B. Brett Heavner
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 (USPTO), and appeal proceedings before the U.S. Court of Appeals for the Federal Circuit.
- 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.
- Ranked in World Trademark Review 1000 among top D.C. trademark lawyers for non-contentious work, 2012-2017; and contentious work, 2011-2017.
- Recognized by The Legal 500 U.S. for copyright litigation, 2015; and for trademark prosecution and non-contentious work, 2011, 2012, 2016.
- 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)
- Regular contributor for Finnegan's trademark blog Incontestable®.
- Coauthor. "Doing Good Business in China," Trademarks & Brands Online, March 16, 2016.
- "Re-branding: Be Careful What You Wish For," Trademarks & Brands Online, April 17, 2015.
- Coauthor. "Preparing for Stricter Use Requirements of U.S. Trademark Law," Imp. & Exp. Magazine, April 2015.
- Coauthor. "Ending Xenophilia: Will Foreign Trademark Owners Be Required to Comply with Use Requirements of U.S. Trademark Law?" CIPA Journal, Dec. 2014.
- Coauthor. "Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio," ABA Section of Intellectual Property Law, 2014.
- Coauthor. "Closer Control: Social Media and Drugs," Trademarks & Brands Online, May 23, 2014.
- Coauthor. "How POM Wonderful Could Change the Landscape of False-Advertising Lawsuits," Westlaw Journal Intellectual Property, April 30, 2014.
- "The FDA's Guidance on Labels and Cartons: Yet Another Attack on Pharmaceutical Trade Dress?" pharmaphorum, Nov. 11, 2013.
- "Running Like Clockwork: Certification Mark Best Practices After the Swiss Watch International Case," Intellectual Property Today, Feb. 2013.