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Trademarks and Trademark Litigation

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Overview

Our Clients

We protect some of the most famous brands in the world across a variety of industries, including retail, apparel, consumer products, sports, hospitality, insurance, technology, media and entertainment. We also represent individuals in claims of rights to publicity.

Our Services

Long recognized as being on the cutting edge of trade identity protection, Katten’s Trademark attorneys and litigators handle a wide range of matters involving trade names, trademarks, service marks, trade dress, logos, taglines, slogans, designs and domain names. Our team guides clients in the development of trade identity rights and actively works to protect those rights and defend claims should litigation ensue.

We evaluate thousands of trademarks searches every year and counsel clients on their availability for use. In addition, we police our clients’ marks to ensure that no attempted registration or use threatens the rights of our clients, and evaluate and render opinions on potential conflicts among trademark users. Our trademark attorneys also prepare, prosecute and maintain trademark applications and registrations in the United States and around the world.

Katten’s skilled trademark litigators offer pre-litigation counseling and effective representation in courtrooms across the United States and before the Trademark Trial and Appeals Board. Clients turn to us to handle expedited proceedings involving temporary restraining orders and motions for preliminary injunction. We have successfully defended infringement actions involving defenses of invalidity of plaintiffs’ marks, lack of likelihood of confusion, fair use, the First Amendment and fraud, as well as equitable defenses such as laches, unclean hands and estoppel. Our team offers significant experience in all types of business torts and defamation claims as well as advertising law, including cases involving Lanham Act claims, deceptive trade practice claims, comparative advertising and the Federal Trade Commission.

Whenever possible, we work to achieve dismissal well before trial. Our team includes several experienced mediators who can resolve disputes in an advantageous manner, alleviating the need to continue protracted and expensive litigation.

With a strong group of attorneys equally skilled at counseling and prosecuting and defending claims, Katten’s Trademarks and Trademark Litigation practice offers clients a complete solution for protecting their trade identity.

Experience
  • Representation of Arcadia Group Brands Ltd. in connection with protecting TopShop, one of the most famous brands in fashion with a tremendous international value, through ongoing federal litigation in the United States (with related actions pending abroad) and by dealing with rights to a mark which achieved fame overseas before substantial recognition was reached in the United States. Katten's representation included a matter against Slovenian company Studio Moderna involving rights to the Topshop brand for retail services in the United States, although the case was global in scope. Resulted in favorable confidential global settlement.
  • Successful representation of an American multinational technology company in a lawsuit claiming unfair competition and trademark infringement under the Lanham Act. The complaint alleged use of a trademark was without permission and authority of the plaintiff, and was likely to cause confusion or mistake, or to deceive. The case settled on favorable terms for Katten's client.
  • Representation of Microsoft Corp. in connection with the "Kinect" brand name, where Katten successfully argued that its popular gaming device could not be confused with Kinbook LLC's older Kinbox Facebook application trademark. Judge Marjorie Rendell of the US Court of Appeals for the Third Circuit agreed with a lower court ruling, explaining that "No reasonable jury could find a likelihood of confusion between the parties' marks," and that "we see no need to expand upon the district court's thorough analysis."
  • Representation of an e-cigarette manufacturer in a lawsuit against a global tobacco company seeking a declaration that openings on our client's electronic cigarettes do not infringe a trademarked design on the competitor's packaging. The suit was catalyzed by a cease-and-desist letter from the competitor demanding the e-cigarette maker change the design on its vaporizer device and pods. Katten's client argues lack of infringement and contends the trademark registration at issue should be invalidated as merely descriptive and not indicating source.
  • Representation of Summit Entertainment in a $300 million trademark suit regarding use of "Twilight." Bath & Body Works argued that Summit's trademarks of the Twilight name relate to the movie series and are not for personal care items, making product labels such as "Twilight Woods" and "Twilight Crush" fair use. The US District Court for the Southern District of New York concluded that whether or not the product marks are likely to blur the distinctive source of Summit's marks is a triable issue of fact.
  • Defense of Scripps Network Interactive against a trademark infringement claim brought by U.S. Foods. The case claimed that proposed use of "Food Fanatics" as part of the title of a television series on the Cooking Channel that featured food fanatics violated the claimed trademark rights of the plaintiff in the term "Food Fanatics." Scripps claimed fair use and First Amendment rights, and the case settled in December 2013 on confidential terms.
  • Defense of Skype/Microsoft and its successful group messaging business, GroupMe, in a trademark dispute involving a company using "Groupie" that was seeking to stop use of the "GroupMe" mark. GroupMe is owned by Skype, which is owned by Microsoft. Case was resolved successfully on the eve of trial in US District Court for Southern District of New York.
  • Successful representation of an American fashion house in two related copyright and trademark infringement disputes involving the allegedly unauthorized use of an artist's photograph and images on clothing which was sold in Brazil and elsewhere. Katten negotiated a favorable settlement for our client.
  • Representation of Aéropostale, Inc. in a lawsuit against H&M Hennes & Mauritz AB regarding claims of trademark infringement, false designation of origin, dilution and counterfeiting under the Lanham Act, and state law causes of action. The suit, filed in the US District Court for the Southern District of New York, contended that H&M sold items that infringed on Aéropostale's trademarked phrase "Live Love Dream," and its "Aéropostale" and "87" trademarks. Under the terms of the consent injunction, H&M is permanently enjoined from manufacturing, importing or exporting any clothing, fashion accessories or related goods that incorporate any of the subject trademarks, and from distributing, licensing or in any way promoting merchandise that contains Aéropostale trademarks in any US retail store or through any website owned or controlled by H&M that is targeted toward US consumers.
  • Counsel for a world-renowned manufacturer of high-end bicycle parts in the filing of an action for trademark infringement and unfair competition against one of the largest manufacturers of bicycles in the world. The complaint, filed in the US District Court for the District of Utah, sought remedy under the Trademark Act of 1946, as amended, and for trademark infringement, unfair competition and deceptive practices under the laws of the State of Utah. The case settled on confidential terms.
  • Defense of Aéropostale, Inc. against trademark and trade dress infringement allegations asserted by AirWair (makers of the DOC MARTENS brand of boot). AirWair filed more than 12 complaints against multiple retailers and brand owners, each alleging trademark and trade dress infringement, relating to the sale of a variety of combat boot-styled footwear. The case was ultimately settled and resolved in a confidential settlement agreement. Of note, as a result of the allegations asserted by AirWair's counsel and their perceived scope of intellectual property rights, Katten worked with several clients to develop consistent guidelines for their own designs of combat boot-style footwear in manners that did not infringe (and could not support allegations of infringement) rights that AirWair has asserted in litigation. Interestingly, as a result of the litigations filed by AirWair, and as a result of these and similar guidelines developed by other advising counsel, the market/style trend towards this type of footwear appears to have shifted in order to avoid litigation claims.
  • Representation of Agave Loco LLC in connection with a successful federal court ruling against Sazerac Co. Inc., where the parties reached a confidential settlement. Sazerac named its new signature drink "Orchata," confusingly similar to Agave Loco's already enormously popular RumChata rum liqueur drink. Katten argued that respected research shows RumChata and Chata drinks are now the most-asked-for such liqueurs in the United States as its makers announced the sale of their two-millionth bottle in 2012.
  • Defense of one of the world's largest mobile shopper marketing platforms against alleged trademark infringement. Katten successfully defeated a motion filed by a competitor seeking to stop our client from using a particular trademark for its mobile marketing platform delivered to smart phones. Because complainant was aware of our client's product and related media attention for years and did nothing, the federal judge ruled that plaintiff could not get swift court action after years of "lassitude." The case settled on the eve of trial on favorable terms for Katten's client in a mediation.
  • Defense of a provider of premium logistics services in a trademark infringement lawsuit filed in the US District Court for the Northern District of Ohio regarding a logo. Complainant alleges trademark infringement, false designation or origin, dilution, and unfair competition.
  • Defense of an aircraft designer/manufacturer in a trademark litigation against a competitor—brought in administrative tribunals in the United States and several countries around the world—regarding rights to a series of trademarks used for business jets.
  • Defense of a personal care corporation in a trademark and trade dress lawsuit in federal court in Virginia, involving the design of an important absorbent pad product. Katten successfully obtained dismissal of claims pursuant to settlement.
  • Representation of a global paints and chemical coatings company on intellectual property matters, including handling and coordinating trademark infringement litigation and disputes in Europe, multiple Community Trade Mark proceedings, and multiple trademark disputes and administrative oppositions in China, Brazil, Colombia, India and other countries involving the client's house mark and other trademarks through foreign counsel.
  • Representation of Bausch & Lomb Incorporated in a matter filed against Bayer Aktiengesellschaft with the USPTO's Trademark Trial and Appeal Board (TTAB). Bayer wanted to register "ALLERAY" for allergy medication, while Bausch & Lomb owns strong trademark rights to "ALAWAY… the best allergy eye drops on the market for red/itchy eyes." Bayer dropped the registration and abandoned its use.
  • Defense of Frank Brunckhorst Co., Inc., producers of "Boar's Head" deli meat products, against a claim by Dietz & Watson that Boar's Head's use of EVEROAST for chicken infringes Dietz & Watson's use of EVERBEST for ham. The case was pending in the US District Court for the Eastern District of New York as well as before the USPTO TTAB. Dietz & Watson ultimately dismissed its case.
  • Representation of an aerospace and defense company and its subsidiary which designs, develops and manufactures business-jet aircraft in connection with a lawsuit in Chinese court and several litigations in administrative tribunals for trademark infringement and related claims, including prosecution and licensing of approximately 1,380 global trademarks.
  • Representation of Helmut Lang New York LLC in a UDRP Complaint filed with the WIPO Arbitration and Mediation Center. A third party had registered a domain name incorporating our client's federally registered HELMUT LANG trademark and was using such domain name in connection with a website that sought to intercept and siphon off Internet traffic intended for our client's products. WIPO held in favor of our client and ordered that ownership of the domain name at issue be transferred to our client.
  • Representation of Point 3 Basketball, LLC, a manufacturer of basketball accessories, in a trademark claim against Nike for use of an infringing logo. Settled on confidential terms in September 2011. Point 3 Basketball, LLC v. Nike, Inc.
  • Representation of Trustmark National Bank, a federally chartered bank with more than $7.5 billion in fiduciary assets, in an opposition proceeding before the USPTO's TTAB. Trustmark offers a comprehensive range of banking services under its long-established (and federally registered) Trustmark™ name and mark. A third party called "U.S. Trustmark Company" had sought to register the identical Trustmark™ mark with the USPTO. During the course of the opposition proceeding, the Katten team filed a motion for judgment on the pleadings that was granted by the TTAB, and the third party's application for registration was refused.
Firm News
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December 2014 / January 2015
December 2013 / January 2014
Events
April 12, 2018
Success in Style | New York, New York
March 22–23, 2017
Brands and Fashion Conference | New York, New York
January 11, 2017
2016 Entertainment Year in Review | Beverly Hills, California
November 16, 2016
May 21–25, 2016
INTA Annual Meeting | Orlando, Florida
October 17, 2015
Right of Publicity Workshop | New Haven, Connecticut
July 30, 2015
May 2–6, 2015
October 12–15, 2014
September 12, 2014
May 10–14, 2014
August 8–13, 2013
November 9–11, 2006
Trademarks and Trademark Litigation

Recognition

Managing Intellectual Property IP Stars – Trademark Contentious (United States)

2017
U.S. News Best Lawyers "Best Law Firms" – Trademark Law (National)
Trademark Law (National), 2016–2019

Managing Intellectual Property IP Stars – Trademark Prosecution (United States)

2017
Chambers USA – Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC)
Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC), 2016

Managing Intellectual Property IP Handbook - Trade Mark Prosecution (United States)

(United States), 2014
U.S. News Best Lawyers "Best Law Firms" – Trademark Law (New York)
Trademark Law (New York), 2016–2019
U.S. News Best Lawyers "Best Law Firms" – Litigation – Intellectual Property (Chicago)
Litigation – Intellectual Property (Chicago), 2012–2019
National Law Journal, Elite Trial Lawyers 2015
Chambers USA – Intellectual Property (Illinois)
Intellectual Property (Illinois), 2006–2018

BTI Litigation Outlook 2018

IP Litigation Honor Roll

Trademarks Law Firm of the Year by Lawyer Monthly

2012

Managing Intellectual Property IP Handbook - Trade Mark Contentious (United States)

(United States), 2014

Managing IP North America Awards 2016

Trademark Contentious – Midwest
U.S. News Best Lawyers "Best Law Firms" – Litigation – Intellectual Property (National)
Litigation – Intellectual Property (National), 2012–2019

World Trademark Review 1000 – The World's Leading Trademark Professionals (National)

2017–2018

Managing Intellectual Property Annual Awards – Trademark Contentious (Midwest Region)

2017

World Trademark Review 1000 – The World's Leading Trademark Professionals (Chicago)

2017–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (Washington, DC)

2017–2018
Legal 500 US – Trademarks: Litigation
Intellectual Property – Trademarks: Litigation, 2006–2018

Managing Intellectual Property IP Handbook

"Highly Recommended" firm for intellectual property in Illinois, 2013–2015

World Trademark Review 1000 – The World's Leading Trademark Professionals (New York)

2017–2018
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Recognition

Managing Intellectual Property IP Stars – Trademark Contentious (United States)

2017
Trademark Law (National), 2016–2019

Managing Intellectual Property IP Stars – Trademark Prosecution (United States)

2017
Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC), 2016

Managing Intellectual Property IP Handbook - Trade Mark Prosecution (United States)

(United States), 2014
Trademark Law (New York), 2016–2019
Litigation – Intellectual Property (Chicago), 2012–2019
Intellectual Property (Illinois), 2006–2018

BTI Litigation Outlook 2018

IP Litigation Honor Roll

Trademarks Law Firm of the Year by Lawyer Monthly

2012

Managing Intellectual Property IP Handbook - Trade Mark Contentious (United States)

(United States), 2014

Managing IP North America Awards 2016

Trademark Contentious – Midwest
Litigation – Intellectual Property (National), 2012–2019

World Trademark Review 1000 – The World's Leading Trademark Professionals (National)

2017–2018

Managing Intellectual Property Annual Awards – Trademark Contentious (Midwest Region)

2017

World Trademark Review 1000 – The World's Leading Trademark Professionals (Chicago)

2017–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (Washington, DC)

2017–2018
Intellectual Property – Trademarks: Litigation, 2006–2018

Managing Intellectual Property IP Handbook

"Highly Recommended" firm for intellectual property in Illinois, 2013–2015

World Trademark Review 1000 – The World's Leading Trademark Professionals (New York)

2017–2018

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OUR CLIENTS SAY...

"Katten Muchin Rosenman has creative solutions for all of our issues. They are proactive so there are never any unpleasant surprises."

U.S. News – Best Lawyers® "Best Law Firms" 2016
(Trademark Law)

Screen Reader Content

Our Clients Say: "Katten Muchin Rosenman has creative solutions for all of our issues. They are proactive so there are never any unpleasant surprises."

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