B. Brett Heavner

Partner

Brett Heavner has a diverse practice that includes all aspects of trademark and unfair competition law, with a particular emphasis on trademark infringement, counterfeiting, and false advertising litigation. His range of clients includes pharmaceutical companies, medical device manufacturers, banking and financial services institutions, major trade associations, food product companies, petroleum exploration and refining companies, and governmental agencies and institutions. Through his extensive work with safety and quality testing organizations, Mr. Heavner has developed particular experience in the field of certification marks.

Having significant experience in all aspects of domestic and foreign trademark protection, Mr. Heavner assists his clients in developing effective worldwide strategies for establishing and enforcing their trademark rights. Mr. Heavner regularly counsels clients on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs. In addition to handling trademark matters in U.S. District Court, Mr. Heavner regularly handles cancellation and opposition proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, as well as appeal proceedings before the U.S. Court of Appeals for the Federal Circuit. He has a strong background in international law and has served as the American Intellectual Property Law Association (AIPLA) representative at the World Intellectual Property Organization (WIPO) Standing Committee on Trademark Law and has served on the International Trademark Association’s Treaty Analysis Task Force.

Highlights

• Ace Antenna v. Hoffman (Fed. Cir.). Successfully argued to affirm the cancellation of appellant’s registration and to reject appellant’s attempt to tack use of earlier mark on to priority date of the registered mark.
• Obtained and executed ex parte searches and seizures of counterfeit goods and copyright infringements in cases involving counterfeit pharmaceuticals, counterfeit pipe couplings, and materials illegally copied through computer hacking.
• Heroes, Inc. v. Boomer Esiason Heroes Foundation (D.D.C.). Argued and obtained federal court’s summary judgment dismissal of counterclaims for cancellation of client’s registration based on mark’s alleged genericness and mark’s alleged false suggestion of a connection to the U.S. government.
• H & H Industries, Inc. v. LTG Ltd. (TTAB). Took witness testimony, cross-examined hostile witnesses, and coordinated TTAB briefing in successful cancellation of registration of single color as a trademark.
• Pro bono representation includes coordinating world-wide trademark registration and copyright protection program for Finding Species, a
  non-profit organization that promotes protection of biodiversity through production of field guides, educational exhibits, and conservation campaigns.
• Featured speaker at trademark law seminars for the Patent and Trademark Institute of Canada, the United Kingdom Intellectual Property Administrators Group (IPAG), and Licensing Executive Society (LES) Chinese Taipei.

Professional Recognition

• Ranked among top D.C. trademark lawyers for contentious work by World Trademark Review 1000, 2011.

Professional Activities

• International Trademark Association (Brand Name Education Foundation Committee, 1997-1998)
• AIPLA (Planning Committee, Spring 2009 Meeting; Nominating Committee 2008; chairman, Trademark Treaties and International Law Committee 2007-2009; chairman, Trademark Litigation Committee, 2003-2004; subcommittee chairman, Annual Trademark Case Report, 1998-2002; editor, Trademark Practice Committee Newsletter, 1999)

Select Publications

• "Taking Your Trademark from China to the United States via Madrid," China IP News, August 10, 2011
• "Bad Neighborhoods of Madrid: Problems Facing Madrid Applicants in the United States," Bloomberg Law Reports, May 9, 2011.
• Coauthor. "Cleared for Knock-Off: Counterfeiting at 30,000 feet," BlueSky Business Aviation News, Dec. 9, 2010.
• Coauthor. "The Top 10 Mistakes of Foreign Applicants in U.S. Trademark Registration Practice and How to Avoid Them," Mitteilungen der deutschen Patentanwälte, Dec. 2010.
• Coauthor. "A New Guide for the Journey to Drug Name Approval," Drug Discovery & Development, Oct. 18, 2010.
• "'Use in Commerce' Problems in U.S. Trademark Cases," Law360, June 14, 2010.
• "Lost in Translation," Trademark World, April 2010.
• Coauthor. "World-wide Certification-Mark Registration A Certifiable Nightmare," Bloomberg Law Reports, Dec. 14, 2009.
• Coauthor. ""iPhone" or "i-phone"? Protection for Famous Marks in China," Managing Intellectual Property Chinese Edition, Sept. 2009.
• Coauthor. "Teaching Foreign Companies the Language of U.S. Trademark Licensing," Lexis Nexis China Legal Review, Oct. 19, 2008.