Interview with: Doug Rettew, Partner

Finnegan, Henderson, Farabow, Garrett & Dunner LLP | View firm profile

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

While some firms have a few trademark specialists, we have a deep bench of lawyers who focus exclusively in trademark 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 trademark 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 latest Trademark Trial and Appeal Board (TTAB) rule changes, which streamlined the admission of direct testimony (among other things), should 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 2018.

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 and we’ve added experienced analysts to this important group.

Additionally, recognizing our clients’ expanding enforcement needs in China, we have hired a native-speaking attorney 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, a district court awarded more than $168 million in damages to Finnegan client LG Electronics MobileComm USA in a counterfeiting case against nearly 20 companies accused of producing and selling counterfeit and knock-off LG headsets. LG’s TONE Bluetooth headsets are the product category leader, having created the neckband Bluetooth headsets product space with its highly unique and distinctive looking design. To protect unsuspecting consumers who may unknowingly buy what they think is the latest LG TONE Bluetooth stereo headset, LG sued numerous U.S. and foreign companies selling counterfeit versions of the product online. Finnegan obtained a temporary restraining order (TRO) against the named counterfeiters enjoining them from manufacturing, distributing, and selling knock-offs of the popular headsets. As part of the TRO and subsequent preliminary injunction order, the court granted LG’s request to freeze the defendants’ financial accounts in order to preserve LG’s ability to collect any final monetary judgment.

Although the Lanham Act gives courts broad discretion in determining the amount of statutory damages—allowing damages of anywhere from $200,000-$2,000,000 per mark if the counterfeiting is found to be willful—the court decided to award the statutory maximum of $2,000,000 per mark “given the strength and recognition of the LG brand in electronics.” The court noted the number of defendants, which underscored “the serious counterfeiting problem LG faces.” Once the final judgment issued, LG recovered ill-gotten proceeds previously frozen by the court, and seized additional assets.

We also helped Under Armour prevail against a company that had registered “ASS ARMOUR” for a padded, protective snowboarding short. The defendant approached Under Armor to settle after opening arguments at trial, after which the court signed and entered a consent judgment providing that Under Armour’s UNDER ARMOUR, ARMOUR, and ARMOUR-formative marks are famous, and that defendant’s use of ASS ARMOR is infringing. A fame finding was significant for the brand because it greatly broadens the scope of protection afforded the mark (effectively increasing the types of marks and uses that can be considered infringing) and, significantly, opens the door to dilution protection, which can be used to enjoin noncompetitive uses that are not necessarily likely to cause confusion.

These are just two examples of our many recent victories. 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.