We have litigated IP lawsuits and proceedings in the federal district and appellate courts throughout the United States, as well as before the US Supreme Court and the US Trademark Trial and Appeal Board (TTAB). We have been active before the International Trade Commission (ITC), the American Arbitration Association (AAA), the Court of Arbitration of the International Chamber of Commerce (CAICC) and in various international tribunals. We also have an active practice in the Court of Appeals for the Federal Circuit. Our IP litigators often work closely with the firm’s US Supreme Court and Appellate practice, which has argued more than 200 cases in the US Supreme Court, and with lawyers in other practice areas to fully serve our clients’ needs in the litigation context.
Federal Trademark Litigation Experience
Mayer Brown's IP lawyers have extensive experience representing clients in the prosecution and defense of trademark litigation infringement actions in the federal district and appellate courts throughout the United States. We have successfully defended our clients against trade dress and unfair competition claims. In addition, we have an active practice before the TTAB in trademark cancellation and opposition proceedings. Mayer Brown also has an extensive track record handling domain name disputes under the UDRP and the Anti-Cybersquatting Act for trademark and domain name owners.
Significant examples of our trademark enforcement capabilities illustrate why corporations put their trust and confidence in our litigators. We recently successfully defended against a motion for preliminary injunction brought against our client E1 Entertainment. We secured a significant victory for our client, sit-up, Ltd., a division of Virgin Media, in a case against IAC and Home Shopping Network for trade secret misappropriation and breach of contract.
Given current economic challenges, companies are ever-more vigilant about protecting their IP assets from counterfeiting enterprises. Counterfeiting includes a range of illicit activities, impacting sales and licensing, brand value and firm reputation. To properly combat the issues, companies need to take a comprehensive, global approach that is strategically tailored to their specific enforcement needs.
We manage effective anti-counterfeiting programs for various Fortune 500 companies, including border seizures and related litigation, in addition to trademark disputes before the World Intellectual Property Organization (WIPO). We advise clients on counterfeiting and customs issues and work closely with them to develop global enforcement and anti-counterfeiting programs and strategies to aid in the worldwide protection of trademarks and service marks. Our practitioners are located across the globe, giving us the ability to provide assistance in the United States, Europe and Asia.
Brand Protection Litigation
Our lawyers frequently provide strategic counsel on how to best protect, maintain and enhance IP assets on a global basis, including building brands and businesses. We are dedicated to protecting our clients’ most prized assets around the world – their brand names, identity and reputation. We understand the importance of each matter to our clients, and that resolving such issues is extremely important to maintaining a profitable business.
We have represented both domestic and international clients in cases before the TTAB in trademark cancellation and opposition proceedings and appeals, encompassing dozens of disputes annually. In the United States, we recently won an action on behalf of a large real estate investment trust in which we succeeded in forcing another company to change its name despite five years of common law use.
Trade Dress Litigation
Protecting our clients' product appearance and packaging features is a key component of our trademark litigation practice. Trade dress (a.k.a. industrial design outside the United States) protection extends to the protection of features not effectively or traditionally covered by patent or copyright. It is intended to protect consumers from packaging or appearance of products that are designed to imitate other products. Such protection is particularly important in the food and beverage industries. Our trade dress practice is international in geographic scope and diverse in terms of client mix. Our experience includes clients from a range of industries including food and beverage, consumer goods, pharmaceuticals, financial institutions, and media and entertainment.
In the United States we successfully represented Entenmann's in defense of a trade dress infringement claim relating to designs on a package of donuts sold in supermarkets. We also represented a public relations firm in defense of claims alleged by a health insurer’s association.
Domain Name Disputes
Protecting our clients' brand and trademarks online is increasingly important in today’s technology-driven world. We have worked extensively with domain name issues, including litigation under the federal Anti-Cybersquatting Act and Uniform Domain-Name Dispute-Resolution Policy (UDRP), as well as in the areas of keyword advertising, domain name disputes under the UDRP, domain kiting and domain tasting. Our UDRP experience includes acting as an advocate for both trademark and domain name owners.
Asia IP & TMT: Quarterly Review
- Societe des Produits Nestlé S.A., Nestlé S.A., Nestlé USA Inc. in Los Angeles County Superior Court versus a professional actor claiming misappropriation of his likeness on product advertising overseas. Obtained dismissal with prejudice based on jurisdictional and other defenses.
- Nestlé USA, Inc. and Dreyer’s Grand Ice Cream, Inc. in a trademark infringement action brought by Weight Watchers International, Inc. Nestlé and Dreyer’s were accused of improperly displaying the "Weight Watchers" and "Points" trademarks for compatibility advertising purposes in connection with their Lean Cuisine and Skinny Cow brands. Our defense, based on fair use rights, led to a favorable settlement.
- Nestlé USA, Inc. in defense of a trademark infringement action brought by Bottom Line Food Processors, Inc., d/b/a Michael Angelo’s Gourmet Foods, Inc., the registrant of trademarks for "The Art of Italian Cuisine" and certain images of iconic Italian art. Michael Angelo’s alleged that Nestlé infringed its trademarks through its marketing campaign for Buitoni products, which featured the tagline "The Italian Art of Food" and the theme of Italian art and culture. Our defense, based on fair use and the weakness of Michael Angelo’s descriptive trademarks, led to a favorable settlement.
- Geisha LLC in defense of a trademark infringement action in the US District Court for the Eastern District of New York where we successfully enjoined the registered trademark owner from use of the mark and obtained cancellation of the registered mark alleged against Geisha.
- E1 Entertainment in a trademark infringement case brought in the US District Court for the Central District of California. We successfully defended against a motion for preliminary injunction brought by E! Entertainment Television against our client E1 Entertainment. The plaintiff, which uses an E superimposed on an exclamation point over the word Entertainment as its mark, sought a preliminary injunction under the Lanham Act, Federal Trademark Dilution Act, and California Business & Professions Code against our client to enjoin them from rebranding themselves with a mark that reads "E1 Entertainment." Such rebranding, plaintiff alleged, constituted willful federal trademark infringement because our clients “intentionally and nefariously” sought to capitalize upon the goodwill plaintiff had developed over two decades at the cost of $90 million. The District Court denied the plaintiff’s motion and adopted all of our arguments in support of its ruling. The Court further concluded that consumers in the relevant marketplace were not likely to be confused as to the origin of the goods or services bearing our client’s mark, which was adopted in good faith.
- Ion Media Networks in an action involving trademark infringement, unfair competition and state law claims, arising out of Paxon's commercial relaunch and rebranding under the new logo "ION MEDIA TV." We obtained an extremely favorable settlement for our client.
- Deutsche Telekom AG in an opposition action brought by ESPN against a trademark application filed for the use of "T-Games." ESPN claims confusing similarity to their popular mark "X-GAMES." Deutsche Telekom AG claims a family of marks in the use of the unique stylized letter "T" including its world-famous mark for "T-Mobile."
- Vaughan & Bushnell in a trademark infringement matter regarding a color configuration mark on blue-handled hammers. Our defense, based in part on estoppel relating to the statements made in the plaintiff’s 2(f ) application for color secondary meaning, led to a favorable settlement.
- Modern Luxury in the US District Court for the Central District of California in a case alleging trademark infringement against our client concerning both parties' use of "HAWAI'I" trademarks in connection with magazines. The court ruled in our client’s favor and denied the plaintiff’s request for a preliminary injunction, which led to an extremely favorable settlement for our client.
- Diners Club in the US District Court for the Northern District of Illinois. Clever Ideas filed a suit against Diners Club alleging breach of contract claims and trademark infringement in connection with the parties’ agreement with respect to promotion of a dining program for Diners Club cardholders. We successfully defeated Clever Ideas' preliminary injunction motion that sought to require Diners Club to recall all of its charge cards, which contain Clever Ideas' trademarks. Additionally, we successfully settled the breach of contract claims and trademark claims with a monetary settlement favorable to Diners Club.
- Design Ideas Limited in a case brought against our client in the US District Court for the Southern District of New York for trade secret misappropriation, trademark infringement and unfair competition. The case arose out of a long-standing dispute between two joint venture partners who both claimed intellectual property rights in the invention, commercialization and exploitation of decorative gel polymer products. The case involved an analysis of the trademark, trade secret, and antitrust laws of numerous worldwide jurisdictions in order to achieve a mutually agreeable settlement.
- The Big Ten Conference in the US District Court for the Northern Illinois against a Penn State donor and alumnus who alleges that he first developed the concept of what is now the Big Ten Network cable channel but that the Conference subsequently stole his idea and plan. The plaintiff sued the Conference under Section 38 of the Lanham Act, alleging that the Conference fraudulently procured its trademark registration for the "Big Ten Network" mark, and alleged state law claims for breach of contract and misappropriation of trade secrets. Our motion to dismiss the Lanham Act claim was granted, which resulted in dismissal of the rest of the action for lack of subject matter jurisdiction.
Asia IP & TMT: Quarterly Review