$65 Million Sale of Specialty Home Furnishings Business

Represented the seller, a manufacturer of specialty home furnishings, in its acquisition by a leading brand aggregator in numerous different consumer products spaces. The sale, for $65 million in cash and equity, represented the buyer’s first acquisition in the home furnishings space. We also provided counsel on employment, employee benefits, tax, patent, and intellectual property aspects of the transaction.

IP, IT Diligence for $135 Million Acquisition of Animal Health Products Manufacturer

Represented a manufacturer and marketer of pet care and nutrition products in its $135 million acquisition of a wholesaler of small-animal wellness brands. Handled diligence on all intellectual property and information technology aspects of the transaction.

Expedited Trademark Clearance for Pharmaceutical Company

Conducted an extensive number of domestic and foreign trademark clearance searches for a large pharmaceutical company on an expedited basis.

Advised Chartered Body on Decision of the Privy Council to Provisionally Allow Use of an Infringing Title by Competing Chartered Body

Advised client on overall strategy inclusive of possible infringement action, strategic further filings, the essential function of a trade mark in the context of a collective mark and implications of the Privy Council decision for the protection of Professional titles in future. 

Judgment in Counterfeit Enforcement Action

Represented prominent luxury fashion brand in action in the U.S. District Court for Eastern District of New York against counterfeiter. Action terminated with cessation of all infringing conduct, highly favorable settlement, and consent judgment against infringer.

Counsel on 135 Contested Matters in 43 Jurisdictions Worldwide

Provided counsel on 135 separate contested matters (trademark litigation, cancellation actions, oppositions or defense against non-use cancellation actions) in 43 jurisdictions worldwide against one trademark owner. Earned a favorable decision in London, which led to settlement of all other matters.

Oversight of Significant Global Patent Portfolio

Oversaw a worldwide intellectual property portfolio consisting of approximately 11,000 trademark filings, over 70 patent filings and over 8,000 domain names.

Led Due Diligence, Transition and Acquisition of IP Portfolios

Led the intellectual property due diligence, transition and acquisition of IP portfolios of all sizes from small companies with only common law rights to large companies with worldwide portfolios of up to 2,000 trademark filings and 3,000 domain names.

Provided Advice to Legislators Regarding Continuing Effect of EU Trade Marks and Designs in the U.K.

On their request, advised members of the House of Lords on certain defects in the post-Brexit legislation concerning the continuing effect of EU trade marks and designs in the U.K., leading to a government undertaking and insertion of interpretive note in the Parliamentary record.

Summary Judgment Affirmed on Appeal in Trademark Case

Secured summary judgment for a manufacturer in dispute over use of the client’s mark. The plaintiff in the case sought a permanent injunction in Wisconsin and Michigan and disgorgement of profits. The U.S. District Court for the District of Wisconsin granted summary judgment precluding an award of profits and denied a permanent injunction after trial. Both rulings were affirmed on appeal to the U.S. Court of Appeals for the Seventh Circuit.

Filed Trademarks for Retirement Plan Provider in Naming of Major Sports Stadium

Served as IP counsel to a retirement plan provider related to their involvement in purchasing naming rights to a major U.S. sports stadium. Provided counsel on and filed for trademark protection of names and logos following multi-year deal.

Outside IP Counsel, Trademark Prosecution for Global Consumer Products Company

Served as outside intellectual property counsel to a global consumer products company, advising on the clearance of proposed trademarks, prosecuting a high volume of applications across a wide range of consumer products, and managing the client’s portfolios worldwide.

Summary Judgment for Health Care Client in Federal Trademark Infringement Suit

Secured summary judgment on behalf of the defendant, one of the largest non-profit hospital systems in the country, in a trademark infringement suit in federal court.  The successful defense ensured the continued use of a naming convention impacting more than 25 health care delivery locations across the Midwest.

Successful Outcomes for Hotel and Real Estate Franchisors in Trademark Infringement Matters

Successfully pursued trademark infringement actions on behalf of international hotel and real estate franchisors.

Successful Enforcement of Global Intellectual Property Rights

Enforced and defended trademarks, copyrights and patent rights for a jewelry designer and retailer against third-party infringers.

Successfully Opposed Competitor’s Trademarks

Successfully petitioned the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office on behalf of a client to cancel a competitor's trademark and sustained its opposition to three other trademark filings filed by the same competitor. Our client alleged that the competitor’s four marks related to feminine hygiene products were merely descriptive, lacked acquired distinctiveness and were generic.

Trademark Dispute for Health Care Client over Domain Name

Resolved a dispute for a health care client involving website domain names that were infringing the client’s trademarks through successful Uniform Domain Name Dispute Resolution Policy (UDRP) complaints established by the Internet Corporation for Assigned Names and Numbers (ICANN) with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. The panel appointed by WIPO ordered that the infringing domain name be transferred to the client.

Summary Judgment in Trademark Dispute Affirmed on Appeal

Successfully defended a manufacturer of pet supplies in a lawsuit in which a competitor alleged trademark infringement. The decision by the U.S. District Court for the Eastern District of Missouri was affirmed on appeal to the Eighth Circuit. In addition, the circuit court reversed and remanded the lower court’s finding of validity regarding the competitor’s trademark, which the client had challenged.

Trademark Enforcement for Multinational Consumer Products Company

Successfully opposed a trademark application for a Fortune 500 multinational consumer products company involving a competitor’s mark used to market toilet paper, which bore confusing similarities to the client’s mark. The Trademark Trial and Appeal Board found that the identical nature of the goods in question and the similarities between the two marks would likely result in confusion, and refused the competitor’s application.

IP Due Diligence in Business Acquisitions

Led the IP due diligence team in the successful acquisition of at least six animal care products businesses, resulting in the addition of hundreds of trademarks, patents, copyrights and domain names to the client's IP portfolio.

Representation of Camping, Music Festival Promoter in Infringement, Cybersquatting Case

Represented camping and outdoor music festival promoter in a trademark infringement and anti-cybersquatting case in federal court. After filing a complaint and motion for temporary restraining order (TRO), the defendant capitulated to such an extent that there was no need to go forward with the TRO hearing.

Trademark Protection for U.S. Home Goods Manufacturer

Represented a U.S. home goods manufacturer helping it protect the trademark related to its iconic product by asserting trademark infringement, unfair competition and dilution claims under the Lanham Act.

Secured Geographically Limited Trade Mark Protection for Slogan in Scotland

Secured geographically limited trade mark protection for the slogan SCOTLAND’S ANIMAL WELFARE CHARITY, in what may have been the first U.K. trade mark to be granted geographically limited protection on an acquired distinctiveness basis after the change in UKIPO's policy to follow the EUROPOLIS decision of the European Court of Justice.

Successfully Defended Franchisor's Trademarks and Trade Names

Served as lead counsel in various holdover franchisee disputes, successfully restraining former franchisees from using franchisor's trademarks and trade names. 

Secured Surrender of U.K. Trade Mark Registration and Cessation of Use of the Free-Riding Mark

Achieved commercially imperative victory for a leading international learning company against direct competitor by securing surrender of offending U.K. registration and cessation of use by competitor and its business partners. Compelling reputation evidence submitted in the invalidation proceedings forced the other side into settlement.

Holistic Advice to Market-Leading Business Publisher

Acted for market-leading business publisher in connection with: protecting key award title from potentially misleading spin-off brands as a result of the acquisition of the latter by former licensee; protecting long-standing magazine title in key markets and facilitating access into the U.S. market by entering into commercial settlement talks with prospective U.S. competitors; finalising long-running co-existence agreement negotiations with major rival with regard to the parties' use of similar marks; conducting a "root and branch" brand audit in order to consolidate and strengthen the existing trade mark portfolio and identify gaps in protection following the visual revamp of a number of established brands.

Acted for Leading Computer Games Software Companies in Protection, Enforcement of Brands

Advised on and registered trade marks related to one of the best-selling video game franchises of all time, including numerous sub-series and spin-off games, media titles and game characters, as well as enforcing such rights through EU customs applications to secure the destruction of numerous shipments of infringing goods – both straight counterfeits and unauthorized third party products.

Acted for Well-Known U.K. Bar Chain in Actions Against Unauthorised Outlets Overseas

Acted for well-known U.K. bar chain against unauthorised outlets in Italy and Spain on the basis of its EU-wide trade mark registrations.

Acted for Leading High-Street Fashion Retailer in Pre-action Infringement Matter in Italy

Acted for a leading high-street fashion retailer against infringing shoe manufacturer in Italy in a cease and desist matter, and secured removal of mark from remaining stock.

Successfully Defended Manufacturers in Trademark Infringement, Breach of Contract Actions

Successfully defended two different manufacturers of creams and lotions in two separate actions in the Southern District of Florida and the Federal District of Utah for trademark infringement and breach of contract.

Contact Us
  • Worldwide
  • Boston, MA
  • Chicago, IL
  • Denver, CO
  • Dublin, Ireland
  • Edwardsville, IL
  • Jefferson City, MO
  • Kansas City, MO
  • Las Vegas, NV
  • London, England
  • Miami, FL
  • New York, NY
  • Orange County, CA
  • Philadelphia, PA
  • Princeton, NJ
  • Salt Lake City, UT
  • St. Louis, MO
  • Washington, D.C.
  • Wilmington, DE
abstract image of world map
Boston, MA
800 Boylston St.
30th Floor
Boston, MA 02199
Google Maps
Boston, Massachusetts
Chicago, IL
100 North Riverside Plaza
Suite 1500
Chicago, IL 60606-1520
Google Maps
Chicago, Illinois
Denver, CO
4643 S. Ulster St.
Suite 800
Denver, CO 80237
Google Maps
Denver, Colorado
Dublin, Ireland
Fitzwilliam Hall, Fitzwilliam Place
Dublin 2, Ireland
Google Maps
Edwardsville, IL
115 N. Second St.
Edwardsville, IL 62025
Google Maps
Edwardsville, Illinois
Jefferson City, MO
101 E. High St.
First Floor
Jefferson City, MO 65101
Google Maps
Jefferson City, Missouri
Kansas City, MO
2345 Grand Blvd.
Suite 1500
Kansas City, MO 64108
Google Maps
Kansas City, Missouri
Las Vegas, NV
7160 Rafael Rivera Way
Suite 320
Las Vegas, NV 89113
Google Maps
Las Vegas, Nevada
London, England
Royal College of Surgeons of England
38-43 Lincoln’s Inn Fields
London, WC2A 3PE
Google Maps
Miami, FL
355 Alhambra Circle
Suite 1200
Coral Gables, FL 33134
Google Maps
Photo of Miami, Florida
New York, NY
7 Times Square, 44th Floor
New York, NY 10036
Google Maps
New York City skyline
Orange County, CA
19800 MacArthur Boulevard
Suite 300
Irvine, CA 92612
Google Maps
Philadelphia, PA
2005 Market Street
29th Floor, One Commerce Square
Philadelphia, PA 19103
Google Maps
Philadelphia, Pennsylvania
Princeton, NJ
100 Overlook Center
Second Floor
Princeton, NJ 08540
Google Maps
Princeton, New Jersey
Salt Lake City, UT
222 South Main St.
Suite 1830
Salt Lake City, UT 84101
Google Maps
Salt Lake City, Utah
St. Louis, MO
7700 Forsyth Blvd.
Suite 1800
St. Louis, MO 63105
Google Maps
St. Louis, Missouri
Washington, D.C.
1717 Pennsylvania Avenue NW
Suite 400
Washington, DC 20006
Google Maps
Photo of Washington, D.C. with the Capitol in the foreground and Washington Monument in the background.
Wilmington, DE
1007 North Market Street
Wilmington, DE 19801
Google Maps
Wilmington, Delaware