An Arbitration for Luxury
Pattishall defended an international luxury apparel, home products, and home furnishings company in an arbitration proceeding where the client was accused of breach of contract and trademark infringement. The case involved issues relating to the interpretation and definition of key terms in the parties’ 20-year-old agreement. After a trial on the merits the panel found that there was no likelihood of confusion between the parties’ marks. Though the client was found to have breached a portion of the parties’ contract, the damages were limited to a fraction of that requested by the plaintiff and, importantly, the panel’s order allowed the client to continue conducting its business in much the same way as it had before the proceeding.
Jurisdictional Protection for Trademark Licensors
Our Firm defended an intellectual property holding company who, along with its licensee, was accused of trademark infringement in a suit filed in federal court in Illinois. The holding company did not have any direct contacts with the State of Illinois, therefore, we filed a motion to dismiss the holding company from the case for lack of personal jurisdiction. In an important decision for trademark licensors, the court held that the licensee’s contacts with the forum could not be imputed to the licensor. The court, thus, dismissed the holding company from the case.
Ad Substantiation Challenge Before the NAD
On behalf of a major truck manufacturer, Pattishall challenged a competitor’s online and print comparative claims about fuel efficiency before the National Advertising Division (NAD). The case involved highly technical issues of claim substantiation, engineering and product testing. The NAD found that the competitor’s testing did not replicate real world testing conditions and, therefore, did not substantiate the comparative claims at issue. Therefore, the NAD ruled that the competitor’s claims should be discontinued.
Halting Gray Market Goods Importation
Companies often face difficulties in stopping importation of gray market products bearing their marks. Pattishall’s extensive experience in developing and executing gray market importation includes representation of one of the world’s leading multinational consumer goods manufacturers and a seminal federal court decision on behalf of a manufacturer of pet medicine. These enforcement programs include lawsuits, letter campaigns and business solutions, all resulting in favorable outcomes for our clients.
A Commitment to Pro Bono
Our Firm’s commitment to pro bono work is reflected in a cancellation proceeding and related federal court lawsuit in which we represented an Internet startup based in New York. A Chicago company sued our client to stop its use of an allegedly infringing trademark for the name of our client’s business. We successfully defended the client by having the federal suit transferred to New York and pressuring the plaintiff into a settlement by petitioning to cancel its registered mark for lack of trademark use.
Sounds like Success in the TTAB
Pattishall, on behalf of a division of a Fortune 500 information technology company, in the Trademark Trial and Appeal Board (TTAB) successfully opposed an Application for a mark aurally identical and confusingly similar to its main brand used in connection with a number of online services. The determination of the case focused on priority and likelihood of confusion. With regard to priority, the Board found the numerous examples of third-party accolades and reviews regarding the beta testing and release of our client’s services adequately established its prior common law rights in its mark. In finding likelihood of confusion exists between the two marks, the Board cited the close relationship of the services, the identity of the trade channels and purchasers, and the conditions of sale. The Board sustained the Opposition and the application was abandoned.
Can an Ad Claim That?
Our Firm assists many companies with a myriad of advertising substantiation issues. Specifically, we have analyzed highly technical advertising claims made by a leading international business corporation and its competitors to determine whether the claims are sufficiently substantiated pursuant to the requirements of the Federal Trade Commission (FTC), the National Advertising Division (NAD), and in accordance with federal, state, and other regulatory laws.
What’s Your Brand Plan?
No matter the size of a company’s trademark portfolio, from time to time it is useful to make sure that company policies are in place to ease and streamline day-to-day communications within the company regarding trademark protection. Such “Brand Planning” must be focused to encompass the specialized issues facing individual companies to know what to prune, what to add, and where to focus marketing energy and dollars. Pattishall helps companies big and small to implement strategic brand plans to develop, properly promote and enforce trademarks. We do so with the belief that trademark assets, managed in a considered way, add significant measurable value to the company that owns them.
A Trademark in Motion
Trademarks come in many designs, words, shapes, colors and motions. Yes, motions. Our Firm successfully registered one of the most unique marks on the U.S. trademark register – the motion of the famous Peabody Hotel Duck March. The Peabody hotels, including the iconic original hotel located in Memphis are known not only as hotels of the highest quality, but are also famed for their marching ducks. Every day at 11 a.m., the Peabody Ducks are led from their penthouse Royal Peabody Duck Palace, to a specially-reserved elevator. They are escorted to the Lobby by their Duckmaster. There, they march on a red carpet and up steps to their marble fountain, through crowds of spectators to the tune of John Philip Sousa’s King Cotton March. The march is reversed at 5 p.m., when the ducks retire for the evening. Even if it walks like a duck and quacks like a duck, it may really be a trademark.
Pattishall client Robert Bosch LLC was awarded judgment of a broad injunction and over $13 million on its claims of counterfeiting, infringement, unfair competition and false advertising after nearly three years of litigation. The Court’s opinion highlighted the difficulty of assessing actual damages given the actions of the defendants in the “extensive and cumbersome discovery” that played out during the case, and ultimately found our Firm’s method for estimating damages to be reasonable. Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. August 2, 2012).
Helping David Battle Goliath
What do you do when you discover that your customer – a large international company – has taken your registered trademark and is using it on products that compete with your own goods? And your company is too small to afford the cost of a federal lawsuit? One such three-person company in Los Angeles phoned Pattishall McAuliffe. We filed a multi-count complaint in California for trademark infringement, counterfeiting, unfair competition and civil conspiracy, and we agreed to be paid on a contingent-fee basis. Some 30 depositions later, the corporate “Goliath” offered a multi-million-dollar settlement on the eve of trial to avoid facing Pattishall’s arguments to the jury.