Negotiated Trademark Consents and Coexistence Agreements for an Automobile Manufacturer
Served as outside counsel to an automobile manufacturer in the drafting and negotiation of consents and coexistence agreements with third parties regarding international trademark filings.
Filed and Prosecuted Trademark Applications for a Metal Manufacturing Company Regarding the Naming Rights of a Sports Stadium
Represented a manufacturing company as outside counsel in the filing and prosecution of trademarks and logos in relation to the naming rights of a sports stadium.
$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.
Multijurisdictional Trademark Dispute for Worldwide Hotel and Entertainment Chain
Acted for a worldwide hotel and entertainment chain in a multijurisdiction trademark dispute.
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.
Represented U.S. Agricultural Company in International Trademark Litigation
Successfully represented U.S.-based agricultural company in complex international trademark dispute. Oversaw international counsel, case development, and strategy for favorable resolution of claims.
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.
Trademark Portfolio Advice for U.K.’s Largest Independent Wholesaler
Advised one of the U.K.’s largest independent wholesale businesses on their trademark portfolio, including brand protection and subsequent litigation flowing from that.
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.
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.
Outside General Counsel for Regional Food Delivery Service, Restaurant
Served as outside general counsel to a regional food delivery service, handling matters from the company’s inception on an ongoing basis, including trademark and marketing needs. Provided counsel regarding the establishment of a brick-and-mortar restaurant location.
Trade Mark Protection for The All England Lawn Tennis Club, Wimbledon
Successfully advised The All England Lawn Tennis Club in registering green and purple as colour trade marks in the United Kingdom, which further protected and enhanced Wimbledon’s historic and iconic intellectual property.
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.
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