Trademark

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

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. 

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.

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.

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.

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.

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

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.

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.

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.

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.

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

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