B. Brett Heavner

Partner

Brett Heavner’s practice covers all aspects of trademark and unfair competition law, with a particular focus on trademark infringement, counterfeiting, and false advertising litigation. His diverse range of clients include 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 a particular expertise 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 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 AIPLA representative at the WIPO Standing Committee on Trademark Law and has served on the International Trademark Association’s Treaty Analysis Task Force.

Highlights

• Successfully argued for the Federal Circuit 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. Ace Antenna v. Hoffman.
• 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.
• 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. Heroes, Inc. v. Boomer Esiason Heroes Foundation.
• Took witness testimony, cross-examined hostile witnesses, and coordinated TTAB briefing in successful cancellation of registration of single color as a trademark. H & H Industries, Inc. v. LTG Ltd.
• 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.

Professional Activities

• International Trademark Association (Brand Name Education Foundation Committee, 1997-1998)
• American Intellectual Property Law Association (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)
• 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

Select Publications

• "'Use in Commerce' Problems In U.S. Trademark Cases," Law 360, 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," MIP Chinese Edition, Sept. 2009.
• Coauthor. "Teaching Foreign Companies the Language of U.S. Trademark Licensing," Lexis Nexis China Legal Review, Oct. 19, 2008. 
• Coauthor. "Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities"," International Trademark Association, July/Aug. 2008. 
• Coauthor. "Cutting Works to Size," Copyright World, Feb. 2008.
• Coauthor. "Protecting Artists' Works by Using the Lanham Act," The National Law Journal, Dec. 3, 2007.
• "Drug Name Headaches: A Prescription for the Trade Mark Lawyer," Journal of Intellectual Property Law and Practice, Aug. 2007.
• Coauthor. "Small Potatoes: Resolving Conflicting Trademark Laws in the United States," Trademark World, Oct. 2004.
• Coauthor. "Absolutely Fair? U.S. Supreme Court Agrees to Hear Fair Use Case," Trademark World, April 2004.
• Coauthor. "E.C. Registration Offers Advantages to Owner," National Law Journal, May 20, 1996.