His team also includes the ‘outstanding’ Mark Sommers, who ‘really understands the strategic importance of IP’. Partners operate from Washington DC except for Christopher Foley who is Reston based.
Fross Zelnick Lehrman & Zissu, P.C.
Fross Zelnick Lehrman & Zissu, P.C. ‘has a tremendous trademark litigation practice’ that ‘handles large and complicated cases at the same level as much larger firms’. The New York-based IP boutique is home to a dedicated practice for international affairs and has a history of representing domestic clients in state and federal courts as well as at the Trademark Trial and Appeal Board (TTAB). Barbara Solomon and Laura Popp-Rosenberg recently prevailed in representing Royal Crown Company and Dr Pepper/Seven Up at the Federal Circuit in a long-running dispute concerning whether The Coca-Cola Company had exclusive trademark rights to the ‘ZERO’ label for soft drinks. In another highlight, the group successfully challenged Siggy Music’s attempt to register the mark ‘J5’ for clothing and merchandise on behalf of UMG Recordings, owner of the ‘JACKSON 5’ trademark. David Donahue and Craig Mende are respectively hailed as ‘excellent’ and ‘outstanding’ litigators. James Weinberger and Leo Kittay are also names to note.
Kilpatrick Townsend & Stockton
Noted as ‘flexible and innovative’, Kilpatrick Townsend & Stockton’s team provides ‘an exceptional amount of experienced focused directly on trademark litigation'. William Brewster, David Mayberry and Anthony Malutta jointly head the practice from Atlanta, Washington DC and San Francisco respectively and act for a client roster which spans the technology, media, food and drink, consumer goods and retail industries. The ‘exceptional’ Charlie Henn and the ‘excellent’ Charles Hooker are other key names in Atlanta and the pair are currently representing Reebok and adidas in a trademark infringement lawsuit against TRB Acquisitions and 14 licensees over the use of the 'RBX' trademark and stripe designs on their products. On the technology front, the team handled cases for Facebook and also successfully defended Instagram in a claim in which the alleged trademark of the term 'layout' for a photo application was ruled to be generic.
At Cooley LLP, Peter Willsey recently achieved an appellate victory for client Google in a long-running challenge brought by two individuals who sought to declare the Google trademark as generic and incorporate it into over 700 domain names. Brendan Hughes is also a key name and represented ContextLogic in a case which ruled that there was no proof of irreparable harm between the common use of the similar names between auction app provider DealDash and the ‘Deal Dash’ feature within the client’s shopping app. Bobby Ghajar operates from the firm’s LA office, and senior counsel John Crittenden is based in San Francisco and is highly recommended. The practice is closely integrated with the firm’s London office and is adept at handling matters in both the US and European Union.
Cowan, Liebowitz & Latman, PC delivers ‘top-notch services with outstanding expertise’, acting on ‘all types of complex issues relating to trademark litigation’. Co-head Richard Mandel is representing Sony Pictures Television in a trademark infringement and dilution action; the matter concerns the introduction of a new beer named ‘BREAKING BUD’ by a craft brewery, the logo format of which is argued to resemble that of the client’s Breaking Bad television series. In another case highlight, Mary Kevlin successfully acted for Major League Baseball Properties in trademark cancellation proceedings against the supplemental registration of ‘MAJOR LEAGUE ZOMBIE HUNTER & Design’. Eric Shimanoff and Jonathan King also lead the team, which includes the ‘outstanding lawyer and advocate’ Joel Karni Schmidt, the ‘responsive and thorough’ Deborah Squiers and the ‘deeply knowledgeable’ Jeffrey Epstein. The firm is based in New York.
Cleveland-based Meredith Wilkes heads the practice at Jones Day together with John Froemming who is part of the firm’s Washington DC office. The practice is particularly acclaimed for its work in competitor-versus-competitor cases, with Wilkes and Froemming recently engaged by SharkNinja to defend a Lanham Act claim by competitor Dyson. The matter raised the question of the level and type of proof required when making comparative advertising claims using a competitor’s trademark. Washington DC-based Jessica Bradley also acted on the matter and is an expert in Lanham Act-related litigation. Elsewhere, Wilkes is currently defending McCain in relation to allegations of trade dress and design patent infringement issued by Simplot pertaining to the shape of a French fry product. BMW Group, Abercrombie & Fitch and The Wikimedia Foundation are other high-profile clients.
Kelly IP LLP
Boutique firm Kelly IP LLP is located in Washington DC and counts high-profile companies such as Bugachi, World Wildlife Fund and Disney among its client roster. In a standout case, David Kelly and Robert Litowitz recently obtained a ruling entirely in Harley Davidson’s favor in a lawsuit against SunFrog concerning over 1,300 counterfeit and infringing products bearing the client’s trademarks. The pair also acted alongside Stephanie Bald in representing Twin Cities Public, owner of multimedia platform REWIRE, in a claim of trademark infringement against RH Reality Check pertaining to its re-branding under the name Rewire. The defendant has since renamed its website and online news services. Linda McLeod and Lynn Jordan are the other key names.
Dale Cendali is a ‘world class litigator’ who heads a ‘great team of highly trained lawyers’ at Kirkland & Ellis LLP. Alongside John O'Quinn, the ‘brilliant’ Claudia Ray and Diana Torres, Cendali recently represented Nike at the Federal Circuit, which overturned a previous ITC ruling, supporting the client’s enforcement efforts against knockoffs of its Converse Chuck Taylor design. Ray, Torres and Cendali also assisted Johanna Schmitt and Joshua Simmons in defeating a motion for preliminary injunction filed by Equinox Hotel Management against client Equinox Holdings; the plaintiff sought to prevent the client from using the ‘Equinox’ trademark in connection with its forthcoming hotel line, though failed to establish a likelihood of success on the merits of irreparable harm. Industries of expertise include media and entertainment, software and technology, financial services, consumer products and fashion. Torres is based in LA while O’Quinn operates from Washington DC. All other named attorneys are part of the firm’s New York office.
Quinn Emanuel Urquhart & Sullivan, LLP
The client roster at Quinn Emanuel Urquhart & Sullivan, LLP spans the internet, consumer products, sports, media, video games, financial services and entertainment industries. In an ongoing matter, the team is representing AM General, maker of the military Humvee vehicle, in a dispute with video game publisher Activision pertaining to the use of the Humvee trade dress and associated word marks in the Call of Duty franchise. Additional highlights included acting for Gucci America in a claim of declaratory judgment of non-infringement and cancellation of trademark registrations by Forever 21 and a matter for JAY-Z regarding allegations of trademark infringement of the ‘ROC’ mark, a label made famous by the rapper and subsequently sold to Iconix. Robert Raskopf and Margret Caruso head the practice, operating respectively from New York and Silicon Valley.
Arnold & Porter’s team is headed by Washington DC-based Matthew Wolf and has recently been bolstered by the arrivals of Dori Hanswirth and Theresa House from Hogan Lovells US LLP. Louis Vuitton is a noteworthy client and recently engaged Louis Ederer and Matthew Salzmann in various anti-counterfeiting and brand enforcement matters in federal courts nationwide. Ederer also represented Bottega Veneta, helping the client to register a proprietary weave design for handbags and small leather goods following long-running proceedings in the USPTO. Additional names from the client roster include Fox News Network, The Hershey Company and Pfizer. Named attorneys are part of the firm’s New York office unless otherwise stated.
Hunton Andrews Kurth LLP handles a broad range of contentious matters with a track record that spans district and federal courts in addition to the TTAB. Jeff Dodd operates from Houston and jointly heads the practice with New York-based Edward Colbert. Susan Smith in Washington DC is recommended, while James Rosini is another key name from the New York office.
Katten represents clients from a wide array of sectors with particular expertise in acting for clients in the fashion and entertainment industries. The ‘proactive’ attorneys are ‘excellent communicators’ and ‘experts in domestic and international matters’. Chicago-based Floyd Mandell successfully defended PepsiCo in a dispute where plaintiff SportFuel alleged that the client’s use of the tagline ‘Gatorade. The Sports Fuel Company’ infringed upon its trademarks. In another high-profile highlight, the team currently represents Forever 21 in a dispute with adidas concerning the use of striped designs on apparel. New York-based Karen Artz Ash ensures ‘that nothing is overlooked’, she leads the practice with Mandell. Kristin Achterhof and Roger Furey, respectively based in Chicago and Washington DC, are recommended.
At Latham & Watkins LLP, San Francisco-based Perry Viscounty is representing Tesla in a lawsuit filed by Nikola Corporation concerning the client’s new electric semi-truck. The matter concerns purported trade dress rights and several design and utility patents relating to the fuselage, door and windshield. In San Diego, Jennifer Barry defended Funko in litigation issued by Gibson Guitars pertaining to the client’s POP! range, namely the shape of guitar models accompanying several rock band figurines. Craigslist is another notable client, recently engaging the team for representation on several cases, including a successful claim for damages and a permanent injunction against Instamotor. Michael Morin in Washington DC and Chicago-based David Callahan lead the team alongside Barry.
The team at McDermott Will & Emery LLP represents a number of clients active in the alcoholic beverages sector. It recently acted for Brooklyn Brewery in two TTAB matters which respectively sought to cancel registrations by Brooklyn Pour and Brooklyn Brew Shop. Richard Kim, John Dabney and Mary Hallerman led on both matters and all three are currently acting for Creative Technology, owner of the BLASTER brand, in opposition to applications filed by Monster. It is argued that the applied-for trademarks, 'Monster Blaster' and 'Monster Blaster Ravebox', are likely to cause confusion with the client’s own marks. Additional industries of expertise include technology, life sciences, IT and apparel. Dabney serves as co-head with Chicago-based Jennifer Mikulina. Jorge Arciniega is a name to note in Los Angeles while Robert Zelnick is also recommended. Named attorneys are based in Washington DC unless otherwise stated.
The practice at Orrick, Herrington & Sutcliffe LLP undertakes the full range of trademark litigation. In a high-profile international dispute, Peter Vogl and Silicon Valley-based Diana Rutowski achieved a favorable ruling in the Paris High Court on behalf of CoorsTek Medical. The ongoing dispute pertains to CeramTec GmbH's intent to block the manufacture and sale of the client’s colored ceramic hip components. Vogl and Lisa Simpson are based in the New York office and are currently representing Kars 4 Kids in a trademark lawsuit against America Can!. Sony Entertainment America, BIC Corporation and L.A. Gear are also clients. David Hosp, Mark Puzella and Sheryl Garko joined the firm's Boston office from Fish & Richardson P.C..
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
Chicago-based IP boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP is home to ‘hardworking and very diligent’ attorneys who provide an ‘excellent service’. The team is hailed for its ability to ‘represent clients in different sectors’ with foremost expertise in the consumer products, manufacturing, automobiles and parts, technology, hardware and electronics, and pharmaceutical and life sciences industries. Phillip Barengolts recently represented Red Bull GmbG and Red Bull North America in litigation with The Trading Group that saw the client obtain monetary damages for trademark infringement and unfair competition. Belinda Scrimenti is ‘able to provide comprehensive and practical advice relating to trademark litigation’ while Jonathan Jennings delivers ‘exceptional quality’. Robert Sacoff is another standout name. Bayer AG, Acer and Nike are also clients.
Hailed for its ‘very strong brief writing and creative thinking’, the core strengths of Weil, Gotshal & Manges LLP lie in representing media and technology companies. The ‘very accessible’ Randi Singer ‘really cares about her clients’ and recently acted for Twitter in a Southern District of New York lawsuit which concerned infringing products hosted on the client’s platform. It was successfully argued that there was no concert between Twitter and Alurent, the owner of the infringing products, resulting in no penalties for the client. Benjamin Marks heads the practice alongside Bruce Rich and is currently representing Houghton Mifflin Harcourt in a trademark infringement and copyright royalty dispute with Vanderbilt University. eBay, Facebook and Discovery Communications are also clients. All named attorneys are based in New York.
Arent Fox LLP
Arent Fox LLP’s practice is headed by Ricardo Fischer and acts for clients in the media, entertainment, fashion, hospitality, food, technology and consumer electronics industries. Counsel Michael Grow recently represented The Saul Zaentz Company, owner of 'The Lord of the Rings' and 'The Hobbit' trademarks, in a TTAB matter where a petition to cancel the registration of the mark ‘LORD OF THE WINGS’ by a Lebanon-based franchiser was granted. Warner Bros is a notable client and the team recently acted for its subsidiary, Turner Entertainment Company, in a proceeding against a Native American tribe that intended to register various Wizard of Oz marks in connection with restaurant and casino gambling services. Anthony Lupo is another key name and is based in Washington DC alongside other named attorneys.
The team at DLA Piper LLP (US) ‘excels in client service’ and is noted for its ability to ‘coordinate trademark litigation matters across a diverse set of jurisdictions’. In San Francisco, co-head Gina Durham is representing the Estate of Marilyn Monroe in a trademark infringement and false endorsement litigation pending in the Southern District of New York. She is also currently acting for France-based video game maker Gameloft in a claim of copyright infringement filed by Glass Egg Digital Media concerning digital car models. Frank Ryan provides ‘outstanding guidance on trademark-related matters’. He is based in New York and heads the practice with Durham and Ann Ford, who operates from Washington DC.
Reputed for its knowledge of the technology and life sciences sectors, the practice at Fenwick & West LLP is headed by Jedediah Wakefield. He recently represented Delphix and obtained a favorable outcome in the Ninth Circuit; the matter arose from Embarcadero Technologies’ allegation that the client’s ‘DELPHIX’ mark for database management software infringed upon its trademark rights. Eric Ball and Wakefield are defending a high-profile client in a trademark infringement action and counterclaim in the Central District of California. Mountain View-based Sally Abel is recommended. Named lawyers are based in San Francisco unless otherwise stated.
Susan Heller and Mark Galis head the group at Greenberg Traurig LLP, which is particularly strong on anti-counterfeiting issues and is experienced in appearing before federal, state and appellate courts as well as the TTAB and international arbitration panels. Galis and Eric Maiers recently represented The Home Depot, successfully permitting the client to continue expanding its ‘ANVIL’ brand after opposition by Anvil International. In another highlight for Galis, he and Jeffrey Dunning are acting for PHWLV in a suit brought by a restaurant operator who sought a declaratory judgment that the client had abandoned all rights to the ‘ALADDIN’ trademark, the former name of its Planet Hollywood casino/hotel. Named attorneys operate from Chicago with the exception of Heller who is Orange County based.
Kelley Drye & Warren LLP
The fashion and retail industries are core strengths for the team at Kelley Drye & Warren LLP. Practice head Andrea Calvaruso has recently handled various matters for Foot Looker including domain dispute proceedings against Private Registrant that resulted in the removal of several infringing third-party websites. She also obtained success on behalf of Gucci America in consolidated trademark opposition proceedings before the TTAB which concerned the attempt of UGP to register trademarks including the name ‘UBERTO GUCCI’ for electronic cigarettes. Ralph Lauren and Nestlé are other high-profile clients, as is Take-Two Interactive, which recently engaged the team for various suits protecting its Grand Theft Auto trademark. John Ward and Michael Zinna are key names and are based in New York alongside Calvaruso.
King & Spalding LLP represents a number of high-profile clients in a broad range of industries, including personal care and consumer products, food and beverage and retail. New York-based Kathleen McCarthy recently represented Google in a case brought by Baldino’s Lock & Ke, which claimed that the appearance of unlicensed locksmiths on the client’s various platforms have harmed its business. In Houston, Bruce Baber is notably acting for The Coca-Cola Company in its efforts to register its ‘ZERO’ trademarks; the matter is currently being considered by the Federal Circuit. In another highlight, both McCarthy and Baber acted for Chevron in two separate pieces of trademark infringement litigation in which the defendant used the client’s name and marks without permission.
Loeb & Loeb LLP is well regarded for its representation of entertainment industry clients and also counts media, consumer products and financial services companies among its roster. In Los Angeles, co-head David Grace recently acted for Ruthless Records, representing the widow of Eazy-E in a dispute with her stepson that prohibited his use of the names NWA, Straight Outta Compton and Ruthless. In another highlight, Chicago-based Douglas Masters obtained permanent injunctive relief against Kizzang on behalf of the National Collegiate Athletic Association. The matter, heard before the TTAB, concerned the defendant’s use of its Final 3 and April Madness offerings, which were in violation of the client’s 'March Madness' and 'Final 4' trademarks. Masters and Grace are chairs of the practice, as is Barry Slotnick, who is part of the firm’s New York office.
Mayer Brown acts for various clients in the food and beverage industry such as Nespresso, Goya Foods and Capri Sun. In New York, practice head John Mancini represents Nestlé in a suit filed against Crest Foods for the breach of master franchisee agreements governing the use of the ‘NESTLÉ’ and ‘TOLL HOUSE’ trademarks. The defendant is accused of multiple breaches of the agreement including the use of the ‘NESTLÉ’ mark on non- Nestlé products. Elsewhere, Richard Assmus in Chicago and New York-based Allison Levine Stillman are other key names.
Morrison & Foerster LLP is recommended for the full scope of trademark-related disputes in federal and state courts. In San Francisco, Jennifer Lee Taylor chairs the practice and is experienced in acting on matters related to apparel, medical devices, pharmaceuticals and motorcycles, among others. Benjamin Fox, a specialist in a wide range of industries, including entertainment, healthcare and financial services, is a standout attorney in the Los Angeles office.
Located in Chicago, Neal, Gerber & Eisenberg LLP recently successfully represented Duracell in a high-profile piece of trademark infringement litigation brought by Energizer. Kevin May led on the case, which concerned the fact that certain stores in the US were selling Duracell batteries with its pink bunny on the packaging, a mascot that the client is permitted to use only in certain other countries. Other highlights included co-chair Michael Kelber acting for GI Sportz regarding the similar appearance of a competitor's paintball, and Lee Eulgen’s representation of Blue Cross and Blue Shield in a TTAB matter.
Norton Rose Fulbright US LLP's practice is headed by Minneapolis-based Timothy Kenny and is particularly active in handling international litigation. The enforcement of rights against infringement, dilution and countering are all specific strengths with the practice regularly representing clients in relation to TROs and Preliminary Injunction motions. Kenny demonstrates a proven track record in federal trademark matters as well as TTAB proceedings. Another name to note is the highly recommended Austin-based Michael Metteauer.
O'Melveny & Myers LLP recently successfully represented Twentieth Century Fox in the Ninth Circuit where it was ruled that the client’s use of the word ‘empire’ was protected by the First Amendment; Plaintiff Empire Distribution had brought the suit in relation to the client’s Empire television series on the grounds of trademark infringement and dilution. In another highlight, Mark Miller secured a permanent injunction and consent judgment on behalf of a client in a trade dress infringement case involving a competitor which concerned product imitation. The media, financial services, technology, apparel and sports industries are core strengths, with names such as eBay, The Walt Disney Company and Warner Bros forming the client roster. Ryan Yagura leads the team and Drew Breuder is recommended. All named attorneys are based in Los Angeles.
Proskauer Rose LLP is currently representing LemonKind in a trademark dispute with KIND/King Management concerning beverage products. The food and beverage industry is an area of particular specialism and the team also excels in representing clients from the consumer products, media and entertainment and sport sectors. New York-based Alexander Kaplan and Sandra Crawshaw-Sparks are recommended, while other noteworthy clients include Live Nation, Sandoz and Sony Music Entertainment.
At Sheppard, Mullin, Richter & Hampton LLP, co-head Laura Chapman and Michelle Kahn obtained a preliminary injunction for Newmark Realty Capital prohibiting Newmark & Co from using ‘Newmark’ as a trademark for commercial mortgage services. Another high-profile engagement for Chapman saw her defend RockStar Hotels from a claim by Hard Rock alleging that the client used a lookalike name and website to give the impression that it was connected to the Hard Rock Café brand. In New York, Ted Max is representing Chanel with a claim of false advertising and unfair competition against What Comes Around Goes Around and other defendants. Named attorneys are based in San Francisco unless otherwise stated.
Stroock & Stroock & Lavan LLP
Stroock & Stroock & Lavan LLP is engaged on domestic and international litigation in a broad range of industries, including retail, publishing, clothing, entertainment and pharmaceuticals. Co-chair Laura Goldbard George represented Ringling Bros in a trademark infringement dispute against Kid Rock and Live Nation Entertainment regarding the defendants’ use of ‘THE GREATEST SHOW ON EARTH’ as the name of live concerts. She also acted for Seiko Holdings in a TTAB matter where the client opposed Apollo Seiko's attempt to register its name as a trademark for soldering irons. Jason Sobel and of counsel Steven Pokotilow are the other key names. All named attorneys are based in New York.