Trademark Infringement Litigation
Whether in federal and state courts throughout the country, the International Trade Commission (ITC), or the Trademark Trial and Appeal Board, we are trial lawyers who actually try cases. Our lawyers combine a sophisticated knowledge of trademark and advertising law with a national reputation as effective trial lawyers.
We have been widely recognized for this unique and valuable approach to intellectual property disputes. In 2009, Law360 Litigation Almanac ranked our firm among the top 5 general practice firms with the largest IP practice in the United States. In 2004, The American Lawyer named us the "IP Litigation Department of the Year," noting that our firm "hails from the heartland, but goes for the jugular."
Understanding our clients' needs is the central focus in everything we do. While we are prepared to take any case to trial, we also work with each client to explore potential resolution through alternative dispute resolution (ADR) or various forms of licensing or co-existence agreements. Our focus on understanding each client's business and unique needs allows us to identify creative "win - win" solutions to trademark and advertising disputes.
Trademark Disputes
A company's trademarks and brand image are often its most valuable assets. Our lawyers vigorously protect those assets against infringement, dilution and other unfair competition.
We consistently represent clients in high-profile cases at the cutting edge of trademark law. We represent both plaintiffs and defendants in a wide variety of trademark-related disputes including:
Trademarks and trade dress including product color, shape, and packaging
Trademark dilution, tarnishment and disparagement
Internet "Key Word" advertising
Internet domain name disputes involving domain "tasting," "parking" and "typo-squatting"
Rights of publicity
Enforcement of co-existence and trademark licensing agreements
Advertising Disputes
More than a decade ago, we represented the State of Minnesota and Blue Cross & Blue Shield of Minnesota in a groundbreaking lawsuit against the tobacco industry involving claims of false advertising and violation of state consumer protection statutes. After four years of litigation -- including discovery of more than 30 million pages of internal documents, litigation of crime - fraud privilege issues, more than a dozen interlocutory appeals (including two to the U.S. Supreme Court), and four months of trial -- the case settled on the eve of jury deliberations. The settlement provides for more than $6.6 billion in payments to the State and Blue Cross, and unprecedented injunctive relief against the tobacco industry.
Since that time, we have represented both plaintiffs and defendants in a wide variety of direct and class action advertising disputes including:
Comparative advertising claims relating to competing products
"Tests prove" advertising claims regarding product effectiveness
Substantiation of advertising claims
Advertising claims regarding consumer preference
Internet advertising through "sponsored links"
Consumer class-action claims under the federal Lanham Act and state competition laws
Selected Results*
- Represented Nilfisk-Advance, Inc. in a successful arbitration before the National Advertising Division of the Council of Better Business Bureaus, the advertising industry's self-regulator forum, on claims that Tennant Company falsely advertised the performance and environmental benefits of its "ec-H2O" technology.
- Represented the American Association for Justice ("AAJ") in a trademark dispute arising from corporate rebranding campaign. Won a summary judgment dismissal of defendants' claim that AAJ had abandoned its trademark rights to the terms ATLA and ASSOCIATION OF TRIAL LAWYERS OF AMERICA when it adopted a new corporate name. Following this summary judgment victory, the case settled with the defendants agreeing to cease and permanently desist from any further infringement of AAJ's marks; acknowledge AAJ's exclusive trademark rights; and make a substantial monetary payment to AAJ.
- Best Buy Stores, L.P. v. Ultimate Acquisition Partners, L.P. d/b/a Ultimate Electronics: Represented national retailer Best Buy Stores, L.P., in suit alleging that Colorado-based Ultimate Electronics was engaging in a false and misleading comparative advertising campaign. The case was resolved after Ultimate agreed to terminate its advertising campaign.
- Louis Vuitton Moet Hennessy v. Phillips Beverage Company: Trial counsel for defendant in $100 Million international arbitration proceeding brought by French multi-national seller of luxury goods arising from alleged breach of trademark license agreement; obtained a complete defense verdict and an award of fees from unanimous three member panel.
- Great Clips, Inc. v. Hair Cuttery of Greater Boston, L.L.C. and Great Cuts, Inc.: Summary judgment granted to client, Great Clips, Inc., against declaratory judgment defendant Great Cuts which had made claims of trademark infringement following Great Clips' entry into the New England market. On February 19, 2009, the U.S. District Court of Massachusetts found that a previous settlement agreement barred Great Cuts' claims. On January 5, 2010, the U.S. Court of Appeals affirmed the previous ruling by the District Court confirming Great Clips' right to use its trademarked name throughout the United States, including the New England market.
- Berger v. Best Buy Stores, L.P.: Obtained dismissal with prejudice of putative class action arising out of alleged false advertisement of national electronics retailer's mail-in rebate program brought under California's Unfair Competition Law and False Advertising Law (Business and Professions Code Section 17200 and 17500).
- Perlow v. Honeywell: Represented product manufacturer Honeywell in several putative nationwide class action cases alleging false advertising and related state unfair competition claims brought after entry of Consent Order in Federal Trade Commission (FTC) action. Obtained summary judgment in favor of Honeywell after determination that Consent Order had no binding effect on private party claims at issue and affirmed on appeal.
- Hutto v. Estée Lauder: Defended Estee Lauder in a putative class action which was dismissed with prejudice prior to class certification.
- Hy v. Best Buy Stores, L.P.: Represented national retailer in putative class action alleging false advertising in violation of state Unfair Trade Practices Act. Case dismissed with prejudice following denial of class certification.
- Northwest Airlines v. NWA Credit Union: Represented trademark holder Northwest Airlines. Case settled on favorable terms just prior to scheduled trial in United States District Court, District of Minnesota.
- Minnesota Mining and Manufacturing Company v. Rauh Rubber, Inc. Obtained preliminary injunction on behalf of trademark holder in case involving claims of trademark infringement and deceptive trade practices.
- Soloflex v. Nordictrack: Represented NordicTrack in a significant false advertising, trade dress, trademark and copyright infringement case against Soloflex.
- Sharper Image v. Honeywell: Represented Honeywell in patent infringement suit brought by Sharper Image against Honeywell. The case was venued in the Northern District of California. It involved air cleaning technology and Honeywell asserted a false advertising counter-claim.
- Phillips Beverage Company v. Sydney Frank Importing: Represented importer of luxury Belvedere brand vodka against competing importer of Grey Goose vodka in case involving alleged false advertising in connection with national multi-media advertising campaign.
Litigation Practices > Trademark Infringement Litigation