Partner
Mark provides a full range of services in the trademark, unfair competition, and false advertising arena, including litigation before the federal district courts, federal appellate courts, and Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO); strategic portfolio review and counseling; trademark and name clearance and prosecution; infringement analysis; empirical research and surveys; damages; intermediary liability; and rights of publicity.
Long ranked among the top trademark lawyers in the United States and around the world by The Legal 500 U.S., World Trademark Review 1000, World IP Review, and assorted others, Mark has handled a vast array of trademark, trade dress, product configuration, unfair competition, domain name, diversion, design, false advertising, and rights of publicity cases. WTR 1000 has ranked Mark regionally, nationally, and globally for his contributions to the fields of litigation and prosecution. Given his decades of experience, he has also gained a reputation for masterminding and implementing comprehensive strategies targeted at acquiring and enforcing core branding rights, while culling or aggregating bloated brand portfolios, resulting in substantial cost savings to clients.
In addition to representing the interests of top-tier U.S. brand owners, Mark also represents many European and Asian leading brand owners, where he has gained an appreciation of foreign companies' sensitivity to U.S. practice and procedure. He has authored numerous articles about trademarks and unfair competition. He frequently presents to both U.S. and international audiences and regularly provides press commentary on high-profile, newsworthy trademark and related cases, developments, and issues.
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
Articles
'Dewberry' Case May Raise Costs and Liability for US Corporates 'Dewberry' Case May Raise Costs and Liability for US Corporates
July 3, 2024
World Intellectual Property ReviewEvent
Taiwan IP Training Academy International Seminar: Trademark Layout and Litigation Attack and Defense Taiwan IP Training Academy International Seminar: Trademark Layout and Litigation Attack and Defense
November 17, 2023
Taipei
Articles
Court Decision in Hermès NFT Case Offers Brands Protection from Trademark Infringement Court Decision in Hermès NFT Case Offers Brands Protection from Trademark Infringement
April 3, 2023
Retail TouchpointsEvent
Around the World with Finnegan - Key Developments and Trends in IP Law Around the World with Finnegan - Key Developments and Trends in IP Law
March 15, 2023
Taipei
Event
IP Discussions – Trademark Depletion and Dilution IP Discussions – Trademark Depletion and Dilution
December 22, 2022
Webinar
Articles
A Brand New Era: Washington Redskins Become ‘Commanders’ A Brand New Era: Washington Redskins Become ‘Commanders’
February 3, 2022
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 Ranks at the Top of the Managing Intellectual Property IP Stars Rankings Finnegan Ranks at the Top of the Managing Intellectual Property IP Stars Rankings
June 28, 2024
Managing Intellectual PropertyAward/Ranking
Finnegan Ranked Top Tier in The Legal 500 2024 Rankings Finnegan Ranked Top Tier in The Legal 500 2024 Rankings
June 13, 2024
The Legal 500Commentary
One-year Hangover: Counsel Still Scratching Heads in JD Aftermath One-year Hangover: Counsel Still Scratching Heads in JD Aftermath
June 6, 2024
Managing Intellectual PropertyAnnouncement
Three Finnegan Partners Recognized as World Trademark Review Global Leaders Three Finnegan Partners Recognized as World Trademark Review Global Leaders
June 6, 2024
World Trademark ReviewAward/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
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