B. Brett Heavner

Partner

Brett Heavner's practice includes all aspects of trademark and unfair competition law, with a particular emphasis on trademark infringement, counterfeiting, and false advertising litigation. His clients include pharmaceutical companies, medical device manufacturers, banking and financial services institutions, major trade associations, food product companies, and petroleum exploration and refining companies. Mr. Heavner also handles intellectual property issues, including protecting certification marks, for safety and quality testing organizations.

Having significant experience in all aspects of domestic and foreign trademark protection, Mr. Heavner assists clients in developing effective worldwide strategies for establishing and enforcing their trademark rights. He regularly counsels clients on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs. He handles trademark matters in U.S. district courts; cancellation and opposition proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office; and appeal proceedings before the U.S. Court of Appeals for the Federal Circuit.

Highlights

• American Petroleum Institute v. Tailor Made Oil LLC (D. Ind.). Obtained preliminary injunction, permanent injunction, and consent judgment, against manufacturer of engine oils bearing counterfeit copies of client's certification marks and false claims to meet the client's quality standards.
• OneWest Bank F.S.B. v. IndyMac Home Savings LLC (S.D. Fla.). Represented banking client against a real estate company's use of name of client's mortgage servicing division to mislead the public in to believing it was affiliated with the bank.
• In re 1782 Application of American Petroleum Institute (N.D. Cal.). Obtained ex parte order allowing client to seek third-party discovery of Google, PayPal, and other internet service providers to support litigation in China.
• Nimco Schoenbedrijven B.V. v. Spring Footwear (D. Ga.). Represented shoe maker who had discovered counterfeit copies of its unique shoe sole being displayed by a competitor at a footwear trade show.
• 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.
• OneWest Bank F.S.B. v. OneWest Mortgage Inc. (D. Kan.). Obtained preliminary injunction, permanent injunction, and consent judgment against client's former employees, who set up a mortgage brokerage business which they attempted to pass off as related to client's business using a nearly identical name.
• Heroes, Inc. v. Boomer Esiason Heroes Foundation (D.D.C.). Argued and obtained 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.
• Pro bono representation includes coordinating world-wide trademark registration and copyright protection program for Finding Species.
• Featured speaker at trademark law seminars for the Danish Patent and Trademark Office, FDANews, Patent and Trademark Institute of Canada, the United Kingdom Intellectual Property Administrators Group, and Licensing Executive Society Chinese Taipei.

Professional Recognition

• Ranked in World Trademark Review 1000 among top D.C. trademark lawyers for non-contentious work, 2012-2013, and contentious work, 2011-2013.
• Recognized by The Legal 500 U.S. as one of the leading lawyers in non-contentious trademark work, 2011-2012.

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)

Select Publications

• "Running Like Clockwork: Certification Mark Best Practices After the Swiss Watch International Case," Intellectual Property Today, Feb. 2013.  
• "Trademark Aesthetic Functionality: A Zombie Apocalypse?" BNA's Patent, Trademark & Copyright Journal, Dec. 7, 2012.
• "Serving Two Masters: U.S. Pharmaceutical Marketing Under FDA and Lantham Act Rules," pharmaphorum, Nov. 8, 2012.
• "Judging a Pill by its Cover," Pharmaceutical Executive, March 2012.
• "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.