Trademark Litigation

A tailored trademark enforcement strategy is critical to distinguishing a product from the competition and maintaining market share. Steptoe aggressively, yet efficiently, protects our clients’ brands by enforcing their trademark rights through a variety of means, including via comprehensive and strategic enforcement policies as well as litigation of trademark, service mark, trade dress, false advertising, unfair competition, grey market, antitrust and related issues throughout the country. 

Our first step is always to pursue enforcement of our clients’ trademark and trade dress rights through negotiation and diplomacy.  However, where litigation is necessary, our lawyers litigate to win – and do win – in district courts, at the ITC, the USPTO Trademark Trial and Appeal Board (TTAB), through UDRP proceedings, and through mediation and arbitration.

As seasoned trial lawyers, we understand how to prepare a case for trial to best achieve our client’s business objectives – whether a client is a Fortune 500 corporation, midsize company or emerging high-tech venture – and have tried scores of trademark and trade dress infringement cases to judgment before juries, judges, and administrative panels. We blend our litigation know-how with complementary expertise in relevant technology, commercial markets, and law to produce winning and efficient trial teams.

In addition, some of the most well-known brands in the technology, manufacturing, apparel, automotive, entertainment, sports, television, food and beverage, and industrial supply industries trust Steptoe to help them combat counterfeiting and piracy – a problem that today affects nearly every major industry. Our lawyers have developed a particular expertise in the area of trademark counterfeiting. Counterfeiters have become more sophisticated and well-funded than ever, creating complex corporate shell structures in order to maintain anonymity and to protect their assets. Our team counters these complex organizations with 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, often involving the Department of Homeland Security as well as state and federal law enforcement, when appropriate. Engaging the participation of law enforcement is particularly important for clients in 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 to help US Customs agents and police officers identify counterfeit merchandise on our clients’ behalf. In addition to conducting ex parte seizures, Steptoe is also regularly called upon to battle counterfeiting online by implementing programs to monitor the sale of counterfeit merchandise on auction sites.

Our deep trademark litigation experience can also be combined with Steptoe’s respected e-commerce, electronic security, and encryption practices to defend against phishing and pharming attacks, and other online fraud. We have represented a wide range of clients in trademark and cybersquatting suits arising from purportedly improper registration and use of Internet domain names, and we have an active Internet arbitration practice, with an emphasis on domain name disputes.