Douglas A. Rettew

Partner

Douglas Rettew focuses his practice on trademark, false advertising, and unfair competition litigation and disputes. He has litigated cases in courts around the country involving a broad range of issues and subject matters, including traditional trademarks, trade dress, product configurations, false advertising, product disparagement, unfair competition, and domain names.

Mr. Rettew has first-chair trial and appellate experience. He has authored briefs for various cases and argued before the U.S. Courts of Appeals for the Fourth and Eighth Circuits. He has also litigated many oppositions, cancellations, and ex parte appeals before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office and has argued several cases before the Board. Mr. Rettew has significant experience in obtaining temporary restraining orders and preliminary injunctions, including those involving counterfeiting and ex parte seizures. He also frequently works with experts in designing surveys covering issues such as likelihood of confusion, genericness, secondary meaning, and false advertising, and he has successfully opposed surveys offered by adversaries.

In addition to litigation, Mr. Rettew is involved in prosecution and licensing, and he counsels clients on a variety of trademark, copyright, and unfair competition matters.

Highlights

• Serves as principal editor of Trade Dress: International Practice and Procedure of the International Trademark Association (INTA), 2010-present.
• After a full trial on the merits, obtained a decision that Gateway’s cow-spots trademark is strong and famous, and that the defendant’s black-and-white spotted plush novelty computer monitor wraps infringed Gateway’s trademark and trade dress rights. 2003 WL 23532885. Obtained an affirmance on appeal before the U.S. Court of Appeals for the Eighth Circuit. 384 F. 3d 503.
• Obtained a preliminary injunction for Capital One against use of the CAPITAL ONE mark and name and any confusingly similar marks and names in the solicitation and marketing of limited-merchandise credit cards; following an evidentiary hearing on a motion for contempt, obtained a modified injunction imposing added requirements on the defendant’s business activities, including that defendant must record all phone solicitations in their entirety. 2006 WL 1805866.
• Obtained an ex parte seizure order and a temporary restraining order against the sale of counterfeit gaming miniatures, sold primarily on the eBay online auction website. After an evidentiary hearing, later obtained injunctive relief and monetary sanctions against defendant. Subsequently obtained summary judgment on liability and an award of attorneys’ fees and costs. 2006 U.S. Dist. LEXIS 22525.
• Obtained summary judgment that plaintiff’s YKK mark for zippers is “afforded the widest ambit of protection from infringing uses” because it is “famous throughout the world,” and that defendant’s use of the name and mark YPP for zippers infringed plaintiff’s mark, even among sophisticated industry purchasers. 213 F. Supp. 2d 1195.
• Obtained summary judgment that defendant’s use of the name and mark WORLDQUEST for virtual prepaid telephone calling cards did not infringe plaintiff's QWEST name and mark for various communications products, including virtual calling cards.
• Obtained decision after a trial that the mark GAZETTE, used with local community names to identify community newspapers (e.g., BETHESDA GAZETTE), was famous and that defendant’s mark FREDRICK GAZETTE for a newspaper infringed and diluted the publisher’s rights. 934 F. Supp. 688.
• Involved in a series of nine lawsuits in Alabama, Arizona, Connecticut, Nevada, and Texas (Dallas and Houston) over counterfeit and/or gray-market prescription human-growth hormones. Work in these matters resulted in nine ex parte TROs and five ex parte seizure orders, which led to the seizure of more than 20,000 packages of counterfeit products.
• Obtained an ex parte temporary restraining orders for KFC and THE WASHINGTON POST against use of the domain names kfclolitas.com and washintonpost.com for pornographic websites.
• Obtained a decision from the Federal Circuit reversing the TTAB’s refusal to register the mark THE AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on the ground that the wording SOCIETY FOR REPRODUCTIVE MEDICINE was generic. 188 F.3d 1341.

Professional Recognition

• Ranked among top U.S. trademark lawyers in Legal Media Group's Guide to the World's Leading Trademark Law Practitioners, 2006, 2008, 2010.
• Recognized by The Legal 500 U.S. as one of the leading lawyers in trademark litigation and dispute resolution, 2007.
• Consistently listed in The International Who's Who of Trademark Lawyers and Who's Who Legal: USA—Trademarks since 2005.

Professional Activities

• International Trademark Association
• American Intellectual Property Law Association
• Federal Circuit Bar Association
• Bar Association of the District of Columbia
• American Bar Association

Select Publications

• Principal editor. Trade Dress: International Practice and Procedure: USA Section, International Trademark Association (INTA), 2010-present.
• Coauthor. "Why Trademark and Copyright Counsel Should Heed the Patent Precedent of the Supreme Court," Landslide, Nov./Dec. 2009.
• Coauthor. "A Review of Recent Trademark Decisions of the United States Court of Appeals for the Federal Circuit," American University Law Review.
• "New Federal Trademark Dilution Act Has Implications Both Offensive and Defensive for In-House Counsel," BNA's Corporate Counsel Weekly, 1996.
• "Dilution on the Information Superhighway," Corporate Counsel Magazine, June 1996.
• "What is 'Dilution' Under the New U.S. Federal Trademark Dilution Act?" European Intellectual Property Report, Nov. 1996.
• "Cleansing and Clarifying the Mark," Legal Times, Dec. 1996.
• "Courts Order Internet 'Pirate' to Walk the Plank," Intellectual Property Counselor, June 1997.