Trademark

Steptoe’s attorneys recognize how important it is for clients to preserve their distinctive trade identity and the reputation of their business and its goods and services in an increasingly complex and competitive commercial world.

Steptoe offers a full range of services to protect, preserve, and exploit trademarks, trade dress, and other indicia of origin. These services include providing advice concerning the availability of marks; devising strategies for their efficient and effective national and international registration; maintaining trademark portfolios; counseling regarding licensing opportunities; drafting and negotiating trademark licenses; and transferring trademark rights. 

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. 

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. 

As with its other IP practices, Steptoe’s attorneys have great experience in the many forums where trademark and unfair competition issues may be decided, including federal and state courts, ITC Section 337 proceedings, US Trademark Office proceedings, UDRP proceedings and arbitration, mediation, and other alternative dispute proceedings.   

Representative Matters

Current Trademark Litigation Cases 

• Louis Vuitton Malletier, SA v. LY USA, Inc. et al (S.D.N.Y.) - Representing Louis Vuitton in an action for trademark infringement and trademark counterfeiting. 
• Kim v. New Me Surgical Institute - Representing Kim vis a vis his claims against the New Me Institute for Lanham Act violations, false advertising, unfair competition, and misappropriation of identity and right of publicity.
  

Completed Trademark  Litigation Cases

• 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.
• 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. 
• Major League Baseball Properties v. Salvino – Represented Major League Baseball Properties in a case brought in the Southern District of New York 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.
• Burberry Limited v. Burlington Coat Factory Warehouse Corp. et al. (S.D.N.Y.) - Represented Burberry in an action for trademark infringement and related causes of action. 
• 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 in trademark infringement and unfair competition lawsuit. 

News, Seminars & Events

• Michelle Cooke Named One of Top Ten California Trademark Attorneys of 2008 by Daily Journal
• Firm's IP Practice Gains Four in Century City

Publications & Speaking Engagements

• Madrid Protocol Simplifies International Trademark Registration
  December 2003