Trademark, Advertising, and Brand Litigation

We understand that your company’s trademarks and brand image can be among its most valuable assets. In today’s shifting marketplace, protecting a brand and preventing trademark infringement or encroachment has never been more important.

Our trademark attorneys vigorously protect brand assets against infringement, dilution, and other unfair competition. Working in federal and state courts throughout the country, as well as the International Trade Commission (ITC) and the Trademark Trial and Appeal Board, our lawyers combine a sophisticated knowledge of trademark infringement litigation and advertising law with a national reputation as effective trial lawyers.

And, while we are prepared to take any case to trial, we also work with each client to explore potential resolution through alternative dispute resolution (ADR) or various forms of licensing or co-existence agreements. Our focus on understanding each of our clients’ specific business needs and unique circumstances allows us to identify creative “win–win” solutions.

Whether counseling on mark viability, giving word or claim choice problem-avoidance guidance, or highlighting materials in need of additional protection, our advice is designed to promote our clients’ business interests, protect brand asset value, and preclude problems before they arise.

Experience

Trademark

We represent both plaintiffs and defendants in high-profile cases at the cutting edge of trademark-infringement litigation law in a wide variety of trademark-related disputes, including: 

• Trademarks and trade dress (including product color, design, configuration, and packaging)
• Trademark dilution, tarnishment, and disparagement
• Internet “keyword” advertising
• Internet domain name disputes involving domain “tasting,” “parking,” and “typo- squatting”
• Rights of publicity 
• Enforcement of co-existence and trademark-licensing agreements

Advertising

More than a decade ago, we represented the State of Minnesota and Blue Cross Blue Shield of Minnesota in a groundbreaking lawsuit against the tobacco industry involving claims of false advertising and violation of state consumer-protection statutes. After four years of litigation and four months of trial, the case settled on the eve of jury deliberations. The settlement provides for more than $6.6 billion in payments to the State and Blue Cross, and unprecedented injunctive relief against the tobacco industry. Since that time, we have represented both plaintiffs and defendants in a wide variety of direct and class action advertising disputes, including:

• Comparative advertising claims relating to competing products
• “Tests-prove” advertising claims regarding product effectiveness
• Substantiation of advertising claims
• Advertising claims regarding consumer preference
• Internet advertising through “sponsored links” 
• Consumer class action claims, including under the federal Lanham Act and state competition laws

Clients and Industries

We represent numerous blue-chip brands, including Best Buy, Louis Vuitton, Moët Hennessy, Great Clips, and Estée Lauder. We also represent other clients across an array of industries, including:

• Food and Beverage
• Health Care
• Manufacturing
• Personal Care and Beauty
• Retail

Selected Case Results*

• Represented Nilfisk-Advance, Inc. in a successful arbitration before the National Advertising Division of the Council of Better Business Bureaus, the advertising industry's self-regulator forum, on claims that Tennant Company falsely advertised the performance and environmental benefits of its "ec-H2O" technology.


• Represented the American Association for Justice ("AAJ") in a trademark dispute arising from corporate rebranding campaign.  Won a summary judgment dismissal of defendants' claim that AAJ had abandoned its trademark rights to the terms ATLA and ASSOCIATION OF TRIAL LAWYERS OF AMERICA when it adopted a new corporate name.  Following this summary judgment victory, the case settled with the defendants agreeing to cease and permanently desist from any further infringement of AAJ's marks; acknowledge AAJ's exclusive trademark rights; and make a substantial monetary payment to AAJ.


• Best Buy Stores, L.P. v. Ultimate Acquisition Partners, L.P. d/b/a Ultimate Electronics: Represented national retailer Best Buy Stores, L.P., in suit alleging that Colorado-based Ultimate Electronics was engaging in a false and misleading comparative advertising campaign. The case was resolved after Ultimate agreed to terminate its advertising campaign.


• Louis Vuitton Moet Hennessy v. Phillips Beverage Company:  Trial counsel for defendant in $100 million international arbitration proceeding brought by French multi-national seller of luxury goods arising from alleged breach of trademark license agreement; obtained a complete defense verdict and an award of fees from unanimous three member panel. 


• Great Clips, Inc. v. Hair Cuttery of Greater Boston, L.L.C. and Great Cuts, Inc.: Summary judgment granted to client, Great Clips, Inc., against claims of trademark infringement.


• Berger v. Best Buy Stores, L.P.: Obtained dismissal with prejudice of putative class action arising out of alleged false advertisement of national electronics retailer's mail-in rebate program brought under California's Unfair Competition Law and False Advertising Law (Business and Professions Code Section 17200 and 17500).


• Perlow v. Honeywell: Represented product manufacturer Honeywell in several putative nationwide class action cases alleging false advertising and related state unfair competition claims brought after entry of Consent Order in Federal Trade Commission (FTC) action. Obtained summary judgment in favor of Honeywell after determination that Consent Order had no binding effect on private party claims at issue and affirmed on appeal.


• Hutto v. Estée Lauder: Defended Estee Lauder in a putative class action which was dismissed with prejudice prior to class certification.


• Hy v. Best Buy Stores, L.P.: Represented national retailer in putative class action alleging false advertising in violation of state Unfair Trade Practices Act. Case dismissed with prejudice following denial of class certification.


• Northwest Airlines v. NWA Credit Union: Represented trademark holder Northwest Airlines. Case settled on favorable terms just before scheduled trial in United States District Court, District of Minnesota.


• Soloflex v. Nordictrack: Successfully negotiated settlement for NordicTrack in a significant false advertising, trade dress, trademark, and copyright infringement case brought by Soloflex.


• Phillips Beverage Company v. Sydney Frank Importing: Trial counsel in $100 million international arbitration for the alleged breach of Belvedere vodka licensing agreements. Obtained a complete defense verdict and an award of fees from unanimous three-member panel.

* Past results are reported to provide the reader with an indication of the type of litigation we practice. They do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.