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Finnegan client PNC uses the mark SPENDOLOGY for online budgeting tools, and a third-party company, Spendology LLC, simultaneously began “using” the identical mark for virtually identical services. In an attempt to take advantage of the near-simultaneous adoption of the mark, the plaintiff repeatedly tried to extort money from PNC, alleging common law trademark infringement. This case was initially litigated at the Trademark Trial and Appeal Board (TTAB), where PNC prevailed on a motion for summary judgment on the issue of trademark priority. The TTAB ruled in favor of PNC, finding PNC had prior rights in the mark. A suit was then filed in federal court seeking an injunction and $120 million in damages. Between the time when the TTAB made its ruling and the time when the plaintiff filed suit, the Supreme Court handed down its decision in the B&B Hardware case, which held that TTAB decisions on issues of likelihood of confusion could have issue preclusive effect. Given that decision, Finnegan filed a motion to dismiss the plaintiff’s claims on collateral estoppel grounds in view of the prior TTAB decision on the issue of “priority of use.” The presiding judge in the U.S. District Court for the District of Maryland ruled in favor of PNC in a complete victory on the motion to dismiss the plaintiff’s lawsuit. This was one of the first cases to apply the Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Industries, regarding the preclusive effect of TTAB decisions, and was the first to consider how that decision applies to issues other than likelihood of confusion. The case was appealed to the Fourth Circuit, where it was dismissed after briefing on a procedural ground, only to be reinstated and taken up on the merits. The Fourth Circuit squarely affirmed the district court ruling on the ground that the issue of priority decided by the TTAB was identical to the issue of priority presented to the district court. Finally, the plaintiff requested a writ of certiorari from the U.S. Supreme Court, which was denied.

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.

Andrx Pharmaceuticals, Inc. (“Andrx”) filed suit against Finnegan client Elan Corporation PLC, alleging that Elan violated the federal antitrust Sherman Act and various Florida antitrust statutes by entering into a settlement agreement in an Abbreviated New Drug Application (“ANDA”) patent infringement litigation that Elan brought against another company, and by initiating an ANDA litigation against Andrx relating to the same patent. Finnegan obtained judgment on the pleadings in Elan’s favor on all issues at the outset of the case. The U.S. Court of Appeals for the Eleventh Circuit affirmed the majority of the holdings, including that the Noerr-Pennington doctrine shielded Elan from Andrx’s patent misuse claims relating to Elan’s assertion of its patent against Andrx. The Eleventh Circuit remanded the settlement agreement holding for further proceedings. Andrx ultimately agreed to dismiss the claim.

Finnegan client Under Armor received a permanent injunction against Ass Armor LLC’s use of the mark ASS ARMOR for a snowboarding short. Seeking to enjoin such use, Under Armour raised claims for trademark infringement, trademark dilution, cybersquatting, and unfair competition. In addition to asserting rights in its UNDER ARMOUR mark, Under Armour asserted rights in the mark ARMOUR, as well as a family of other ARMOUR-formative marks. It also relied on a survey showing meaningful consumer confusion arising from the use of ASS ARMOR. Ass Armor aggressively defended the case and moved to cancel three of Under Armour’s trademark registrations for protective athletic gear. The case went to trial in the U.S. District Court for the Southern District of Florida where, after opening arguments and the start of testimony, Ass Armor approached Under Armour to settle. Ass Armor promptly agreed to (1) stop selling its product; (2) destroy the infringing inventory; (3) avoid using the mark ARMOR/ARMOUR in any way or manner, for any products; and (4) withdraw all of its claims against Under Armour’s registrations. Additionally, a consent judgment was entered and signed by the court providing that Under Armour’s UNDER ARMOUR, ARMOUR, and ARMOUR-formative marks are famous, and that defendant’s use of ASS ARMOR is infringing. 

We advised major industrial companies on how to address challenges to their profitable parts businesses that are under pressure from replacement and customized parts that may be 3D printed by customers and others, including developing patent claiming strategies and ways to adapt their business models.

Finnegan client FedEx was accused of patent infringement in two separate litigations in the Northern District of California, where IpVenture asserted two related patents directed to processes used in connection with tracking packages with the aid of a device called “SenseAware,” which enables users to track the location and certain conditions of related packages. On behalf of FedEx, Finnegan filed an inter partes reexamination on one patent, and an inter partes review (IPR) on the other at the U.S. Patent and Trademark Office (USPTO). The USPTO granted both petitions, and the Patent Trial and Appeal Board (PTAB) affirmed the rejection of all claims of the reexamined patent and invalidated all claims of the second patent during the IPR. The district court cases were stayed during the USPTO proceedings and during IpVenture’s appeal to the Federal Circuit, which affirmed both of the PTAB’s decisions.

Finnegan defended The Hillman Group against charges that it monopolized or attempted to monopolize in the key duplication marketplace. Finnegan negotiated a favorable settlement of the claims.

Finnegan represented the patent owner in infringement litigation against a former reseller of an additively manufactured product, which was making and selling infringing versions of the client’s products.

Finnegan has represented many healthcare companies in transactions that included strategic counseling on antitrust and patent misuse issues. For example, Finnegan counseled Applera in its strategic settlement with Roche concerning PCR technology.

Two federal courts recognized the fame of the FIRESTONE mark, given its century-long use, in suits filed by Bridgestone for trademark counterfeiting, trademark infringement, trademark dilution, unfair competition, and breach of contract against holdover licensees, related entities, and their owner who unlawfully used the FIRESTONE, FIRESTONE COMPLETE AUTO CARE, and BRIDGESTONE marks to offer automotive services in Houston, Texas. Bridgestone, represented by Finnegan, was granted summary judgment in both cases.

In the Southern District of Texas, the court granted summary judgment on all claims against one of the entities and its owner in his individual capacity. In the Middle District of Tennessee, the court granted Bridgestone’s motion for summary judgment on the trademark counterfeiting, trademark infringement, trademark dilution, and unfair competition claims. Both courts rejected defendants’ arguments that holdover licensees are exempt from the heightened penalties for counterfeiting, noting the split of authority on the issue. In the Sixth Circuit, a holdover licensee may not be liable for the heightened penalties available for counterfeiting if it continues to use a mark as originally authorized. This represents the minority view and other courts have rejected the holding. The defense thus did not apply in Texas, and the defendants in Tennessee could not rely on this precedent to shield them from liability because one defendant was never a party to any license with Bridgestone and the other was never licensed to use the FIRESTONE COMPLETE AUTO CARE mark as it did. Both courts held that defendants’ willful conduct—using Bridgestone’s exact federally registered FIRESTONE and FIRESTONE COMPLETE AUTO CARE marks—entitles Bridgestone to recover the enhanced remedies (to be determined at trial) available for counterfeiting.


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