Douglas A. Rettew

Partner

Douglas Rettew chairs the firm's trademark and copyright group. He focuses his practice on trademark, false advertising, and unfair competition litigation and disputes. He has litigated cases involving a broad range of issues, including traditional trademarks, trade dress, design patents, false advertising, product disparagement, unfair competition, and domain names. Representative clients include Under Armour, Bridgestone, the NFL Players Association, Capital One, Subaru, RIM (BlackBerry), the Association of Tennis Professionals (ATP), and PNC Bank. In addition to litigation, Mr. Rettew is involved in trademark and copyright prosecution and licensing.

Mr. Rettew has first-chair trial and appellate experience, having authored briefs for various cases and argued before the U.S. Courts of Appeals for the Federal, Fourth, and Eighth Circuits. He has also litigated many oppositions, cancellations, and ex parte appeals before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office. Mr. Rettew has significant experience in obtaining (and defeating) temporary restraining orders (TROs) and preliminary injunctions, including those involving counterfeiting and ex parte seizures.

Highlights

• Bridgestone v. Federal (Fed. Cir.). Obtained decision reversing the TTAB and holding that the mark MILANZA conflicts with Bridgestone's POTENZA and TURANZA tire marks.
• Gateway, Inc. v. Companion Products (D.S.D., 8th Cir.). After a full trial, 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 trade dress rights. Obtained affirmance on appeal before the Eighth Circuit.
• Andrew Luck v. Leaf Trading Cards (Tex. St. Ct.). Represented NFL first-round draft pick Andrew Luck in a case involving publicity rights in "rookie" football trading cards, which was resolved favorably.
• Rawlings v. Under Armour (D. Wash.). Defeated demand for a preliminary injunction on a design-patent claim that would have prohibited Under Armour's sale of its new batting helmet line for two years.
• Chef'n v. Trudeau (D. Wash). Defeated demand for preliminary injunction and obtained victory on summary judgment that Trudeau's silicon steamer did not infringe Chef'n's design patent.
• Nichia v. Seoul Semiconductor (C.D. Cal.). Obtained victory on summary judgment that Seoul Semiconductor's press statements regarding a design-patent litigation did not constitute false advertising.
• Capital One Financial Corp. v. Capital Financial, Inc. (M.D. Fla.). Obtained a preliminary injunction for Capital One against use of certain marks and names in the solicitation and marketing of limited-merchandise credit cards.
• Games Workshop v. Brian Beale (W.D. Mo.). Obtained an ex parte seizure order and a TRO against the sale of counterfeit gaming miniatures, sold primarily on eBay. Subsequently obtained sanctions and summary judgment on liability and an award of attorneys' fees and costs.
• Involved in a series of nine lawsuits in five states over counterfeit and/or gray-market prescription human-growth hormones, resulting 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.
• KFC v. KFClolitas.com/Washington Post v. Khoshnood (E.D. Va.). Obtained 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.
• In re the American Fertility Society (Fed. Cir.). Obtained decision reversing the TTAB's refusal to register the mark THE AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on genericness grounds. 

Professional Recognition

• Recognized by International Law Office (ILO) and Lexology's Client Choice Awards for excellent client service in the area of Trademarks, 2013.
• Ranked among top D.C. trademark lawyers for contentious and non-contentious work by World Trademark Review 1000, 2012-2013.
• Ranked among top U.S. trademark lawyers in Legal Media Group's Guide to the World's Leading Trademark Law Practitioners, 2006, 2008, 2010, 2012.
• Recognized by The Legal 500 U.S. for trademark litigation work, 2007-2012.

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. "Offbeat Page in Branding Playbook," The National Law Journal, Oct. 22, 2012.
• 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, Aug. 1998.
• "Courts Order Internet 'Pirate' to Walk the Plank," Intellectual Property Counselor, June 1997.