Trademark Litigation

 

A product’s market share becomes threatened when the product is not distinguished from the competition.  Thus, a tailored enforcement strategy is critical to maintaining the success of a product.  Steptoe aggressively, yet efficiently, enforces our clients’ trademark rights through a variety of means, ranging from the development of a comprehensive and strategic enforcement policy, to litigation and trial.  Our attorneys have litigated trademark, service mark, trade dress, false advertising, unfair competition, gray market, antitrust and related issues throughout the country.  Steptoe has had significant success enforcing our clients’ trademark and trade dress rights through negotiation and diplomacy.  Where litigation is necessary, however, our attorneys litigate to win – and do win – in District Courts, at the ITC, the Trademark Trial and Appeal Board, through UDRP proceedings, and through mediation and arbitration.

Our IP attorneys have tried scores of trademark cases to judgment for Fortune 500 companies, midsize companies, and small, emerging high-tech companies.  We blend our litigation know-how with attorneys who have great experience in the relevant technology, commercial markets, and law, whether it be patent, trademark, copyright, trade secret, privacy, constitutional, or a combination of them – to produce winning and efficient trial teams.

Our trademark litigation team comprises seasoned trial lawyers that have litigated a broad array of trademark and trade dress infringement matters before juries, judges, and administrative panels.  Our partners have great experience in the many forums where trademark and unfair competition issues may be decided.  Our team also has extensive experience with trademark opposition/cancellation proceedings before the Trademark Trial and Appeal Board in the USPTO.

Representative trademark litigation cases include a successful trial in the Middle District of Alabama against Region University for infringement of the Regions mark of Regions Bank, a successful opposition to an application by Emerson Electric to register its Dirt Hog and Water Hog marks based on a family of Hawg marks of Black & Decker, and a decision of the Federal Circuit in favor of Texaco against the registration of a Clear Bottle mark by Pennzoil-Quaker State.

In addition, Steptoe’s attorneys regularly counsel clients concerning enforcement and defensive strategies for trademarks, trade dress, and the broader issues of unfair competition, including issues of false advertising, grey goods, and antitrust.

Steptoe represents some of the country’s most well-known brands in the technology, manufacturing, apparel, automotive, entertainment, sports, television, food and beverage, and industrial supply industries, to name a few.  These brands are increasingly vulnerable to counterfeiting and piracy, a problem that affects nearly every major industry.  In order to combat piracy and counterfeiting of these popular brands, our attorneys have developed a particular expertise in the area of trademark counterfeiting.  Counterfeiters today are more sophisticated and well-funded than ever, creating complex corporate shell structures in order to maintain anonymity and to protect their assets.  These complex organizations must be countered by sound and imaginative anti-counterfeiting strategies that include the cooperation of industry and government.

Lawyers in our Washington, New York, and Los Angeles offices represent plaintiffs in civil counterfeiting actions, adopting a multi-faceted approach to protect their intellectual property rights.  We often involve law enforcement organizations such as the Department of Homeland Security as well as state and federal law enforcement, when appropriate, to combat counterfeiting for our clients.  Law enforcement is especially necessary for those industries in which counterfeiting poses a significant health and safety risk – such as with pharmaceuticals, food, and aerospace and automotive parts.  Counterfeiting in these industries not only denigrates brand integrity, but can lead to a host of other problems such as costly product liability litigation.  Our comprehensive counterfeiting approach also includes law enforcement training programs for clients to help US Customs agents and police officers identify counterfeit merchandise.  In addition to conducting ex-parte seizures, Steptoe has helped clients battle counterfeiting by implementing a program to monitor the sale of counterfeit merchandise on online auction sites.

Combined with one of the strongest e-commerce, electronic security, and encryption practices, our attorneys are active in the defense of and counter measures to phishing and pharming attacks, and other online fraud.  The firm has represented a wide range of clients in trademark and cybersquatting suits arising from purportedly improper registration and use of Internet domain names.  Steptoe has an active Internet arbitration practice, with an emphasis on domain name disputes.

Representative Matters

  • Two Brothers Brewing Company v. Three Brothers Brewing Company, LLC  (E.D. VA. 2014) –  Representing Two Brothers Brewing Company in a case involving trademark infringement of the TWO BROTHERS mark.
  • Thomas & Betts International LLC et al. v. Burndy LLC et al. (W.D. Tenn. 2014) - Representing T&B in a case involving trade dress infringement of cable ties.
  • Deckers Outdoor Corporation v. New Balance Athletic Shoe, Inc. (T.T.A.B. 2013) – Representing New Balance in an opposition against registration of the ANUE mark. 
  • Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, (Fed. Cir. 2013) – Defended the Federation of the Swiss Watch Industry in an appeal by Swiss Watch International (SWI) of a decision by the Trademark Trial and Appeal Board dismissing SWI’s attempt to cancel the Federation’s SWISS and SWISS MADE certification marks for watches. After briefing and an oral argument, SWI filed an unopposed motion to terminate the appeal.
  • Blount, Inc. v. McHale Engineering Limited (T.T.A.B., 2012) - Represented opposer Blount, Inc. in an opposition against registration of the FUSION mark.
  • Soccer United Marketing LLC et al v. The Black & Decker Corporation (S.D.N.Y., 2009)  Defending Black & Decker in a case claiming false advertising, trademark infringement, and unfair competition.
  • Regions Asset Company v. Regional Acceptance Corporation (T.T.A.B. 2009) Represented Regions Asset Company (Regions) in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning Regional Acceptance Corporation's applications to register the mark REGIONAL in both plain text and stylized format. The Board found that the REGIONAL marks were likely to cause confusion with Regions' REGIONS mark.  Thus, the Board rendered judgment in favor of Regions and denied registration of both REGIONAL marks.
  • Trek Bicycle Corporation v. Trek Winery LLC (W.D. Wis., 2009)  Represented Trek Winery LLC in a trademark infringement case. The Court found in favor of Trek Winery, dismissing an action for lack of personal jurisdiction.
  • Regions Asset Co. et al v. Regions University (M.D. Al., 2008) Represented Regions Bank in a trademark case of first impression concerning Southern Christian University’s change of its name to “Regions University.” Regions Bank claimed the name Regions University infringed and diluted its Regions brand.  After a week long trial that began on January 14, 2008, but before the Court could issue an opinion, the defendant conceded infringement and dilution and a Final Judgment by Consent was entered which immediately barred the defendant from using the Regions name in advertising, promotion and marketing and required defendant to change its name. 
  • The Black & Decker Corporation v. Emerson Electric Co. (T.T.A.B. 2007) - Represented The Black & Decker Corporation in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning Emerson Electric Co.'s intent-to-use applications for the trademarks DIRT HAWG and WATER HAWG for vacuum cleaners, wet and dry vacuum cleaners, and replacement parts therefor.  Black & Decker claimed the marks DIRT HAWG and WATER HAWG were confusingly similar to its HOG family of marks for power-operated outdoor products, such as LEAF HOG, HEDGE HOG and EDGE HOG.  The Trademark Trial and Appeal Board agreed, and in a decision dated March 23, 2007, the Board sustained the opposition and denied registration of the DIRT HAWG and WATER HAWG marks on the ground of likelihood of confusion.
  • Franck Muller USA, Inc. v. Yafa Antique Jewelry Inc. et al. (S.D.N.Y., 2007) – Represented the United States licensee for Franck Muller watches in a lawsuit alleging trademark infringement and unfair competition suit relating to the gray market trafficking of Franck Muller watches.  On December 7, 2007, a federal court issued the last of several rulings barring 11 retailers from engaging in this illegal activity in the United States, Canada and the Caribbean.
  • Certain Foam Footwear (2006), USITC Inv. No. 337 – TA – 567 – Represented respondent Australia Unlimited against allegations of trade dress and design patent infringement related to foam shoes.  Succeeded in having trademark allegations dismissed and negotiated a settlement based on cross-licensing of design patents.  
  • Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems (2006), USITC Inv. No. 337 – TA – 569 – Represented respondents Canady Technology LLC and Canady Technology Germany GmbH against allegations of patent and trademark infringement with regard to medical devices.
  • New Sensor Corporation v. CE Distribution, 367 F. Supp. 2d 283 (E.D.N.Y. 2005) (attorneys’ fee award); 303 F.Supp. 2d 304 (E.D.N.Y. 2004) (summary judgment) – Secured summary judgments and sanctions award for distributor of electronic equipment, CE Distribution, in trademark infringement and unfair competition lawsuit.
  • Heaven Sent Naturals v. Church & Dwight (D. Ariz, 2005) – Represented Heaven Sent Naturals in a federal Lanham Act complaint filed for trademark infringement and trade dress that was confusingly similar, thus constituting trade dress and unfair competition, for a nutritional supplement.
  • Texaco Inc. v. The Pennzoil-Quaker State Co. (T.T.A.B. 2004, Fed. Cir. 2005) – Represented Texaco in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning The Pennzoil-Quaker State Company's application to register a clear container design for motor oils.  Texaco claimed that a clear bottle was functional in a utilitarian sense and that, if not functional, the clear container design was not inherently distinctive and had not acquired distinctiveness as an indicator of source for Pennzoil-Quaker State's motor oils.  On May 28, 2004, the Board sustained the opposition on both grounds and refused to register the clear container as a trademark of Pennzoil-Quaker State.  Pennzoil-Quaker State appealed the Board's decision to the Federal Circuit.  On June 10, 2005, the Federal Circuit affirmed the Board's decision.
  • Certain Ink Markers and Packaging Thereof (2004), USITC Inv. No. 337 – TA – 522 – Obtained a general exclusion order for all ink markers and packaging that infringe or are confusingly similar to Sanford’s trademarks or trade dress for SHARPIE® ink markers.  
  • Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) – Successfully represented the petitioner, Dastar Corp., at both the certiorari and merits stages in this case, in which the US Supreme Court unanimously reversed the Ninth Circuit.  The case arose at the intersection of trademark and copyright law, and Steptoe’s arguments persuaded the Court to overturn more than two decades of court of appeals precedent.  The Court’s opinion greatly narrowed the scope of permissible “reverse passing off” claims, limiting such claims to situations where the defendant strips the identifying marks off of the tangible products of another and then sells the products as its own.
  • Major League Baseball Properties v. Salvino (S.D.N.Y., 2003) – Represented Major League Baseball Properties in a case concerning the use of Major League Baseball team colors and city names for toy plush animals. The action ended with a settlement favorable to MLBP.  
  • Certain Bearings and Packaging Thereof (2003), USITC Inv. No. 337 – TA – 469 – Represented SKF USA in this investigation related to alleged infringement of registered and common law trademarks, dilution of trademarks, and various acts in violation of the Lanham Act. 

Noteworthy

  • Ranked as a top trademark law firm in DC by World Trademark Review, WTR 1000, 2012

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