Experience

Trademark Litigation and Trials

About

Seasoned litigators to protect your brand

Our counseling services often begin at a trademark’s inception with proactive advice during the selection and prosecution process to help avoid or minimize the chances of litigation. But when problems arise and valuable trademark rights are at stake or an accusation has been made, we believe it pays to have seasoned attorneys on your side. Representing both plaintiffs and defendants, our attorneys have decades of experience handling cases that span numerous industries and implicate all types of trademark rights. We regularly appear in courts and tribunals that adjudicate trademark cases.

Our vast litigation experience makes our attorneys well versed in the best ways to approach cases, whether large or small, complex or straightforward. We assess the potential risks and rewards and provide creative solutions for clients of all sizes.

Infringement and Dilution

Our litigation practice covers all types of trademark infringement and dilution cases involving trademarks, service marks, trade dress, product configuration, trade names, domain names, letters, numbers, colors, and telephone numbers. We have an impressive track record of favorably resolving disputes for our clients, whether by choosing a forum that gives clients the best chance to win on the law, filing a motion to dismiss, obtaining an early temporary restraining order or preliminary injunction, positioning a case for settlement, moving for summary judgment, or taking the case to trial.

One of our strengths is the use of experts to enhance our clients’ legal positions. For many years, we have worked with numerous consumer survey experts on a wide range of issues in trademark litigation, including likelihood of confusion, likelihood of dilution, genericness, secondary meaning, and fame. We also make strategic use of other experts in areas such as linguistics, marketing, consumer psychology, industry practices, and damages.

Contacts

Danny M. Awdeh: Partner; Washington, DC; +1 202 408 4353; Email

Virginia L. Carron: Partner; Atlanta, GA; +1 404 653 6452; Email

B. Brett Heavner: Partner; Washington, DC; +1 202 408 4073; Email

Naresh Kilaru: Partner; Washington, DC; +1 202 408 4236; Email

Douglas A. Rettew: Partner; Washington, DC; +1 202 408 4161; Email

Morgan E. Smith: Partner; Palo Alto, CA; +1 650 849 6665; Email

Mark Sommers: Partner; Washington, DC; +1 202 408 4064; Email

Danny M. Awdeh: Partner; Washington, DC; +1 202 408 4353; Email

Virginia L. Carron: Partner; Atlanta, GA; +1 404 653 6452; Email

B. Brett Heavner: Partner; Washington, DC; +1 202 408 4073; Email

Naresh Kilaru: Partner; Washington, DC; +1 202 408 4236; Email

Douglas A. Rettew: Partner; Washington, DC; +1 202 408 4161; Email

Morgan E. Smith: Partner; Palo Alto, CA; +1 650 849 6665; Email

Mark Sommers: Partner; Washington, DC; +1 202 408 4064; Email

Everyone in this practice

Experience

Resolved litigation spanning three continents faced by video game company by negotiating a global settlement.

Argued on appeal at the Fourth Circuit that a trademark application for the design of Timberland’s classic 6-inch “Icon” boot should not have been refused by the Trademark Trial and Appeal Board (TTAB). The appeal is pending.

23-1150, 4th Cir.

After a four-day trial, secured a jury ruling for Under Armour that Armorina’s use of the ARMORINA mark constitutes trademark infringement, unfair competition, and trademark dilution.

1:19-cv-02417, D. Md., Judge Boardman

Represented Maglula Ltd. in a one-of-a-kind district court litigation including patent, trademark, and copyright claims over Maglula’s assertions that Amazon sold counterfeit consumer products. After the Court issued an order (i) denying Amazon’s motion for summary judgment; (ii) finding “Amazon's attempts to avoid liability … will have minimal impact before a jury”; (iii) reflecting the Court’s belief that "not [] even the most persuasive presentation of Amazon’s evidence would make one iota of difference to a jury”; and (iv) requiring the parties to engage in mediation, the parties entered into an agreement and the case was dismissed.

1:19-cv-01570, E.D. Va., Judge O'Grady

Represented defendants Kettenbach GmbH and Co. KG, Kettenbach LP and Xinial Systems GmbH and Co. KG in a case brought against the Defendants’ dental products for patent and trademark infringement, as well as false advertising, in the United States. After Defendants obtained a final written decision from the U.S. Patent and Trademark Office (USPTO) finding all asserted patent claims in the case to be unpatentable, the parties settled.

2:21-cv-06613, E.D.N.Y., Judge Reyes

Secured summary judgment of noninfringement for the American Retirement Association’s (ARA) use of its CPFA credential name and program.

3:19-cv-00012, W.D. Va., Judge Moon