Intellectual Property

Trademark & Trade Dress Litigation – TTAB Proceedings – ITC 337 Proceedings

We have represented the world’s most famous brand owners, as well as small businesses and entrepreneurs, in successfully enforcing, defending and licensing their invaluable trademark and trade dress rights. RED BULL, HARLEYDAVIDSON, BARBIE, HOT WHEELS, K-SWISS, SCRABBLE, UNO, PRUDENTIAL, TARZAN, NIKE, THREE CARD POKER, LET IT RIDE and AIR JORDAN are among the trademarks and trade dress we have enforced, covering business and product names and a wide range of designs for products, packaging and real property. We also regularly defend clients accused of infringing the trademark rights of others. Our practice encompasses matters arising under the federal Lanham Act, state infringement and anti-dilution statutes, false and deceptive advertising laws, and other consumer protection and unfair competition laws. We also prosecute and defend office actions and trials before the Trademark Trial and Appeals Board of the United States Patent and Trademark Office.

Representative Trademark and Trade Dress Matters:

  • Won summary judgment of no willfulness for use of the trademarks Razor LED and Razor Thin by client, Defendant VIZIO, with its line of flat-panel televisions. As Plaintiff could not show VIZIO selected the marks willfully, to trade off the value of Plaintiff’s “Razor” and “Razr” marks, Plaintiff was barred from seeking disgorgement of VIZIO’s substantial profits. The case settled a week before trial with no payment by VIZIO and instead, Plaintiff buying VIZIO’s Razor LED and Razor Thin marks.
  • Won victory for VIZIO before the Federal Circuit Court of Appeals in “Vexatious” IP Case regarding attorneys’ fees.
  • Won a directed verdict for defendant Mattel, at the close of the plaintiff’s case, in a trademark infringement trial involving Mattel’s Pearl Beach BARBIE doll line, and won the appeal to the Ninth Circuit.
  • Achieved a substantial payment to plaintiff K-Swiss, as well as a consent decree and worldwide permanent injunction, on the eve of a five-week jury trial against Payless ShoeSource for multiple counts of infringement of K-Swiss’ five-stripe and toe box trademarks and Classic trade dress.
  • Won a jury verdict of several million dollars, a permanent injunction and attorneys’ fees for plaintiff Mattel after a jury trial against a maker of toy cars who infringed Mattel’s HOT WHEELS trade dress.
  • Won a defense victory for defendant Nike in its landmark trademark case against Adidas over Nike’s right to use two stripes on athletic apparel; Adidas filed a broad “covenant not to sue” releasing Nike from its trademark infringement claims and committing not to sue Nike over any two-striped athletic apparel or shoes throughout the United States.
  • Achieved a permanent injunction and damages for Red Bull against the maker and distributor of Arctic Bull energy drinks, in a dispute over use of a mark confusingly similar to the RED BULL mark and trade dress.
  • Achieved a permanent injunction and damages for SHFL entertainment, against a distributor of games infringing SHFL’s THREE CARD POKER, CASINO WAR and PAIR PLUS trademarks.
  • Won affirmance by the Ninth Circuit of defense verdict in favor of Mattel in an appeal from a trademark trial involving reverse confusion.