Mark Sommers

パートナー

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Mark Sommers

パートナー

+1 202 408 4064 +1 202 408 4064
mark.sommers@finnegan.com mark.sommers@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

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商標、ドメイン名、商標の希釈化、不正競争、虚偽広告、サイバースクワッティング、偽造、及び関連する知財問題に特化した案件を手掛ける。

この業務分野の全局面を網羅しており、米国連邦裁判所及び米国特許庁(USPTO)商標審判部(TTAB)での訴訟及び控訴、戦略的カウンセリング、侵害及びクリアランスに関する鑑定、ポートフォリオ管理及び権利化手続き、実証研究、仲介者責任、損害賠償、等を扱う。

The Legal 500 U.S.誌及びWorld Trademark Review 1000誌において一流の商標弁護士として選出。これまで、商標、トレードドレス、製品構成、不正競争、ドメイン名、迂回販売、デザイン、虚偽広告に関する訴訟に幅広く携わっている。また、国内外を問わず、数多くの権利取得、権利行使に関する戦略構築を行う。

米国の一流ブランド所有者はもちろんのこと、ヨーロッパ及びアジアの一流ブランド所有者の代理人も務め、米国の商標実務及び手続に敏感な外国企業から評価を得ている。World IP Review （WIPR）誌では米国におけるWIPRの優秀商標弁護士として選出された。国内外で頻繁に講演を行い、商標、ドメイン名、トレードドレス、不正競争に関する執筆も多数。また、注目度が高くニュースで扱われる商標及び商標関連事件、又今後の進展や課題についてを数多くメディアで論じている。

Select Publications

共著. "Shedding Anonymity and Embracing Your Brand Identity: Taiwan Companies Positioned to Join World’s Top Global Brands," Commercial Times, Sept. 8, 2015.
共著 "Second Circuit Upholds Finding of Willful Infringement on Summary Judgment Against Fendi Counterfeiter," IP Litigator, May/June 2013.
共著 "Testing the Extraterritorial Limits of the Lanham Act: Are Counterfeiters’ Overseas Assets and Bank Records Within Reach?" IP Litigator, July/Aug. 2012.
共著 "Courts Show Willingness to Grant Sweeping Injunctive Relief to Stop the Next Generation of Counterfeiters," IP Litigator, Jan./Feb. 2012.
共著 "ECJ Issues L’Oreal v. eBay Ruling: Online Marketplaces Can Be Liable for Counterfeit Goods," IP Litigator, Sept./Oct. 2011.
共著 "Trademark Owners and Internet Platforms Decide They Are Stronger Together Than Apart," IP Litigator, July/Aug. 2011.
共著 "The Second Circuit’s Decision in Tiffany v. eBay," IP Litigator, May/June 2010.
共著 "Removal of UPC Labels Subverts Trademark Owner Quality Controls and Constitutes Material Difference," IP Litigator, Jan./Feb. 2010.
共著 "New Directions for Laches Defence," World Trademark Review, Aug./Sept. 2009.
共著 "Material Differences’ Outside the Gray Market Context," IP Litigator, July/Aug. 2009.

実績

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.

3:16-cv-01162, S.D. Cal., Judges Sammartino, Stormes

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

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

At the lower court, Finnegan prevailed on a Rule 12(b)(6) motion for client Subaru of America. In that suit, the plaintiff asserted trademark and copyright infringement, trademark dilution, and false advertising against Subaru’s annual “Share the Love” holiday-season campaign, which donates money from car purchases to various buyer-designated national and local charities. Subaru’s campaign uses a particular logo comprised of a heart on a hand, and various other “love”-themed designs.

The plaintiff sought enhanced damages, punitive damages over $20 million, and attorneys’ fees. Subaru’s motion to dismiss was based largely on the facial dissimilarities between the parties’ respective designs, which the U.S. District Court for the Northern District of California granted on all counts asserted in the complaint, without leave to further amend.

The plaintiff appealed to the Ninth Circuit, which affirmed the lower court’s decision after finding that the plaintiff did not plausibly allege any claim. The appeals court later denied plaintiff’s petition for rehearing. Consistent with the lower court’s opinion, the Ninth Circuit ruled that the marks at issue were so facially dissimilar that they could not plausibly create a likelihood of confusion, and affirmed the dismissal of the trademark dilution, copyright infringement, and false advertising claims for the same reasons, resulting in a complete win for Subaru.

16-16840, 9th Cir., Judges Lucero, Owens, Thomas
3:16-cv-03384, N.D. Cal., Judge Chesney

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.

15-2566, 4th Cir., Judges Keenan, King, Wilkinson
8:15-cv-00144, D. Md., Judge Grimm

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Professional Recognition

"...the esteemed Mark Sommers, who brings a deep strategic playbook and a knack for devising practical solutions to almost any challenge. Sommers is lauded for his 'very enhanced business understanding. He is exceptionally skilled; service minded and consistently delivers high quality work.'"

"Sommers shines as 'a business-savvy outside counsel with exceptional legal skills and experience. He combines street smarts with cerebral legal acumen, leading to winning strategies and business successes. Mark is practical and sensible in his approach, yet shrewd and masterfully disarming, making him a pleasure to watch. His competence and intelligence set a high bar for outside counsel, delighting even the most seasoned in-house counsel.'"

"Mark Sommers has been supporting our trademark legal risk management for almost a decade and has constantly delivered strategic advice and brilliant arguments to help us secure winning results."

"On the Trademark (non-contentious) side, we have worked with Mark Sommers and his associates, including Lisa London. Significantly, they have in-depth knowledge of and experience with the online marketplaces of today. They have adapted their legal strategies and support in a way that allows us to best enforce our existing IP rights and create new IP rights so as to achieve significant business impact, given these new online realities."

"Mark is a well-regarded litigator who performs brilliantly in multi-jurisdictional disputes and provides strong strategic advice."

"Mark Sommers is the perfect advisor as he knows about our business and, based on his great experience, provides advice and solutions – best in class."

"Mark Sommers is an outstanding attorney. We are confident that Mark always positions our cases to achieve the best result for the business."

"Mark Sommers is an exceptional advisor and litigator. He has provided numerous solid solutions and has an overview and experience as only few in the business."

"He [Chip Rettew] and Mark Sommers have been hailed as 'stellar lawyers. They are tenacious in representing their clients’ interests'. Of Sommers, another source adds that: 'He is a very practical, excellent lawyer with great litigation skills and is equally accomplished managing portfolios.'"

“‘Mark blends formidable legal skills with plain street-smarts. He is seasoned and comfortable in the court, and can distil down complicated issues and facts and then smoothly present them, so they are simply understood, reasoned and decided.’”

“Mark Sommers is actually one of the most dynamic and impressive trademark litigators I have ever worked with.”

“Mark Sommers is a superlative lawyer, with superb legal know-how and an acute business sense; he is the perfect outside counsel. A battle-tested litigator, his skills are mature and he operates with surgical precision. Mark understands how to position a case in the most effective way, he is comfortable in court and has magnificent intuition. When it comes to prosecution, he has the innate ability to manage strategic IP portfolio issues considering long-term goals. Another bonus for clients is that Mark is happy to give off-the-cuff, common-sense answers to complex legal questions when they crop up.”

“Mark Sommers is a nationally recognised litigator and a lightning rod for praise, as one client states: ‘Simply put, I can think of no other attorney more creative, efficient and effective or for whom I have greater respect.’”

“He is the complete package: a convincing advocate, a masterful strategist and a real-world counsellor who adds tremendous value” and “exceeds even the loftiest expectations.”

“Mark Sommers ‘brings to the table huge amounts of technical knowledge, industry experience, business and common sense, and practical advice.’”

“Fellow courtroom sharpshooter Mark Sommers is ‘outstanding in all contentious matters.’ ‘With his incredible experience, he understands the nuances of complex negotiations and thinks outside the box.’”

“…Mark Sommers has ‘incredible litigation experience and out-of-the-box thinking capacity.’”

“Mark Sommers creates and enforces sound strategies for his clients’ marques, which include valuable gaming, entertainment, and software brands.”

“Recommended lawyers include the...‘experienced and pragmatic’ Mark Sommers…”

“Sommers registers, maintains and defends rights with equal aplomb and is adept at helping European and Asian companies to navigate the US legal system.”

“Mark Sommers has impressed many foreign brand owners with his resourcefulness.”

“[The team] includes the ‘outstanding’ Mark Sommers, who ‘really understands the strategic importance of IP.’”

“Mark Sommers is an ‘exceptionally good attorney.'”

“‘Mark is responsive, dedicated, reliable, intuitive, proactive, practical and gifted. He blends sophisticated legal skills with plain street smarts and keeps his eye sharply trained on key long-term goals and overall business visions.’”