Douglas A. Rettew

Partner

Douglas Rettew chairs the firm’s trademark and copyright practice. He focuses his practice on trademark, false advertising, and unfair competition litigation and disputes. He has litigated cases 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. 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 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 (TROs) 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.

Highlights

• YKK Corporation v. Jungwoo Zipper Limited (C.D. Cal.). 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.
• Capital One Financial Corporation v. Capital Financial, Inc. (M.D. Fla.). 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.
• 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 summary judgment on liability and an award of attorneys’ fees and costs.
• Gazette Newspaper v. Capital-Gazettee Communications (D. Md.). Obtained decision after a trial that the mark GAZETTE, used with community names to identify local newspapers was famous and that defendant’s mark FREDRICK GAZETTE for a newspaper infringed and diluted the publisher’s rights.
• Gateway, Inc. v. Companion Products (D.S.D.). 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. Obtained an affirmance on appeal before the Eighth Circuit.
• 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 (E.D. Va.). 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.
• In re the American Fertility Society (Fed.Cir.). 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.

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. for trademark litigation work, 2007-2011.

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, Aug. 1998.
• "Courts Order Internet 'Pirate' to Walk the Plank," Intellectual Property Counselor, June 1997.
• "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.