Trademarks: litigation in United States
Cowan, Liebowitz & Latman, PC's sizeable New York team stands out for its work in the sports, entertainment and retail sectors. The practice group is jointly led by three partners: Jonathan King, a key advisor for well-known brands such as DKNY and Universal Music Group, who also has extensive experience before the federal courts and TTAB; Richard Mandel, a seasoned litigator, with further expertise in mediation and arbitration; and Eric Shimanoff, who acts for some of the firm's biggest clients, including Barclays Capital, Sony Pictures and Columbia University. The team is also strong in cross-border enforcement and protection work, recent examples of which saw Meichelle MacGregor advising E-Z Weld Adhesive on actions against counterfeiters in India, and Kieran Doyle acting for QVC in a dispute against German company Quelle regarding similar logos using the letter 'Q'. Deborah Squiers is also recommended.
‘The team has a keen strategic sense and a thorough understanding of the law. They are responsive, provide practical and useful advice, and are a pleasure to work with.’
‘The litigation team provides practical, business advice to its clients being mindful of the client’s budget. Unnecessary litigation is something the firm’s litigators are mindful of. ‘
‘Work quality and efficiency is exceptional. The results are excellent. It is a very lean firm and the staffing is highly efficient.’
Procter & Gamble
Ruth’s Hospitality Group
Major League Baseball Properties
J. Crew Group
G-III Apparel Group (DKNY andDONNA KARAN)
Universal Music Group
Sony Pictures Entertainment
The Promotion in Motion Companies
Tri StateManagement/WetsonRestaurant Group
Empire State Realty Trust
National Audubon Society
The Blackstone Group
Maxima Apparel Corp
The Forward Fund
- Represented Wolfgang’s Steakhouse in a trademark opposition and subsequent trademark and contract litigation with Wolfgang Puck, a well-known celebrity chef.
- Represented HR Group, which offers residential real estate agency services under the mark Hudson Realty Group, in opposition against applications to register West of Hudson Group encompassing the same services.
- Advised Promotion in Motion on its action against Kerwan where it was argued that the defendant’s packaging for its fruit gummies infringed upon the packaging for the client’s Welch’s Fruit Snacks.
- Worked for Chicago Cubs Baseball Club in its opposition of Ronald Mark Huber’s trademark registration of the word ‘Cubnoxious’ for t-shirts.
- Acted for True Religion Sales in a case where the client sold shirts online for a third party which infringed upon Mr Lopez’s trademark ‘Lower East Side’.
Based in New York, Debevoise & Plimpton LLP has a strong track record in trademark litigation and stands out in particular for its expertise in prosecuting and defending against motions for preliminary injunctions. In one recent example, practice heads Jeremy Feigelson and David Bernstein acted for Bank of America in opposing a preliminary injunction against the client's virtual personal assistant, Erica. Other major cases include Jyotin Hamid acting for GlaxoSmithKline in a case against Respirent Pharmaceuticals, concerning a distinct color mark used in Respirent's respiratory inhaler. Also recommended are Jim Pastore, who acted for Snyder’s Lance against Frito-Lay regarding the 'Pretzel Crisps' trademark; Michael Schaper, a civil litigator with experience in trademark cases; and counsel Megan Bannigan, who is most active in matters in the fashion industry.
‘Debevoise & Plimpton, LLP offers an outstanding level of skill, professionalism.’
‘The team is incredibly responsive and possesses a unique ability to explain complicated concepts and policies in a very digestible manner.’
‘Always very positive and willing. No request is too large; no question is insignificant. Their support always is with goodwill and care.’
‘I consider the Debevoise & Plimpton intellectual property team to offer the highest level of trademark advice, both with respect to disputes and more general trademark and copyright counseling.’
‘We have worked with David Bernstein over the past couple of years on a complex, multi-jurisdictional trademark dispute, and we have been very happy with the work he and his colleagues have done. Jim Pastore’s work has been excellent as well. Both David’s and Jim’s advice is always very sound and practical, and they are extremely responsive and timely with their work.’
Bank of America
Costco Wholesale Corp.
National Hockey League
New York & Co.
Paysafe Holdings UK
The Episcopal Church
- Represented New York & Co., a leading specialty manufacturer and retailer of women’s fashion apparel, in its effort to overturn a jury’s finding that New York & Co. wilfully infringed the plaintiffs’ VELOCITY trademark.
- Represented the National Hockey League (NHL) in opposing several applications by Snoop Dogg to register the trademark LEAFS BY SNOOP for various articles sold by the rapper’s cannabis company.
- Acted for the owners of the famous rum brand, Havana Club, in a dispute over ownership of the Havana Club trademark with Bacardi.
- Filed a lawsuit for WeWork for trademark infringement against coworking rival WePlus,
- Advised Ancestry.com in a trademark infringment action against 23andMe concerning its use of the ‘ancestry’ trademark.
Finnegan, Henderson, Farabow, Garrett & Dunner LLP has a strong presence in Washington DC, where it is regularly involved in the most significant trademark disputes, acting for clients such as A&H Sportswear, Bridgestone and Varsity Brands. Leading the practice is Danny Awdeh, who recently acted for Usina São Francisco in cancelling Tile World Company’s registration of 'Native Sweet' as a trademark. Another key figure is Douglas Rettew, who 'inspires confidence, achieves positive outcomes and provides reliable and practical advice'. In other standout work, Mark Sommers advised Joining Active Bodies Studio on its application for the mark JABZ in a consolidated opposition and cancellation proceeding. Clients have also singled out litigator Naresh Kilaru for getting 'the most from his team' and making himself 'available for discussion even at a short notice'. Also of note, the team was strengthened by the arrival of Katie McKnight, who adds another dimension to the practice having previously worked at the Trademark Trial and Appeal Board.
‘Quality of advice on trademark disputes and copyright is excellent.‘
‘Doug Rettew inspires confidence, achieves positive outcomes and provides reliable and practical advice. I am very confident that when working with Doug we are in good hands and will obtain excellent results.’
‘The Team is handpicked based on the requirements and there is always one point of contact.’
‘Naresh Killaru as a team lead will deliver the most from his team at the same time he is conscious in keeping the cost low. He makes himself available for discussion even at a short notice.’
American Chemical Society
American Petroleum Institute
Petco Animal Supplies Stores
Six Continents Hotels
- Advised Coupang Corporation whose application for the mark ‘Rocket’ was blocked by a registration for ‘Rocket Labs’ which also related to delivery services.
- Representing watch maker Daniel Wellington in large-scale digital marketplace infringements.
- Handled enforcement projects for American Petroleum Institute against infringement of certification marks in China, Belgium, the Netherlands, Pakistan, and the US.
- Representing DJI in TTAB opposition over the ‘Phantom’ mark for drones.
- Acted for Ambev on the cancellation of the trademark ‘Fusion’ by another beverage company.
A market-leader in this space, Fross Zelnick Lehrman & Zissu, P.C. is recognized by its clients for its 'deep knowledge and experience' and its 'business-friendly approach'. A key figure in the team is Barbara Solomon, who recently advised Mondelēz Canada on obstructing the sale of cannabis-infused candy that infringed upon the client's 'sour patch' trademark. Other key figures include Nadine Jacobson, who is particularly active in cross-border cancellations, oppositions and infringement disputes; Lydia Gobena, a name to note for issues involving international trademark law; Leo Kittay, who primarily works with growth companies; Virginia-based Allison Strickland Ricketts, who is particularly skilled in the prosecution of trademark applications; and John Margiotta, 'an incredible attorney' and an 'automatic go-to for litigation and domestic disputes'. All named attorneys are in New York unless stated otherwise.
Other key lawyers:
‘Deep knowledge and experience combined with a business-friendly approach, reflected in longstanding client relationships.’
‘John Margiotta is an incredible attorney and automatic go-to for litigation and domestic disputes. John values his client relationships and always takes the time to consider business needs and challenges.’
‘Incredible, detailed, encyclopedic knowledge of the law and practical solutions to all IP issues, including litigation; responsiveness and depth of the team in the firm to address any IP issues that arise.’
Tiffany and Company
The LEGO Group
Warner Bros. Entertainment
Edgar Rice Burroughs
The We Company
- Won appeal at the Federal Circuit to prevent The Coca-Cola Company from protecting “zero” as a trademark for a zero-calorie beverage.
- Advised Old Navy on an opposition proceeding at the Trademark Trial and Appeal Board against the mark OLD IVY for apparel products based on the likelihood of confusion.
- Instructed to halt marketing and sale of cannabis-infused gummy candies that trade on the client’s SOUR PATCH name and packaging.
- Represented Swiss and French entities jointly applying in the USPTO to register GRUYÉRE as a Certification Mark for cheese.
- Filed a lawsuit for Van Cleef & Arpels and Cartier against King Jewelers, which was selling counterfeit products of the plaintiff’s luxury brands.
Kelly IP LLP
Kelly IP LLP handles major trademark disputes for household names such as Disney, Marvel and Rolls-Royce. Name partner David Kelly is the primary contact at the firm; he is among the market leaders in trademark disputes. Robert Litowitz has broad-based expertise in infringement, false advertising and unfair competition cases, and Stephanie Bald regularly acts before the federal courts and TTAB, and is often called upon for domain name disputes. Other key figures include Lynn Jordan, who is particularly active in the entertainment and media sectors, and Linda McLeod, who is uniquely skilled in trademark litigation having previously worked as an administrative trademark judge for the Trademark Trial and Appeal Board. Clint Taylor is a recommended senior associate in the team. All lawyers are based in Washington DC.
British Broadcasting Corporation (BBC)
U.S. News and World Report
This Old House
Optical Society of America
World Wildlife Foundation
Bugatchi Uomo Apparel
Dassault Falcon Jet Corp.
- Obtained temporary restraining orders and preliminary injunctions for AstraZenca against two generics companies selling generic versions of AstraZeneca’s Nexium with same distinctive color purple.
- Advised the vehicle manufacturer BMW in a dispute against Brooklands New Media.
- Worked for the clothing brand Bugatchi in a case against fellow clothing brand Bugatti arguing that the two names were confusingly similar.
- Acted for BMW in a case against Rheingold USA for its use of the client’s copyright and trademarks for its diagnostic and programming software.
- Representation of Disney in an opposition against United Trademark Holdings’ (“UTH”) applications for the marks ‘Teen Tinkerbell’ and ‘Teen Tink’ for dolls.
Kilpatrick Townsend & Stockton
When it comes to high-stakes trademark litigation, Kilpatrick Townsend & Stockton is the legal counsel of choice for a number of household names. In a recent highlight, Los Angeles-based Dennis Wilson and Larry McFarland represented Facebook in a case against 'Facegloria', which is a Facebook alternative set up in Brazil intended for Evangelical Christians. The team is jointly led by DC-based David Mayberry, a key contact for preliminary injunctions and appeals, and William Brewster in Atlanta, who recently acted for Adidas in its action against Forever 21. Other contacts in the team include New York-based Lisa Pearson, who regularly acts for L'Oreal in online brand enforcement and take downs, and Judy Powell, who works from the Atlanta office and is particularly experienced in website content and domain name disputes.
‘They give smart and practical advice, tailoring the relationship they have with each company depending on their individual cultures. They are very responsive and are always there 24/7.’
‘Provides practical advice and staffs diverse teams. Particular shout-outs to David Caplan, Larry McFarland, Carrie Barbee, and Dennis Wilson. This team is incredibly approachable, practical, creative with fee structures, and their footprint and experience is extensive so they provide a wide breadth of knowledge.’
Levi Strauss & Co.
Floor & Décor
Outlets of America
- Actively litigate infringement and counterfeiting matters for Coty and its famous fragrance licensors, and in general assisting with its various investigations, enforcements, and dispute resolutions.
- Defending Energiser’s air freshener company Handstands against a lawsuit filed by CarFreshner Corp. which believes the client’s Midnight Black/Ice Storm product infringed upon one of its products.
- Representing Levi Strauss in disputes with Barbour, Yves Saint Laurent regarding the tabs and pocket stitching designs used on jeans and shirts which allegedly infringe upon the client’s distinctive style.
- Represented Floor & Decor Outlets of America in an action brought by RVC Floor Decor which argued that it owns rights in New York for the term “Floor Decor,” and sought a preliminary injunction.
Los Angeles-based Cooley LLP provides 'top-notch trademark litigation services' and is rated for its 'very deep bench that knows the law, knows how it applies in a practical setting and is able to advocate effectively for its clients'. Senior counsel John Crittenden is 'a stellar trademark litigator' with additional expertise in domain name disputes and false advertising. Another name to note is Bobby Ghajar, who recently acted for Anheuser-Busch in a case involving the use of an iconic canine mascot, Spuds MacKenzie, in a Super Bowl television commercial.
‘The team has a very deep bench that knows the law, knows how it applies in a practical setting, and is able effectively to advocate for its client. It provides top-notch Trademark Litigation services.’
‘John Crittenden is a stellar trademark litigator who has a good sense of what to focus on, how to position arguments, and how to drive his client’s larger strategies forward. He also has an encyclopedic knowledge of trademark cases and is able to articulate how they apply (or can be differentiated) both in court filings and in oral argument.’
Abercrombie & Fitch
BGC Partners and Newmark & Co.
- Advised ContextLogic on its shopping app feature Deal Dash which allegedly infringed upon the penny auction app provider DealDash.
- Defended Anheuser-Busch and Everbrite against claims of trademark, copyright, DMCA, and unfair competition relating to a BUDWEISER promotional neon sign depicting the Philadelphia skyline.
- Represented 23andMe in a dispute with competitor Ancestry.com concerning its use of the word ‘ancestry’.
- Represent Google in connection with three pending trademark infringement actions against entities that are infringing the GOOGLE mark by holding themselves out as Google to users of the Google My Business offering.
- Acted for Abercrombie& Fitch in a case against a company that built its business off of commandeering old abandoned trademarks of the client’s.
Jones Day commands a steady stream of trademark litigation work, acting for well-known brands such as BMW. The Cleveland office is home to Meredith Wilkes, who jointly leads the firm's global trademark, copyright and unfair competition group alongside John Froemming. Wilkes specializes in cases concerning online infringement, trade dress and counterfeiting, and Froemming represents clients both in trademark and patent disputes. Another key name to note is Jessica Bradley, who stands out for her record in Lanham Act litigation.
Other key lawyers:
SharkNinja Operating Group
Noeos Products/Kind Group
The Wikimedia Foundation
Big Lots Stores
- Represented McCain Foods Limited in a case brought by Simplot which argued the shape of the client’s twisty fries product infringed upon one of Simplot’s similar products.
- Defended SharkNinja against false advertising claims brought by its competitor Dyson.
Kirkland & Ellis LLP's copyright, trademark and internet practice is led by Dale Cendali, a market leader in major trademark litigation cases. Recent highlights saw Cendali advising Converse on protecting its iconic Chuck Taylor shoe design through filings before the US ITC against 30 different companies which design similar footwear. Another key figure in the team is Claudia Ray, who often works alongside Cendali in the firm's largest cases, and has recognized strengths in the entertainment, consumer goods and technology sectors. Diana Torres is a name to note on the West Coast. Based in the firm's Los Angeles office, Torres routinely acts for major media companies, software developers and consumer products manufacturers.
Lucky Brand Dungarees Stores
KateSpade & Co
Leonard Green & Partners
Take-Two Interactive Software
Dick’s Sporting Goods
- Acted for Lucky Brand in a trademark infringement and reverse confusion case brought by Marcel Fashions concerning the use of the word ‘lucky’.
- Represented Epic Games in cases brought across the country, wherein plaintiffs allege that its Fortnite video game infringes their copyrights, rights of publicity, and trademarks.
Orrick, Herrington & Sutcliffe LLP's trademarks team was significantly strengthened by the arrivals of David Hosp, Mark Puzella, Sheryl Koval Garko from Fish & Richardson P.C. A recent example of the trio's work was defending New Balance Athletics against trade dress infringement allegations brought by Converse, which alleged that the client infringed upon its Chuck Taylor shoe design. Another name to note is Peter Vogl in New York; he recently acted for Kars 4 Kids in a dispute against America Can!, in which America Can! attempted to cancel the client's registration of its phone number, 1-877-KARS-4-KIDS. DC-based Sten Jensen jointly chairs the IP business unit alongside Jared Bobrow in Silicon Valley.
‘The team’s strengths are in its knowledge about trademark protection not only in the US but also in other parts of the world.’
‘They are also forward-thinking in terms of understanding what the business might need in the future and evaluating trademarks from that perspective.’
New Balance Athletics
DSM Marine Lipids Peru
Kars 4 Kids
Mahindra & Mahindra
Mahindra Automotive North America
Emerson Radio Corp.
C5 Medical Werks
- Represented Williams-Sonoma in a battle against Amazon for design patent and trademark infringement, dilution, false advertising and unfair competition relating to Amazon’s use of the registered ‘Williams Sonoma’ service mark.
- Obtained consent order judgments and settlements from BIC’s primary targets in an ITC case aimed at halting the importation of lighters that infringe trademarks that protect BIC’s iconic pocket lighters.
- Represented Mahindra & Mahindra and Mahindra Automotive North America in an ITC trademark and trade dress investigation involving the design of Mahindra’s Roxor off-road-only vehicle.
- Represented Humu against Hulu in a contentious trademark matter.
- Represented Emerson Radio against Emerson Quiet Kool in a trademark infringement dispute.
Quinn Emanuel Urquhart & Sullivan, LLP
Quinn Emanuel Urquhart & Sullivan, LLP's trademark litigation team has an impressive client roster including well-known brands such as Academy of Motion Picture Arts and Sciences, Google and Alibaba. Recent standout work included defending Gucci America against opposition motions brought by Forever 21 in relation to client's stripe designs. That particular case was led by New York-based Robert Raskopf, who heads the practice group alongside Margret Caruso in the Silicon Valley office. Caruso recently acted for Girl Scouts of the USA in a trademark infringement claim against Boy Scouts of America involving the latter's use of the words 'scout' and 'scouting'. Other key figures in the team include litigators Todd Anten in New York, and Daniel Posner in Los Angeles.
Academy of Motion Picture Arts and Sciences
Morgan Art Foundation
Alibaba Group Holding
Boy Scouts of America
US Soccer Federation
Harbor Freight Tools
- Defending NetEase against copyright and trade dress claims brought by PUBGCorporation.
- Acted for Harbor Freight Tools whose trademark ‘diablo’ for air hoses allegedly infringes Freud’s DIABLO mark, which it uses in connection with sawblades.
- Acted for the US Soccer Federation Foundation in a dispute with the US Soccer Federation concerning the ownership of the trademark ‘U.S. Soccer Foundation’.
- Represented AM General, the maker of the iconic military Humvee vehicle, in a trademark dispute involving video game maker Activision’s use of the Humvee trade dress and associated word marks in its popular video game franchise Call of Duty.
- Defended Google against Edible International, which claimed that its search engine deceptively placed sponsored links adjacent to search results for its trademarks.
Arnold & Porter's trademark litigation team is particularly active in the areas of technology, luxury goods and pharmaceuticals. Paul Llewellyn is a key figure and has recently acted for Hershey's in disputes against competitors including Mondelez, Unilever and Mars. Louis Ederer is another important name; he is known for his work on international trademark protection, particularly in anti-counterfeiting. Dori Hanswirth and Theresa House regularly work for Google, having recently advised on oppositions to the registrations of marks Cardroid and Camdroid, which purportedly infringe upon Google's Android mark. Matthew Salzmann is a name to note on the younger end of the partnership. Matthew Wolf and Jennifer Sklenar jointly lead the wider IP group from the DC office. Named lawyers are based in New York unless otherwise stated.
Other key lawyers:
David Yurman IP and David Yurman Enterprises
Fox News Network
Pernod Ricard and The Absolut Company
Professional Golfers’Association of America
The Hershey Company
Time’s Up Now
W.R. Grace & Company
- Advised on infringement litigation for all Pernod Ricard affiliates around the world, including Irish Distillers, Chivas Holdings, and Absolut Vodka.
- Advised Google on its opposition to competing mark ‘Silicon Pixels’ based on client’s existing family of famous ‘Pixel’ marks.
- Represented GSK in an opposition proceeding involving a variety of prescription and over-the-counter marks.
- Representing E-Lo Sportswear in litigation brought by A&H Sportswear which believes that the client’s ‘Miracle Matte Jersey’ and ‘Miracle Pant Tummy Control’ marks infringe upon its ‘Miracle’ mark.
- Defended David Yurman against a trademark infringement claim brought by fellow jeweler Lagos which argued that its ‘Osetra’ was infringed by the client’s ‘Caviar’ trademark.
DLA Piper LLP (US) stands out in particular for its ability to handle cross-border trademark disputes, leveraging the strength of firm's international network. The practice group is led by three partners: Ann Ford, who has particular expertise in disputes involving Europe and Asia Pacific; Frank Ryan, the firm's next elected US chairman; and Gina Durham, who represented The Estate of Marilyn Monroe in a trademark litigation against A.V.E.L.A, which had sold merchandise featuring images of Marilyn Monroe. Also recommended is Tamar Duvdevani, who represented Nike in a dispute with NBA player Kawhi Leonard concerning the ownership of the 'KL2' logo.
Adtalem Global Education
Authentic Brands Group/The Estate of Marilyn Monroe
Dr. Seuss Enterprises
Hyatt Hotels Corporation
Mark W. Cross & Co.
Mister Car Wash
Night Owl SP
The Boston Consulting Group
The Home Depot
The NOCO Company
- Advised Dr Seuss Enterprises against another party’s unauthorised use of the character The Grinch.
- Acting for Night Owl SP in relation to its allegation that a Chinese company has been selling counterfeit products with its trade and design marks.
- Advised the CFA Institute on all of its trademark enforcement issues.
- Represented Tigercat in a case against Caterpillar, concerning the ‘Tigercat’ mark and the possible confusion between the two construction equipment companies.
- Advised The NOCO Company on online enforcement and domain name issues.
Hunton Andrews Kurth LLP's trademark litigation practice 'combines substantive knowledge with practicality', advising on a range of trademark, trade dress and domain name disputes. The team fields a number of 'talented lawyers', though clients have singled out Richmond-based practice co-head John Gary Maynard in particular, a 'savvy, experienced litigation partner'. Contacts in Washington DC include Edward Colbert and Susan Smith, who have acted for key clients including the US Olympic Committee. Jonathan Reichman is a name to note in New York for trademark matters in the entertainment industry, and IP practice co-head James Rosini is a market-leading litigator in the areas of banking, software and insurance.
‘Hunton’s trademark litigation practice benefits from a savvy, experienced litigation partner in John Gary Maynard, supported by other talented lawyers, such as Josh Kalb. They combine substantive knowledge with practicality.’
United States Olympic Committee
William Grant & Sons
Commonwealth of Virginia
Accident Fund Holdings
- Advised United States Olympic Committee on opposing Tempting Brands’ trademark application of Baron Pierre de Coubertin, who founded the modern Olympic Games.
- Acted for Woodstock Ventures, which organizes the iconic ‘Woodstock’ music festivals, in a dispute against a tobacco and cannabis company named Woodstock Roots.
- Represented DISH Network in a trademark infringement action brought by a former retailer over the dishnet.com domain name and trademark rights
- Defending Accident Fund Holdings in a petition to cancel AF GROUP registration in front of the USPTO Trademark Trial and Appeal Board.
- Representing TBWA Worldwide in trademark litigation involving THCProductions and an opposing application to register ‘Thrive in Disruption’.
The team at Katten was involved in a number of major trademark cases in the past year, with recent examples including acting for PepsiCo in litigation before the US Court of Appeals for the Seventh Circuit against SportFuel in relation to the client's product Gatorade, which used the tagline 'The Sports Fuel Company'. Floyd Mandell handled that case and jointly heads the team from the Chicago office alongside Karen Artz Ash in New York, who has particular expertise in matters relating to the fashion industry. Roger Furey is based in the firm's DC office and as such is often involved in investigations and inquiries brought by the Federal Trade Commission. Also recommended is Kristin Achterhof in Chicago office, who is active in the fashion and technology industries.
- Representing Avocado Plus in a case involving breach of contract, infringement of trade dress under the Lanham Act of 1946, and fraud on the US Patent and Trademark Office against Freska Produce International.
- Acting for Daoud’s Fine Jewelry in a trademark dispute brought by Rolex, which alleged unauthorized use and infringement of its trademark.
- Represented Calvin Klein and Calvin Klein Europe in a dispute in The Netherlands relating to allegations by fashion house Diesel that Calvin Klein’s pocket strips on the coin pockets of its jeans infringed Diesel’s pocket strip.
- Acted for Forever 21 and Walt Disney against a trademark infringement claim brought by Toni Basil, whose sang “Mickey,” was used image and song were used to advertise their products.
- Represented Forever 21 in trademark litigation against Adidas concerning its three-stripe trademark.
Kelley Drye & Warren LLP
Kelley Drye & Warren LLP has 'a standout trademark practice' with a diverse and 'enviable client base' including household names such as Bacardi, Foot Locker and Ralph Lauren. The practice group is led by the 'exceptional' Andrea Calvaruso, who recently represented The Miss Universe Organization in an opposition against an individual who sought to register 'Ms. USA' and 'Mrs. USA' in relation to charitable work and awards programs.
Other key lawyers:
‘Kelley Drye & Warren is a stand-out trademark practice with an enviable client base.’
‘The team is extremely knowledgeable, and responsive, and a pleasure to work with. Andrea Calvaruso is exceptional; Patricia Werner is expert and commercially astute.’
Endeavor (Formerly WME| IMG)
Miss Universe Organization
Major League Baseball Players’ Association
Foot Locker Retail
LVMH Moët Hennessy
Take-Two Interactive Software
Ralph Lauren Corp.
Bacardi & Co.
Federal National Mortgage Association
Hudson’s Bay Company
- Advised Cult Gaia on a trade dress infringement case against Steve Madden concerning designer handbags.
- Advised Bacardi & Co. on a trademark infringement case concerning the mark ‘Havana Club’ against Cubaexport.
- Represented Foot Locker Retail in a cancellation proceeding against SZ Apothecary registration for BE.SPOKE.
- Representing Take-Two Interactive Software in an opposition against Death to Genres regarding its efforts to register the trademark ‘GTA’ in several classes on the basis that the mark is likely to cause confusion with the client’s famous GTA marks for video games.
- Represented Polo Ralph Lauren Corp. in litigation against the US Polo Association arising from the use of a polo player logo in connection with various goods and services.
Latham & Watkins LLP fields a strong West Coast team and as such regularly acts before the district courts of California. In San Diego, Jennifer Barry acts as global vice-chair of the firm's IP litigation practice and has built a strong reputation in the retail and consumer sectors. Also recommended is Perry Viscounty in Orange County, who has extensive experience in infringement, oppositions and unfair competition claims.
Other key lawyers:
- Represented TGen in a trademark infringement lawsuit against ATGEN, whose company names were similar and whose names are both used in the scientific and medical research markets.
- Advised The Heroes Project in a trademark infringement and unfair competition case against the Operation Hero Project.
- Represented Funko, the maker of POP! collectables, in a trademark infringement lawsuit filed against Wish Holdings and Tastemakers which used the client’s ‘Mystery Minis’ trademark.
- Advised Otis McAllister in a dispute against Tri-Union Seafoods, which uses an image of a mermaid on its tins of tuna.
- Advised Entrepreneur Media on numerous actions against publications using the word ‘entrepreneur’ in their titles.
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
Chicago-based IP boutique Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP advises across the spectrum of IP matters and is particularly well known for its strength in domain name disputes. Managing partner Bradley Cohn leads the practice and has extensive experienced in handling international trademark issues across a variety of core industry sectors. Jonathan Jennings is a key figure and has acted before the federal and regional courts for multinational clients; he also advises on anti-counterfeiting seizures and raids. Also recommended is Thad Chaloemtiarana, a name to note for trademark and trade dress infringement, with a particular emphasis on the technology sector.
Advanced Micro Devices
Illinois Tool Works
Eli Lilly and Company
- Acted for DNA (Housemarks), which successfully stopped TheMotoBus.com from manufacturing and selling DUNLOP racing decals.
- Represented Wanxu Dong in a reverse domain name hijacking case against Deutsche Bahn.
- Acted for Eli Lilly and Novartis in removing the domain name bestvaluepetsupplies.com from Best Value Pet Supplies due to it selling the clients’ foreign products to US consumers.
- Advising Robert Bosch in a dispute against Sakar International, which opposed the client’s registration of a ‘Vivatar’ trademark for its software due to a prior registration held by the client involving photography-related goods.
- Advising Sandoz on its opposition to GlaxoSmithKline’s registration of the color purple for inhalers.
Weil, Gotshal & Manges LLP's trademark team commands a strong presence in the technology, consumer products, pharmaceuticals and publishing industries, with an enviable client roster including Facebook, Sanofi and Johnson & Johnson. Practice head Randi Singer is based in New York, but regularly acts before courts in Texas, Delaware and California. Of late, Singer has been especially active defending e-commerce companies against issues of secondary liability arising from products sold to their platforms. Bruce Rich retired.
Johnson & Johnson
Harcourt Publishing Co.
- Defended Alibaba in a major trademark infringement lawsuit commenced by a group of luxury brand owners, including Gucci and Yves Saint Laurent, alleging that the client made it possible for the sale of counterfeit versions of the plaintiffs’ brand-name products on its platform.
- Represented Samsung in a dispute regarding the sale of digital watch faces which bared similarities to designs by the Swatch Group.
- Represented American International Group in a trademark infringement action brought by A.I.G. Agency in the Eastern District of Missouri, alleging that it has trademark rights in the mark ‘AIG’.
- Defended Sanofi against an advertising counterclaim brought by Mylan in the litigation alleging Sanofi violated the Lanham Act by marketing Auvi-Q as the ‘new Epipen.’
- Represented Janssen in a false advertising lawsuit brought by Novartis related to promotional materials showing results of a head-to-head study comparing the two companies’ respective psoriasis treatments.
Arent Fox LLP
Arent Fox LLP has core strengths in the fashion and entertainment sectors, regularly representing clients in infringement disputes, oppositions and cancellations. Ricardo Fischer heads the team and stands out for his experience practicing in Latin America, thus providing clients with unique insight into business expansion and protection matters both in Latin America and the Caribbean. Also recommended are Anthony Lupo, Michelle Marsh and counsel Michael Grow, who handles trademark issues for some of the team's largest clients, including Warner Bros. All lawyers are based in Washington DC.
- Advised Amazon on litigation brought by Seven For All Mankind International for trademark infringement over the use of the mark ‘Ella Moon’ for women’s clothing.
- Acted for The Saul Zaentz Company, which owns the rights to The Lord of the Rings, in opposing the registration of ‘The Lord of the Wings’ trademark by a restaurant.
- Assisted Warner Bros with its action against an Indian Tribe that sought to use and register various Wizard of Oz-related marks in connection with casino gambling and restaurant services.
- Acted on a large number of IP, distribution and counterfeiting disputes on behalf of Lacoste.
- Advised Deutsche Telekom on a dispute against Rangers Baseball involving opposition to DTAG’s application to register “T” mark.
Fenwick & West LLP's West Coast trademark team has a strong reputation in the technology sector, in line with the firm's wider strengths. Jedediah Wakefield in San Francisco chairs the litigation group, and has handled a huge variety of IP and technology disputes for well-known tech companies including GoPro and Groupon. Eric Ball regularly works alongside Wakefield in the team's largest disputes; he is particularly strong in instances of reverse confusion.
Other key lawyers:
- Represented data management and software service provider Delphix in a trademark infringement lawsuit against Embarcadero Technologies, another database management company.
- Litigating oppositions before the Trademark Trial and Appeal Board for some of the world’s leading companies.
Greenberg Traurig LLP has a strong base of IP litigators in Chicago, where Cameron Nelson, Jeffrey Dunning and global IP and technology practice co-chair Mark Galis handle a variety of trademark, copyright and trade secret litigation. The team was recently involved in a high profile dispute for American Airlines against Expedia, wherein Expedia's 'Add On Advantage' loyalty program was alleged to infringe upon the client's 'AAdvantage' loyalty program. Another key contact in the team is Susan Heller in Orange County, who chairs the firm's global trademark and brand management group .
Caesars Entertainment Corp.
- Representing UL in connection with an anti-counterfeiting litigation involving vaporizers and other smoke shop products bearing counterfeit UL certification marks.
- Serve as lead counsel for Caesars’ affiliate PHWLV (owner of the Planet Hollywood casino/hotel in Las Vegas) in a suit brought by a restaurant operator seeking a declaratory the judgment that PHWLV has abandoned all rights in the trademark ‘Aladdin’ (the former name of the Planet Hollywood).
- Represented Segway and Ninebot in a Federal Circuit appeal from an ITC Investigation.
- Representing Fujifilm in a complex trademark and unfair competition litigation in the Southern District of New York concerning PLR’s alleged trademarks for certain Polaroid instant film.
- Advised Mars on trademark enforcement matters.
King & Spalding LLP's trademarks group is a trusted advisor for a host of multinational clients, including Allergan, Coca Cola and Chevron. Kathleen McCarthy is a key figure in the New York office; she handles a wide variety of trademark work, with a strong interest in issues concerning trademark parody. Also recommended is senior partner Bruce Baber in Atlanta, who leads work for clients including Google.
The Coca-Cola Company
- Represented Google in cases brought by licensed locksmiths claiming harm from unlicensed listings on Google platforms.
- Representing Chevron in two separate trademark disputes, one against Sariel Petroleum and various individuals and another against AEG Petroleum. Both matters involve defendants using Chevron’s marks without permission.
- Obtained a significant victory for longstanding client The Coca-Cola Company in trademark opposition proceedings brought by Royal Crown Company and Dr Pepper Seven-Up that started in 2007 and related to Coca-Cola’s right to obtain federal registrations for its “ZERO” trademarks.
Knobbe Martens Olson & Bear LLP has a strong base in Orange County, where it works for brands including Knoll, Monster Energy and Celebrity Cruises. Lynda Zadra-Symes heads the practice group and has broad-base expertise in trademark law, having recently been active in areas such an anti-counterfeiting and domain name disputes. Joseph Re is another key name; he regularly represent clients, particularly those in the technology sector, before the US Court of Appeals for the Federal Circuit.
Other key lawyers:
Pilgrim Media/Gas Monkey Holdings
- Acted for Monster Energy in a suit against Integrated Supply Network (ISN) for trademark infringement of its federally registered trademarks that include the word “Monster” as well as its well-known green and black trade dress.
- Acted for Delicato Vineyards in a dispute against Treasury Wine Estates Americans Company which launched an ‘Embrazen’ brand of wines that infringed upon the client’s trademark ‘Brazen’.
- Representing simplehuman in a matter against iTouchless Housewares and Products for trade dress infringement.
- Representing In-N-Out Burgers in a trademark and trade dress infringement matter against Puma North America where a shoe design infringed upon rights of the client.
- Defended Celebrity Cruises against trademark infringement claims brought by Lather due to the client using the word ‘lather’ on its shampoo and soap products.
Mayer Brown is particularly active in the consumer products and food and beverage sectors, acting for major food brands such as The Nestlé Group. Practice head John Mancini has been advising Nestlé on opposition procedures and general protection of the client's 'Butterfinger,' 'Kit Kat' and 'Coffee Mate' trademarks. He also acted for Nespresso USA in trademark and trade dress infringement cases brought by multiple competitors that used a similar capsule design for its coffee capsules.
- Advised Nestlé USA on a suit against Crest Foods for breaching master franchise agreements governing how it would use Nestlé’s famous ‘Nestlé’ and ‘Toll House’ trademarks to develop and manage a series of quick service cafes that use the Nestlé Toll House brand and sell desserts made with Nestlé products.
- Represented Capri Sun in its lawsuit against a Pennsylvania company over allegations it continued to use a trademark-protected drink pouch after an agreement expired.
- Advised Goya Foods on a trademark-cancellation proceeding before the Trademark Trial and Appeal Board, petitioned by Drive Beer which considers the client’s mark ‘Morena’ generic.
- Represented Goya Foods in opposition of the registration of the similarly named ‘Gola Foods’ trademark.
- Defending Curtis International against Epson in two lawsuits concerning allegedly false “lumens” terminology for RCA-brand home-theater projectors.
McDermott Will & Emery LLP has a strong base in Washington DC, where it handles trademark and trade dress infringement, false advertising and cancellations both in the state and federal courts. Robert Zelnick, in DC, has extensive experience in trademark litigation, and in cases involving elements of unfair competition and false advertising. John Dabney left the firm.
Other key lawyers:
North Coast Brewing Company
- Advised North Coast Brewing on its trademark infringement claims brought the Estate of Thelonious Monk regarding its ale ‘Brother Thelonious’.
- Represented Oregon Brewing in a dispute against Excelled Sheepskin & Leather Coat Company, which infringed upon the client’s ‘Rogue’ trademark.
Neal, Gerber & Eisenberg LLP
Chicago-based Neal, Gerber & Eisenberg LLP works for recognizable brands such as Applebee’s and Duracell. Key figures in the team include Lee Eulgen, who recently acted for Blue Cross Blue Shield Association in its action against Planet Assist concerning the use of the mark 'BLUECARD'; Anthony McShane, who represented the tobacco company DLR Enterprises in relation to several contested marks in the roll-your-own tobacco market; and Michael Kelber, a name to note for trademark matters in the electronics and hospitality sectors. Mike Turner and Kevin May are also recommended.
Euromarket Designs (d/b/a Crate & Barrel and CB2)
Sedecal (Sociedad Española de Electromedicina Y Calidad)
Lettuce Entertain You Enterprises
Dart Container Corporation (and subsidiary, Solo Cup Company)
Viceroy Hotel Group
Blue Cross and Blue Shield Association
Montage Hotels & Resorts
PLR IP Holdings (Polaroid)
Dine Brands Global (IHOP, Applebee’s)
- Representing paintball gun manufacturer GI Sportz in a lawsuit asserting trade dress and patent infringement over appearance and functional operation of a competitor’s product.
- Acting as lead trial counsel for DRL Enterprises in relation to several leading marks in the roll-your-own cigarette market; now on appeal in the US District Court in the Northern District of Illinois.
- Represented Florida-based defendant Sweet Pete’s in a matter filed in the Central District of California alleging trademark and trade dress infringement, brought by candy retailer Sugarfina.
- Obtained a favorable settlement for client Blue Cross Blue Shield Association, which sued Planet Assist for use of the mark BLUECARD.
- Acting for Delta Dental Plans Association (DDPA) in defense of a trademark opposition proceeding concerning one of DDPA’s new marks; also assisting in the adoption, registering and licensing of a number of other new marks throughout the DDPA system.
Norton Rose Fulbright's global IP group is led by Minneapolis-based Timothy Kenny, who has extensive experienced handling trademark disputes before the federal court and at the Trademark Trial and Appeal Board. Also in Minneapolis is Felicia Boyd, who recently joined the firm from Barnes & Thornburg LLP; she specializes in trademark and trade dress infringement cases.
Other key lawyers:
Fair Isaac Corporation (d/b/a FICO)
- Advised Fair Isaac Corporation on trademark oppositions and cancellations.
- Advised Boltex and Weldbend on a false advertising claim against a competitor who misleadingly claimed its flanges were heat treated.
- Advised Graco on a trademark dispute.
- Advised SHOPHQ on all of its trademark work which included litigation.
O'Melveny & Myers LLP handles trademark disputes for high-profile clients in the technology, pharmaceuticals and medical devices, and media sectors, the last of which is a particular strength for the team, acting for clients such as Hulu and Walt Disney. Key figures in the team include Ryan Yagura, a highly experienced trial lawyer who has a core focus on the technology sector, and Drew Breuder another highly experienced trial lawyer with experience in the entertainment and retail sectors. Mark Miller left the firm for an in-house role.
Advanced Micro Devices
Samsung Electronics Co.
The Walt Disney Company
Twentieth Century Fox
- Representing pop star Ariana Grande in a lawsuit against retail chain Forever 21 alleging trademark infringement and related claims arising out of the store’s allegedly unlawful use of Ms. Grande’s name, likeness, image, and music.
- Filed a complaint against Amazon alleging trademark infringement and false advertising claims on behalf of Elasticsearch in relation to Amazon Elasticsearch Service.
- Advised the software company Redis against Rackspace, which filed an opposition with the TTAB claiming that the client cannot claim ownership of the Redis trademark.
- Advised Skechers USA in a trademark dispute against Addidas concerning the client’s use of striped designs.
Proskauer Rose LLP's New York-based IP litigation practice is jointly led by Brendan O’Rourke and Lawrence Weinstein. O'Rourke is rated in particular for his ability to 'add value by analyzing a specific situation from a large number of angles'; he is particularly skilled in trying jury cases as well as obtaining emergent relief, acting for clients including Target, Novartis, Sandoz and Diageo, among others. Weinstein is particularly experienced in Lanham Act cases and consumer class actions, and acts for clients in a variety of industries, including fashion retail, medical devices and pharmaceuticals.
‘They work as a team very efficiently and with a clear communication flow.’
‘They involve the right team member for the right task: the experienced partner only steps in when necessary and especially when the strategy is at stake.’
‘The opinions given are extremely business-oriented and very helpful to make decisions internally Brendan O’Rourke is extremely smart and adds value by analyzing a specific situation from a large number of angles.’
‘He has a great knowledge of the case-law even in discussions, so he can provide timely advice. He is using his team very well and he is a very strong litigator: I would not wish to face him in depositions.’
- Represented Target in litigation brought by Universal Standard which argued that the client’s new clothing brand Universal Thread, which also had a focus on plus size clothing, infringed upon its brand.
- Acted for Novartis Pharma in general trademark matters and in investigating potential litigation concerning trademark “Kymera” in view of Novartis’ trademark “Kymriah.”
- Advised Corsearch, an information services company, on potential litigation and trademark office proceedings concerning Amazon’s use of “Project Zero” in view of Corsearch’s use of “Zero”.
- Represented Sandoz in connection with proceedings before the Trademark Trial and Appeal Board and a potential federal lawsuit concerning a forthcoming generic version of the category-leading name-brand inhaler, which has the same colour purple as GlaxoSmithKline’s.
- Represented LemonKind in a trademark dispute against KIND/ Kind Management relating to their beverage products.
Sheppard, Mullin, Richter & Hampton LLP's West Coast trademark team is perhaps best known for its work in the style and fashion industry, but is also highly active in the entertainment and hospitality industries. Century City-based Jill Pietrini leads the team and regularly represents clients in cases involving trademark dilution, trade name and trade dress issues.
- Representing UGG Boots in a case against an Australian footwear manufacturer which made similar products as the client and argued that the term ‘ugg’ was a generic term for sheepskin in Australia and did not infringe upon the client’s intellectual property.
- Acted for FabFitFun in a dispute concerning its registration for the trademark ‘I’m Smokin’ Hot’ for a cosmetics which was similar to a currently registered ‘Smokin Hot Show Time’ for a mascara product.
- Defended Rockstar Hotels against Hard Rock Café, which claimed that the client that used a look-alike name and website to trick consumers into thinking it was connected to the Hard Rock Café brand.
- Represented Forever 21, one of the largest clothing retailers, against Gucci in a case involving blue-red-blue and green-red-green stripes on clothing.
- Advised the STX on its opposition to the registration of the trademark ‘Bad Moms’ which is also the name of one of the client’s motion pictures.
Stroock & Stroock & Lavan LLP
Stroock & Stroock & Lavan LLP is led by New York-based Laura Goldbard George, who is particularly active in the software and technology sectors. Recent highlights have included acting for ProSight Global in its trademark infringement case against Amimon for the unauthorized use of the trademark ProSight for drone-related equipment. Jason Sobel joined Brown Rudnick LLP in March 2021.
Accruit and Paysafe Acquisition
Ultimate Software Group
- Represented Accruit and Paysafe Acquisition together in an action filed by Paysafe Holdings UK and Paysafecard.com Werkgarten seeking a declaratory judgment of trademark non-infringement, non-dilution, and non-cybersquatting for their use of Accruit’s mark ‘Paysafe’.
- Advised Carnegie Fabrics on trademark infringement litigation against Nanjing Ariel Decoration Materials Co. and Nanjing Hao Miao Decoration Materials Co. for using the XOREL trademark, owned by Carnegie Fabrics to promote wallpaper and textile products.
- Led a notice of opposition with the Trademark Trial and Appeal Board on behalf of Seiko Holdings opposing the registration of an application for the mark APOLLO SEIKO in connection with autogenous soldering machines.