Experience

Trademark and Brand Management

About

Successful companies rely on the power of their brands to communicate the quality and distinctiveness of their products and services. Whether trademarking names, logos, and slogans; registering copyrighted works; patenting product designs; or navigating advertising issues on media platforms, business savvy leaders use intellectual property law to strategically build and protect their brands and market positions. Trademarks are often some of the most valuable assets of a company and infringement or dilution of a mark can cost millions in revenue and goodwill. With our proven track record in high-profile litigation, often related to Lanham Act violations of infringement or false advertising, and noncontentious matters, companies with valuable and rising brands consistently look to Finnegan to handle their most complex, high stakes matters.

Finnegan’s professionals who help companies build and protect brands are known for their experience, sophistication, creativity, and depth. Our practice includes an enviable core of experienced attorneys, legal assistants, and staff professionals, including portfolio managers and in-house investigators. Our extensive experience with virtually every type of product and service and every facet of brand protection helps us advise clients on the best path to protect, advocate, and leverage their IP assets. This team-oriented approach has resulted in consecutive top-tier rankings for our practices by respected publications such as Managing Intellectual Property, The Legal 500, and World Trademark Review.

Keeping trusted brands protected in European, UK, and U.S. law

We follow the life of a mark from selection, clearance, prosecution, and maintenance to portfolio management, trademark audits, licensing, watch services, disputes, and litigation. Our practice scope offers great flexibility, allowing us to implement global brand protection programs, advise on advertising campaigns, and assess data privacy issues quickly and effectively. Our client base is diverse and global, encompassing small and large companies and organizations from a range of industries, including pharmaceuticals and biotechnology, financial services, publishing, ecommerce, entertainment, sports and fitness, computers and telecommunications, consumer products, automotive, and manufacturing. For many clients, we provide a full range of brand protection services, while others seek our assistance for some of these categories on a project-by-project basis.

Partners in advancing business goals and market value

Protecting and promoting innovation and market trust is a foundational tenet for Finnegan. Through maintaining a culture of service and leadership in professional bar and legal associations, we collaborate with colleagues in industry and government in promoting IP rights and high professional standards. Organizations we are involved with include International Trademark Association (INTA); American Intellectual Property Law Association (AIPLA); Intellectual Property Owners (IPO); MARQUES, Chartered Institute of Trade Mark Attorneys (CITMA); BBB National Programs; and the Association of National Advertisers (ANA).

Contacts

Everyone in this practice

Practice Areas

Advertising

From advertising clearance and claim substantiation to consumer class action lawsuits, advertising raises intellectual property issues across traditional and social media platforms.

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Copyright

To maintain a competitive advantage, companies and organizations need clear guidance in UK and U.S. intellectual property law and creative solutions to protect their copyrighted works.

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Counterfeiting/Gray Market Goods

Counterfeiting and gray market goods are growing at an alarming rate, resulting in industry losses of billions of dollars annually.

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Design Rights

Your designs separate you from the competition, make your products distinctive, and help preserve your competitive advantage.

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Domain Name Litigation and UDRPs

Because of the pervasive nature and extent of cybersquatting and infringement activity on the Internet, you need to manage and set priorities for enforcement efforts by developing specific guidelines and strategies.

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Privacy

From data gathering to data storage, from privacy by design to governance and legal compliance, all industries and sectors are faced with complex and often unsettled issues related to privacy.

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Trademark Counseling and Prosecution

Counseling during the early phases of trademark development helps avoid costly conflicts or enforcement problems down the road.

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Trademark Litigation

When problems arise and valuable trademark rights are at stake or an accusation has been made, it pays to have seasoned litigators and trial lawyers on your side.

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Trademark Oppositions and Cancellations

In protecting your brand assets, trademark opposition and cancellation proceedings are effective offensive and defensive strategic tools.

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Experience

On behalf of client Sony Group Corporation, Finnegan filed an opposition at the Trademark Trial and Appeal Board (TTAB) against an application for SONISTREAM, which was to be used for downloadable computer software for Internet and broadcast radio scheduling and audio playout. The Board found in Sony’s favor on the dilution claim without needing to reach the likelihood of confusion claim, finding that the SONY mark is “exceedingly famous” and “among the most widely recognized marks in the United States.”

Opp. No. 91245851, TTAB, Judges Zervas, Lykos, Larkin

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

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

Obtained preliminary and permanent injunctive relief and damages in high-profile infringement in China. The Supreme People’s Court, the highest court in China, affirmed the decision, securing a complete win for Under Armour.

People’s Higher Court of Fujian Province of the People’s Republic of China

Secured a victory on summary judgment for Dean Guitars and the Estate of Dimebag Darrell Abbott in a hotly-contested copyright infringement and unfair competition case, with multiple Lanham Act, invasion of privacy, and state law claims. The case involved one of the world’s most popular heavy metal guitarists—Darrell Abbott of the band Pantera—and a lightning bolt graphic on his “Dean from Hell” guitar, which for decades has been an inseparable part of Abbott’s persona and likeness. The 11th Circuit affirmed the ruling.

8:17-cv-01795, M.D. Fla., Judges Jung, Honeywell
2:17-cv-03027, C.D. Cal., Judges Walter, Wilner
19-10013, 11th Cir., Judges Wilson, Carnes, Branch

Obtained affirmance from the Federal Circuit of a Finnegan trial victory before the Trademark Trial and Appeal Board (TTAB) in cancellation proceeding over FUSION mark for energy drinks.

19-1132, Fed. Cir., Judges Prost, Moore, Wallach
Opposition No. 92059437, TTAB, Judge McCormack