パートナー
商標、ドメイン名、商標の希釈化、不正競争、虚偽広告、サイバースクワッティング、偽造、及び関連する知財問題に特化した案件を手掛ける。
この業務分野の全局面を網羅しており、米国連邦裁判所及び米国特許庁(USPTO)商標審判部(TTAB)での訴訟及び控訴、戦略的カウンセリング、侵害及びクリアランスに関する鑑定、ポートフォリオ管理及び権利化手続き、実証研究、仲介者責任、損害賠償、等を扱う。
The Legal 500 U.S.誌及びWorld Trademark Review 1000誌において一流の商標弁護士として選出。これまで、商標、トレードドレス、製品構成、不正競争、ドメイン名、迂回販売、デザイン、虚偽広告に関する訴訟に幅広く携わっている。また、国内外を問わず、数多くの権利取得、権利行使に関する戦略構築を行う。
米国の一流ブランド所有者はもちろんのこと、ヨーロッパ及びアジアの一流ブランド所有者の代理人も務め、米国の商標実務及び手続に敏感な外国企業から評価を得ている。World IP Review (WIPR)誌では米国におけるWIPRの優秀商標弁護士として選出された。国内外で頻繁に講演を行い、商標、ドメイン名、トレードドレス、不正競争に関する執筆も多数。また、注目度が高くニュースで扱われる商標及び商標関連事件、又今後の進展や課題についてを数多くメディアで論じている。
LG Electronics MobileComm U.S.A., Inc. v. Xiaowen
3:16-cv-01162, S.D. Cal., Judges Sammartino, Stormes
Sony Group Corporation v. Neil A. Campbell
Opp. No. 91245851, TTAB, Judges Zervas, Lykos, Larkin
CFA Institute v. American Society of Pension Professionals & Actuaries et al.
3:19-cv-00012, W.D. Va., Judge Moon
Marilyn D. Mintz v. Subaru of America, Inc.
At the lower court, Finnegan prevailed on a Rule 12(b)(6) motion for client Subaru of America. In that suit, the plaintiff asserted trademark and copyright infringement, trademark dilution, and false advertising against Subaru’s annual “Share the Love” holiday-season campaign, which donates money from car purchases to various buyer-designated national and local charities. Subaru’s campaign uses a particular logo comprised of a heart on a hand, and various other “love”-themed designs.
The plaintiff sought enhanced damages, punitive damages over $20 million, and attorneys’ fees. Subaru’s motion to dismiss was based largely on the facial dissimilarities between the parties’ respective designs, which the U.S. District Court for the Northern District of California granted on all counts asserted in the complaint, without leave to further amend.
The plaintiff appealed to the Ninth Circuit, which affirmed the lower court’s decision after finding that the plaintiff did not plausibly allege any claim. The appeals court later denied plaintiff’s petition for rehearing. Consistent with the lower court’s opinion, the Ninth Circuit ruled that the marks at issue were so facially dissimilar that they could not plausibly create a likelihood of confusion, and affirmed the dismissal of the trademark dilution, copyright infringement, and false advertising claims for the same reasons, resulting in a complete win for Subaru.
16-16840, 9th Cir., Judges Lucero, Owens, Thomas
3:16-cv-03384, N.D. Cal., Judge Chesney
Ashe v. The PNC Financial Services Group, Inc.
15-2566, 4th Cir., Judges Keenan, King, Wilkinson
8:15-cv-00144, D. Md., Judge Grimm
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World Intellectual Property Review"Mark is a well-regarded litigator who performs brilliantly in multi-jurisdictional disputes and provides strong strategic advice."
World Trademark Review WTR 1000
"Mark Sommers is the perfect advisor as he knows about our business and, based on his great experience, provides advice and solutions – best in class."
The Legal 500 U.S.
"Mark Sommers is an outstanding attorney. We are confident that Mark always positions our cases to achieve the best result for the business."
The Legal 500 U.S.
"Mark Sommers is an exceptional advisor and litigator. He has provided numerous solid solutions and has an overview and experience as only few in the business."
The Legal 500 U.S.
"He [Chip Rettew] and Mark Sommers have been hailed as 'stellar lawyers. They are tenacious in representing their clients’ interests'. Of Sommers, another source adds that: 'He is a very practical, excellent lawyer with great litigation skills and is equally accomplished managing portfolios.'"
World Trademark Review WTR 1000
“‘Mark blends formidable legal skills with plain street-smarts. He is seasoned and comfortable in the court, and can distil down complicated issues and facts and then smoothly present them, so they are simply understood, reasoned and decided.’”
World Trademark Review WTR 1000
“Mark Sommers is actually one of the most dynamic and impressive trademark litigators I have ever worked with.”
Legal 500 United States
“Mark Sommers is a superlative lawyer, with superb legal know-how and an acute business sense; he is the perfect outside counsel. A battle-tested litigator, his skills are mature and he operates with surgical precision. Mark understands how to position a case in the most effective way, he is comfortable in court and has magnificent intuition. When it comes to prosecution, he has the innate ability to manage strategic IP portfolio issues considering long-term goals. Another bonus for clients is that Mark is happy to give off-the-cuff, common-sense answers to complex legal questions when they crop up.”
World Trademark Review WTR 1000
“Mark Sommers is a nationally recognised litigator and a lightning rod for praise, as one client states: ‘Simply put, I can think of no other attorney more creative, efficient and effective or for whom I have greater respect.’”
World Trademark Review WTR 1000
“He is the complete package: a convincing advocate, a masterful strategist and a real-world counsellor who adds tremendous value” and “exceeds even the loftiest expectations.”
World Trademark Review WTR 1000
“Mark Sommers ‘brings to the table huge amounts of technical knowledge, industry experience, business and common sense, and practical advice.’”
Legal 500 United States
“Fellow courtroom sharpshooter Mark Sommers is ‘outstanding in all contentious matters.’ ‘With his incredible experience, he understands the nuances of complex negotiations and thinks outside the box.’”
World Trademark Review WTR 1000
“…Mark Sommers has ‘incredible litigation experience and out-of-the-box thinking capacity.’”
World Trademark Review WTR 1000
“Mark Sommers creates and enforces sound strategies for his clients’ marques, which include valuable gaming, entertainment, and software brands.”
World Trademark Review WTR 1000
“Recommended lawyers include the...‘experienced and pragmatic’ Mark Sommers…”
Legal 500 United States
“Sommers registers, maintains and defends rights with equal aplomb and is adept at helping European and Asian companies to navigate the US legal system.”
World Trademark Review WTR 1000
“Mark Sommers has impressed many foreign brand owners with his resourcefulness.”
World Trademark Review WTR 1000
“[The team] includes the ‘outstanding’ Mark Sommers, who ‘really understands the strategic importance of IP.’”
Legal 500 United States
“Mark Sommers is an ‘exceptionally good attorney.'”
Legal 500 United States
“‘Mark is responsive, dedicated, reliable, intuitive, proactive, practical and gifted. He blends sophisticated legal skills with plain street smarts and keeps his eye sharply trained on key long-term goals and overall business visions.’”
World Trademark Review WTR 1000
"Mark is a well-regarded litigator who performs brilliantly in multi-jurisdictional disputes and provides strong strategic advice."
World Trademark Review WTR 1000
"Mark Sommers is the perfect advisor as he knows about our business and, based on his great experience, provides advice and solutions – best in class."
The Legal 500 U.S.
"Mark Sommers is an outstanding attorney. We are confident that Mark always positions our cases to achieve the best result for the business."
The Legal 500 U.S.
"Mark Sommers is an exceptional advisor and litigator. He has provided numerous solid solutions and has an overview and experience as only few in the business."
The Legal 500 U.S.
"He [Chip Rettew] and Mark Sommers have been hailed as 'stellar lawyers. They are tenacious in representing their clients’ interests'. Of Sommers, another source adds that: 'He is a very practical, excellent lawyer with great litigation skills and is equally accomplished managing portfolios.'"
World Trademark Review WTR 1000
“‘Mark blends formidable legal skills with plain street-smarts. He is seasoned and comfortable in the court, and can distil down complicated issues and facts and then smoothly present them, so they are simply understood, reasoned and decided.’”
World Trademark Review WTR 1000
“Mark Sommers is actually one of the most dynamic and impressive trademark litigators I have ever worked with.”
Legal 500 United States
“Mark Sommers is a superlative lawyer, with superb legal know-how and an acute business sense; he is the perfect outside counsel. A battle-tested litigator, his skills are mature and he operates with surgical precision. Mark understands how to position a case in the most effective way, he is comfortable in court and has magnificent intuition. When it comes to prosecution, he has the innate ability to manage strategic IP portfolio issues considering long-term goals. Another bonus for clients is that Mark is happy to give off-the-cuff, common-sense answers to complex legal questions when they crop up.”
World Trademark Review WTR 1000
“Mark Sommers is a nationally recognised litigator and a lightning rod for praise, as one client states: ‘Simply put, I can think of no other attorney more creative, efficient and effective or for whom I have greater respect.’”
World Trademark Review WTR 1000
“He is the complete package: a convincing advocate, a masterful strategist and a real-world counsellor who adds tremendous value” and “exceeds even the loftiest expectations.”
World Trademark Review WTR 1000
“Mark Sommers ‘brings to the table huge amounts of technical knowledge, industry experience, business and common sense, and practical advice.’”
Legal 500 United States
“Fellow courtroom sharpshooter Mark Sommers is ‘outstanding in all contentious matters.’ ‘With his incredible experience, he understands the nuances of complex negotiations and thinks outside the box.’”
World Trademark Review WTR 1000
“…Mark Sommers has ‘incredible litigation experience and out-of-the-box thinking capacity.’”
World Trademark Review WTR 1000
“Mark Sommers creates and enforces sound strategies for his clients’ marques, which include valuable gaming, entertainment, and software brands.”
World Trademark Review WTR 1000
“Recommended lawyers include the...‘experienced and pragmatic’ Mark Sommers…”
Legal 500 United States
“Sommers registers, maintains and defends rights with equal aplomb and is adept at helping European and Asian companies to navigate the US legal system.”
World Trademark Review WTR 1000
“Mark Sommers has impressed many foreign brand owners with his resourcefulness.”
World Trademark Review WTR 1000
“[The team] includes the ‘outstanding’ Mark Sommers, who ‘really understands the strategic importance of IP.’”
Legal 500 United States
“Mark Sommers is an ‘exceptionally good attorney.'”
Legal 500 United States
“‘Mark is responsive, dedicated, reliable, intuitive, proactive, practical and gifted. He blends sophisticated legal skills with plain street smarts and keeps his eye sharply trained on key long-term goals and overall business visions.’”
World Trademark Review WTR 1000
Award/Ranking
Finnegan Tops the 2024 World Trademark Review 1000, Receiving New Regional Accolade Finnegan Tops the 2024 World Trademark Review 1000, Receiving New Regional Accolade
February 13, 2024
World Trademark ReviewCommentary
Can Brain Scans Build on Consumer Surveys in IP Disputes? Can Brain Scans Build on Consumer Surveys in IP Disputes?
January 30, 2024
Law360Commentary
The Biggest Trademark Rulings of 2023 The Biggest Trademark Rulings of 2023
December 15, 2023
Law360Commentary
Two US Trademark Cases Highlight Rogers Test Limits Two US Trademark Cases Highlight Rogers Test Limits
July 7, 2023
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