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Trademark

During a shoe industry trade show, our client Nimco discovered that Spring Footwear was promoting a new line of shoes that incorporated Nimco's proprietary outsole design. The counterfeit outsole was identical to Nimco's outsole in every way, not only encompassing the design elements, but also containing Nimco's logo and its patent numbers. To avoid future displays of the counterfeit outsole, Nimco asked us to immediately file suit against Spring Footwear. As a result of the litigation, Spring Footwear withdrew the counterfeit shoe from the market and commenced settlement discussions. The case has since settled in favorable terms for our client.
Finnegan has assisted with filing and prosecuting several thousand trademark applications in the United States and abroad for Caterpillar. We obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.
Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.
Finnegan has built a robust and dynamic IP portfolio for BrainScope Company, Inc. surrounding their brain injury assessment tool. As the company has grown and progressed from a concept through FDA clearance, the firm has worked closely with BrainScope to ensure their IP protection grew and reacted to their changing business goals. To protect all aspects of their device, Finnegan has provided strategic counseling and filed and prosecuted design patents, utility patents, and trademarks in the United States and a number of foreign countries.
The Eleventh Circuit Court of Appeals unanimously upheld a lower court judgment in favor of firm client X/Open Company Limited, a non-profit computer-industry consortium responsible for setting and managing the specifications for UNIX-based products. The decision caps a decade-long dispute which began as an administrative proceeding at the U.S. Patent and Trademark Office and later escalated into a federal court lawsuit when the plaintiff Wayne Gray alleged violations of federal and state RICO statutes, the Florida Communications Fraud Act, and the Lanham Act. The crux of plaintiff’s claim was that X/Open fraudulently asserted ownership in the UNIX mark against Gray in the earlier administrative action and then “conspired” with co-defendants Novell, Inc. and The SCO Group, Inc. to conceal the true ownership of that mark. The lower court had granted summary judgment in favor of X/Open, finding that various prior agreements and dealings between X/Open and the co-defendants indisputably established that X/Open owned the UNIX mark. The appeals court panel unequivocally affirmed, holding that Gray was simply “mistaken” about the legal effect of each agreement at issue. Because X/Open owned the UNIX mark and had lawfully asserted its rights in that mark against Gray, the Court held that all of Gray’s claims must fail.
Finnegan successfully overturned a ruling against two of Bridgestone’s top-selling tire brands POTENZA and TURANZA. Bridgestone appealed a TTAB decision dismissing its opposition against Federal Corporation’s application to register the mark MILANZA for tires. In that decision, the TTAB refused to find Bridgestone’s POTENZA and TURANZA marks commercially strong because they frequently appear with the BRIDGESTONE house mark. On appeal, the Federal Circuit issued a unanimous precedential decision reversing the TTAB and finding that MILANZA is likely to be confused with POTENZA and TURANZA based on, among other things, the independent strength achieved by the POTENZA and TURANZA marks through massive sales and advertising and the similarities between POTENZA, TURANZA, and MILANZA. The Federal Circuit also held that the simultaneous use of BRIDGESTONE with POTENZA and TURANZA does not denigrate the fame and strength of those product marks.
Finnegan handles ATP’s worldwide trademark portfolio and ensures that its marks and logos are properly protected in the various jurisdictions where its tournaments are hosted, publicized, and broadcasted. We also handle ATP’s worldwide enforcement efforts and have opposed trademark applications and uses of ATP-formative marks around the world. Recently, we filed a U.S. opposition before the Trademark Trial and Appeal Board (TTAB) against an application for the mark ATPI for entertainment and travel services (including those related to sports). We have also handled “ambush advertising” issues for ATP, including during the Barclays ATP World Tour Finals in London.
After purchasing the assets of a bank that was being dissolved by the FDIC, our client commenced the process of re-branding the bank as ONEWEST BANK. Between the time that the new brand had been chosen, announced, and  launched, former employees of the dissolved bank learned of the new brand and announced plans to launch their own mortgage brokerage company named ONEWEST MORTGAGE. To protect the client's new mark and to prevent the former employees from falsely claiming a relationship with the new bank, we filed suit and prepared to file a motion for a temporary restraining order. In response to our quick and forceful action, the defendants agreed to change their name and consented to an entry of a permanent injunction. The case has since settled in favorable terms for our client.
Finnegan represented Roshen, a major Ukrainian candy maker, in two actions initiated by Ferrero Rocher before the Trademark Trial and Appeal Board. Ferrero claimed that the ROSHEN logos were likely to infringe and dilute its ROCHER and FERRERO ROCHER marks. Roshen counterclaimed to cancel Ferrero’s registration for the mark ROCHER on the grounds of fraud and abandonment.  Finnegan worked closely with experts to design and conduct two nationwide consumer surveys: one on the likelihood of confusion and the other testing actual association of the ROSHEN logo with FERRERO ROCHER/ROCHER for dilution. The survey results showed a less than three percent chance of potential confusion or association.  In the middle of the TTAB proceedings, Ferrero filed a federal lawsuit against Roshen in a U.S. district court, asserting trademark infringement and unfair competition, but then withdrew the complaint.  At the end of the discovery period, Ferrero withdrew both its TTAB opposition and cancellation proceedings against Roshen with prejudice, resulting in a complete victory for Roshen.
Finnegan represented former Olympic silver medalist Matt Lindland and his Team Quest mixed martial arts (MMA) gyms in defense a claim of trademark infringement asserted by a former colleague and well-known UFC fighter, Dan Henderson, on the basis of Lindland’s use of the name Team Quest for MMA facilities and merchandise. Because of Henderson’s knowledge of Lindland’s long standing use of the name, the court held that any relief sought by Henderson with respect to Lindland’s use of the Team Quest name was barred by laches. In particular, the court rejected Henderson’s assertion of inevitable confusion even though both parties showcase fighters in internationally syndicated events and provide online sales of branded merchandise. On appeal, the 9th Circuit affirmed the lower court’s decision. Henderson filed a petition for rehearing en banc, which was been denied.
The Trademark Trial and Appeal Board granted judgment in favor of Italian design house Emilio Pucci (subsidiary of luxury goods conglomerate LVMH Moët Hennessy), finding that the defendant’s mark EMIDIO TUCCI for apparel and accessories is confusingly similar to the client’s long-used EMILIO PUCCI mark for fashion products. In response to submissions showing extensive use of EMILIO PUCCI since the early 1950s on a wide variety of clothing and other goods, the Board found that the mark had developed “substantial renown” in the field of apparel and accessories and become a “well-established brand.” Pucci defeated defendant’s argument that the expensive nature of Pucci’s products limited its renown to a small group of sophisticated purchasers (mostly women) by submitting extensive evidence showing broad public recognition of the mark.
Shortly after Subaru launched its newest vehicle named the “Crosstrek,” Trek Bicycle filed suit for trademark infringement, trademark dilution, and unfair competition of its “Trek” and numerous “Trek-formative” trademarks. Trek and Subaru had been long-standing partners in a professional mountain bike team. As such, in addition to its assertions of trademark infringement and dilution, Trek also alleged that Subaru’s “Crosstrek” name breached the existing sponsorship agreement. Trek moved for a preliminary injunction. Faced with the possibility of rebranding its new vehicle, Subaru turned to Finnegan. Finnegan put together a team that could handle expedited discovery (which was virtually case-comprehensive and involved extensive ESI document discovery and many fact and Rule 30(b)(6) depositions), working with experts to conduct likelihood of confusion and dilution surveys, calculate harm and damages, and study linguistic usage of the word “trek,” as well as obtaining and managing documents produced from dozens of third-party subpoenas. Finnegan uncovered facts leading to a counterclaim for genericness, abandonment, and fraud, as well important facts undermining the alleged strength of the Trek brand. Prior to the preliminary injunction hearing date, the case was favourably settled with Subaru’s ownership, use, and registration of its “Crosstrek” trademark unfettered and unchanged.
Following a two-week trial, a jury in the Northern District of California returned a unanimous defense verdict in favor of Finnegan clients ABBYY USA Software House, Inc. (of Milpitas, California), ABBYY Software, Ltd. (of Nicosia, Cyprus), ABBYY Production LLC (of Moscow, Russia), and Lexmark International, Inc. (of Lexington, Kentucky). Nuance Communications, Inc., had accused the ABBYY companies of infringing two patents directed to optical character recognition (OCR) software and a third patent directed to distributed document processing over a computer network. Nuance also sued Lexmark, a former Nuance customer, after it stopped using Nuance products and began using ABBYY’s OCR software. In addition, Nuance alleged that ABBYY infringed its trade dress for software packaging used for retail and internet sales. Prior to trial, Nuance sought more than $260 million in damages from the defendants. Nuance also alleged willful infringement and sought treble damages and attorneys’ fees from the defendants. The jury rejected Nuance’s infringement allegations in their entirety, returning a verdict of no infringement for all three Nuance patents and that Nuance’s alleged trade dress was not protectable. The Federal Circuit affirmed the district court’s judgment.
A leading healthcare company that develops wireless communication systems for managing patient care turns to Finnegan for counsel in many different facets of intellectual property. We study the patent landscape for wireless health management and assist the company in weaving its way through patents of its competitors; we obtain patent protection for its technology and trademark protection for its brands; and we provide guidance in drafting agreements for the transfer of technology.
In an international patent dispute involving courts in the United States and Switzerland, Finnegan guided client Swiss Post through a series of significant victories that ultimately led to a global settlement and favorable outcome to Swiss Post. In the U.S. case filed by RPost that involved patent infringement as well as trademark, false advertising, and Lanham act claims, Finnegan prepared and submitted a motion that resulted in all but the patent infringement claims being dismissed in the early stages of the case by the U.S. District Court for the Central District of California. We also worked in concert with counsel in Switzerland against concurrent injunction proceedings that were eventually dropped by RPost after the Swiss court's expert issued an invalidity opinion favorable to Swiss Post. The defense strategy also included filing a reexamination of the RPost patent with the U.S. Patent and Trademark Office, which ultimately rejected all 89 claims in the patent based on prior art identified in our request. In addition, the district court in California agreed to stay the suit until the Patent Office issued a reexamination certificate. When the case resumed, Finnegan obtained critical admissions during the depositions of RPost's officers and expert and subsequently filed a motion for summary judgment on behalf of Swiss Post.  A global settlement agreement between the parties was reached shortly thereafter.
Finnegan provided an array of IP services to SRA International, including counseling and patent and IP prosecution for its Automatic Dependent Surveillance-Broadcast (ADS-B), which is a cooperative surveillance technology in which an aircraft determines its position via satellite navigation and periodically broadcasts it, enabling it to be tracked. As part of the comprehensive IP strategy developed for SRA, Finnegan addressed both patents and trademarks for systems and devices associated with ADS-B and other SRA services.
Finnegan secured a victory for Juniper Networks in the Northern District of California against Florida-based Juniper Media in a trademark infringement and cybersquatting law suit. Defendant moved to dismiss (or to transfer) the trademark infringement and cybersquatting case claiming lack of jurisdiction on the grounds that its website was a passive website and the majority of the company’s operations were based in Florida. Judge William Alsup ruled in Juniper Networks’ favor finding that the Defendant’s repeated representations of being located in, or having connections with, Silicon Valley in its Twitter account, its Linked In page, and its CEO’s personal web pages was sufficient to demonstrate that it expressly aimed its activities at the Northern District. The investigative efforts of our inhouse investigation team were critical to building the case for personal jurisdiction. Following Juniper Networks’ win on the jurisdictional issue, the parties ultimately reached a settlement pursuant to which Juniper Media agreed to change its name, abandon its trademark applications, and transfer its domain names to the client. The case was ultimately dismissed following the defendant’s completion of all phase-out activities.
Finnegan represented Metropolitan Regional Information Systems, Inc. (“MRIS”) against antitrust counterclaims to MRIS’s claims for trademark and copyright infringement related to real estate listings. Finnegan successfully obtained summary judgment of the original antitrust counterclaims and the amended counterclaims.
Finnegan obtained urgent relief for AMC, which was fighting for its very existence. In addition to stopping Ameriquest's use of AMC, Finnegan negotiated the assignment of several of Ameriquest's federal trademark applications and registrations to AMC. AMC Mortgage Corporation is a small mortgage company founded over twenty years ago with the goal of becoming one of the country's most trustworthy and dependable mortgage companies. In contrast, Ameriquest Mortgage Company was the largest mortgage company in the country and had one of the worst reputations for customer service. Ameriquest began using the mark AMC for mortgages and related services. As a result, and due to Ameriquest's enormous size and pervasive use of the mark AMC, consumers began associating the mark with Ameriquest instead of AMC. AMC brought an action for trademark infringement, unfair competition, and cybersquatting against Ameriquest and its subsidiaries. Several months into the case, consumer criticism against Ameriquest grew and a potential sale to Citigroup was widely reported in the mainstream media. As a result, the potential harm to AMC's reputation increased exponentially and preliminary relief became urgent. AMC filed a preliminary injunction motion and, as a result, Ameriquest entered into a Court-approved judgment requiring Ameriquest to cease all use of AMC.
Two months after Finnegan client Under Armour launched its new connected fitness product under the HEALTHBOX/UA HEALTHBOX mark and name, Healthbox Global Partners, LLC (HGP), a consulting firm for healthcare organizations and startups operating under the HEALTHBOX mark and name, filed claims against Under Armour for trademark infringement, unfair competition, Delaware dilution, and Delaware deceptive trade practices. HGP also filed a motion for preliminary injunction, asking the court to immediately order Under Armour to stop using HEALTHBOX/UA HEALTHBOX and to recall all products from store shelves. Under Armour submitted rebuttal arguments and factual declarations, as well as expert testimony on Under Armour’s damages if forced to rebrand. After oral argument, the court ruled in favor of Under Armour on all key points. HGP dropped the suit against Under Armour shortly thereafter.
Petroleum Equipment Manufacturing Company (PEMCO) had unsuccessfully sought to have oil drilling and oil well equipment certified by Finnegan client American Petroleum Institute (API). Despite the fact that it was not certifi ed, PEMCO placed a counterfeit of the API certifi cation mark on its products. API objected and PEMCO agreed to cease using the counterfeit API certification mark. API later discovered that PEMCO was continuing to use the counterfeit API certification mark and retained Finnegan to sue PEMCO for trademark infringement, counterfeiting, and breach of contract. PEMCO agreed to a permanent injunction against further use of the API marks and payment of API’s costs. This result successfully stopped a counterfeiting operation that falsely passed off uncertified products as meeting API’s safety standards.
Starbucks is a household name with thousands of retail locations across the globe and a brand that extends well beyond coffee. Finnegan successfully opposed an application for the mark LESSBUCKS COFFEE for coffee, tea, and coffee- and tea-based beverages and related retail locations. We obtained a ruling that the STARBUCKS trademarks is a famous mark entitled to a broad scope of protection, and that the LESSBUCKS mark was likely to cause confusion.
Finnegan client, the American Petroleum Institute (API) entered into a settlement agreement—the latest in a series of enforcement actions to protect the integrity of API’s engine oil certification program that Finnegan has handled for API. The lawsuit alleged that Tailor Made Oil and its owners, William and Rebecca Selkirk, had falsely claimed their engine oil had been licensed by API to use the API engine oil quality certification marks that denote an oil meets the stringent API engine oil performance standards. The defendants admitted that they counterfeited API’s engine oil quality certification marks and made false performance claims for Tailor Made-branded engine oil sold to consumers and multiple branches of the military. As part of the settlement, Tailor Made Oil agreed to a 10-year ban on bottling or marketing any engine oil for diesel engines and for use in gasoline engines in cars, vans, trucks, and motorcycles. They also agreed to pay API’s costs in this litigation. API initially engaged Finnegan to obtain and test a variety falsely labeled engine oil products manufactured by a number of different businesses. After the test results confirmed that the engine oils did not meet API standards as claimed, Finnegan then launched a multipart, simultaneous attack on these businesses and individuals, filing counterfeiting, trademark infringement, and false advertising claims against twelve defendants in two different federal courts. Finnegan also coordinated efforts to apprise the U.S. Navy of the infringement because our investigation uncovered significant sales of falsely labeled products to naval and marine bases in the United States and abroad. Finnegan was able to obtain multiple preliminary and/or permanent injunctions against the defendants in all of these cases. Ultimately, each of the defendants capitulated and agreed to settlement.
When LG’s “Life’s Good” and “LG Life’s Good” corporate taglines were challenged, the company turned to Finnegan. On the eve of the trial, the plaintiff agreed to dismiss with prejudice all claims. The “Life’s Good” campaign and mark continue to run globally for a wide range of products.
Matrix Motor Company, Inc. alleged that the Toyota MATRIX passenger car infringed the MATRIX trademark allegedly used for race cars and related components and parts. The plaintiff sought an injunction and damages, but the judge granted our motion for summary judgment, finding no likelihood of confusion between the parties’ respective uses of the MATRIX mark.
We have represented Bauer Hockey for more than 15 years and have a long-standing institutional knowledge of Bauer and its industry. As part of our management of Bauer Hockey’s U.S. trademark portfolio, we handle searching and clearance, filing and prosecution, and post-registration maintenance. We also advise Bauer on product configurations and other non-traditional trademarks. Additionally, we handle contested matters for Bauer, including oppositions and cancellation actions before the Trademark Trial and Appeal Board (TTAB) and court actions.