Counterfeiting/Gray Market Goods

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.

Obtained a temporary restraining order and asset freeze order against entities selling counterfeit apparel products and secured an order for the seizure of counterfeit product from multiple locations in California and New York.

Obtained a temporary restraining order and asset freeze order against 22 defendants accused of selling counterfeit mobile headsets.  Secured an award of over $168 million in damages and obtained default judgment against 17 defendants for trademark counterfeiting, trademark infringement, trademark dilution, false advertising, unfair competition, and cybersquatting.  Obtained an award of over $380,000 in attorneys' fees.

Obtained consent judgment and favorable settlement amount against direct mail advertiser who created counterfeit of client’s proprietary envelope designs.

Finnegan has successfully defended API and its engine oil certification program in numerous district court cases and before the TTAB. In one instance, we launched a multipart, simultaneous attack on twelve defendants, filing counterfeiting, trademark infringement, and false advertising claims in two different federal courts. We obtained multiple preliminary and permanent injunctions with each defendant agreeing to settlement. In another case, defendants falsely claimed their engine oil was licensed by API to use the API engine oil quality certification marks, which denotes an oil meets the stringent API engine oil performance standards. Ultimately, the defendants admitted to counterfeiting API’s engine oil quality certification marks and making false performance claims; they 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; and they paid API’s litigation costs.