Trademark Litigation
A product’s market share becomes threatened when the product is not distinguished from the
competition. Thus, a tailored enforcement strategy is critical to maintaining the success of a product.
Steptoe aggressively, yet efficiently, enforces our clients’ trademark rights through a variety of means,
ranging from the development of a comprehensive and strategic enforcement policy, to litigation and
trial. Our attorneys have litigated trademark, service mark, trade dress, false advertising, unfair
competition, gray market, antitrust and related issues throughout the country. Steptoe has had
significant success enforcing our clients’ trademark and trade dress rights through negotiation and
diplomacy. Where litigation is necessary, however, our attorneys litigate to win – and do win – in District
Courts, at the ITC, the Trademark Trial and Appeal Board, through UDRP proceedings, and through
mediation and arbitration.
Our IP attorneys have tried scores of trademark cases to judgment for Fortune 500 companies, midsize
companies, and small, emerging high-tech companies. We blend our litigation know-how with attorneys
who have great experience in the relevant technology, commercial markets, and law, whether it be
patent, trademark, copyright, trade secret, privacy, constitutional, or a combination of them – to produce
winning and efficient trial teams.
Our trademark litigation team comprises seasoned trial lawyers that have litigated a broad array of
trademark and trade dress infringement matters before juries, judges, and administrative panels. Our
partners have great experience in the many forums where trademark and unfair competition issues may
be decided. Our team also has extensive experience with trademark opposition/cancellation
proceedings before the Trademark Trial and Appeal Board in the USPTO.
Representative trademark litigation cases include a successful trial in the Middle District of Alabama
against Region University for infringement of the Regions mark of Regions Bank, a successful
opposition to an application by Emerson Electric to register its Dirt Hog and Water Hog marks based on
a family of Hawg marks of Black & Decker, and a decision of the Federal Circuit in favor of Texaco
against the registration of a Clear Bottle mark by Pennzoil-Quaker State.
In addition, Steptoe’s attorneys regularly counsel clients concerning enforcement and defensive
strategies for trademarks, trade dress, and the broader issues of unfair competition, including issues of
false advertising, grey goods, and antitrust.
Steptoe represents some of the country’s most well-known brands in the technology, manufacturing,
apparel, automotive, entertainment, sports, television, food and beverage, and industrial supply
industries, to name a few. These brands are increasingly vulnerable to counterfeiting and piracy, a
problem that affects nearly every major industry. In order to combat piracy and counterfeiting of these
popular brands, our attorneys have developed a particular expertise in the area of trademark
counterfeiting. Counterfeiters today are more sophisticated and well-funded than ever, creating complex
corporate shell structures in order to maintain anonymity and to protect their assets. These complex
organizations must be countered by sound and imaginative anti-counterfeiting strategies that include the
cooperation of industry and government.
Lawyers in our Washington, New York, and Los Angeles offices represent plaintiffs in civil counterfeiting
actions, adopting a multi-faceted approach to protect their intellectual property rights. We often involve
law enforcement organizations such as the Department of Homeland Security as well as state and
federal law enforcement, when appropriate, to combat counterfeiting for our clients. Law enforcement is
Trademark Litigation
especially necessary for those industries in which counterfeiting poses a significant health and safety
risk – such as with pharmaceuticals, food, and aerospace and automotive parts. Counterfeiting in these
industries not only denigrates brand integrity, but can lead to a host of other problems such as costly
product liability litigation. Our comprehensive counterfeiting approach also includes law enforcement
training programs for clients to help US Customs agents and police officers identify counterfeit
merchandise. In addition to conducting ex-parte seizures, Steptoe has helped clients battle
counterfeiting by implementing a program to monitor the sale of counterfeit merchandise on online
auction sites.
Combined with one of the strongest e-commerce, electronic security, and encryption practices, our
attorneys are active in the defense of and counter measures to phishing and pharming attacks, and
other online fraud. The firm has represented a wide range of clients in trademark and cybersquatting
suits arising from purportedly improper registration and use of Internet domain names. Steptoe has an
active Internet arbitration practice, with an emphasis on domain name disputes.
Representative Matters
Burberry Ltd. et al., v. J.C. Penney Corp. Inc. (S.D.N.Y. 2016) – Representing Burberry in a
trademark infringement, trademark counterfeiting, and trademark dilution dispute concerning its
BURBERRY CHECK marks.
Reserve Media, Inc. v. Efficient Frontiers, Inc. (C.D. Cal. 2015)- Represented Reserve Media in a
trademark infringement suit relating to the RESERVE mark.
His & Her Corp v. Shake-N-Go Fashion Inc. et al (C.D. Cal. 2015) - Represented His & Her, a
manufacturer and retailer of hair products, against certain wholesalers and retailers in a trademark
infringement dispute related to its hair extension products sold under the brand CUTICLE. The
case settled, including with the defendants agreeing to refrain from making any trademark use of
CUTICLE in connection with hair extensions, ponytails, wigs and hairpieces.
Moet Hennessy USA, Inc. v. La Maison Du Vigneron, SAS et al. (S.D.N.Y. 2014) - Represented
Moet Hennessy in a trademark and trade dress infringement dispute concerning its ICE IMPERIAL
champagne product. Case settled.
Two Brothers Brewing Company v. Three Brothers Brewing Company, LLC (E.D. VA. 2014) –
Represented Two Brothers Brewing Company in a case involving trademark infringement of the
TWO BROTHERS mark.
Thomas & Betts International LLC et al. v. Burndy LLC et al. (W.D. Tenn. 2014) - Representing T&B
in a case involving trade dress infringement of cable ties.
Certain Laundry and Household Cleaning Products and Related Packaging (2013), USITC Inv. No.
337-TA-891 – Represented complainant Clorox in a trademark infringement litigation against AlEn
and AlEn USA. Clorox asserted AlEn's Cloralex and Pinol products infringe Clorox's Clorox and
Pine-Sol trademarks. The investigation was terminated based upon the entry of a settlement
agreement.
Deckers Outdoor Corporation v. New Balance Athletic Shoe, Inc. (T.T.A.B. 2013) – Represented
New Balance in an opposition against registration of the ANUE mark.
Trademark Litigation
Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, (Fed. Cir. 2013) –
Defended the Federation of the Swiss Watch Industry in an appeal by Swiss Watch International
(SWI) of a decision by the Trademark Trial and Appeal Board dismissing SWI’s attempt to cancel
the Federation’s SWISS and SWISS MADE certification marks for watches. After briefing and an
oral argument, SWI filed an unopposed motion to terminate the appeal.
Pugh v. Kmart (E.D.N.Y. 2012) – Representing Sears/Kmart in a trademark infringement and unfair
competition case relating to one of Kmart’s women’s clothing lines. The plaintiff demanded that
Kmart abandon a mark for one of its successful brands for women’s clothing. Steptoe successfully
argued the case to the court and resolved the case shortly before trial on favorable terms.
Blount, Inc. v. McHale Engineering Limited (T.T.A.B., 2012) - Represented opposer Blount, Inc. in
an opposition against registration of the FUSION mark.
Soccer United Marketing LLC et al v. The Black & Decker Corporation (S.D.N.Y., 2009) – Defending
Black & Decker in a case claiming false advertising, trademark infringement, and unfair
competition.
Regions Asset Company v. Regional Acceptance Corporation (T.T.A.B. 2009) – Represented
Regions Asset Company (Regions) in a trademark opposition proceeding at the Trademark Trial
and Appeal Board concerning Regional Acceptance Corporation's applications to register the mark
REGIONAL in both plain text and stylized format. The Board found that the REGIONAL marks were
likely to cause confusion with Regions' REGIONS mark. Thus, the Board rendered judgment in
favor of Regions and denied registration of both REGIONAL marks.
Trek Bicycle Corporation v. Trek Winery LLC (W.D. Wis., 2009) – Represented Trek Winery LLC in
a trademark infringement case. The Court found in favor of Trek Winery, dismissing an action for
lack of personal jurisdiction.
Regions Asset Co. et al v. Regions University (M.D. Al., 2008) – Represented Regions Bank in a
trademark case of first impression concerning Southern Christian University’s change of its name
to “Regions University.” Regions Bank claimed the name Regions University infringed and diluted
its Regions brand. After a week long trial that began on January 14, 2008, but before the Court
could issue an opinion, the defendant conceded infringement and dilution and a Final Judgment by
Consent was entered which immediately barred the defendant from using the Regions name in
advertising, promotion and marketing and required defendant to change its name.
The Black & Decker Corporation v. Emerson Electric Co. (T.T.A.B. 2007) - Represented The Black
& Decker Corporation in a trademark opposition proceeding at the Trademark Trial and Appeal
Board concerning Emerson Electric Co.'s intent-to-use applications for the trademarks DIRT HAWG
and WATER HAWG for vacuum cleaners, wet and dry vacuum cleaners, and replacement parts
therefor. Black & Decker claimed the marks DIRT HAWG and WATER HAWG were confusingly
similar to its HOG family of marks for power-operated outdoor products, such as LEAF HOG,
HEDGE HOG and EDGE HOG. The Trademark Trial and Appeal Board agreed, and in a decision
dated March 23, 2007, the Board sustained the opposition and denied registration of the DIRT
HAWG and WATER HAWG marks on the ground of likelihood of confusion.
Franck Muller USA, Inc. v. Yafa Antique Jewelry Inc. et al. (S.D.N.Y., 2007) – Represented the
United States licensee for Franck Muller watches in a lawsuit alleging trademark infringement
and unfair competition suit relating to the gray market trafficking of Franck Muller watches. On
December 7, 2007, a federal court issued the last of several rulings barring 11 retailers from
engaging in this illegal activity in the United States, Canada and the Caribbean.
Trademark Litigation
Certain Foam Footwear (2006), USITC Inv. No. 337 – TA – 567 – Represented respondent
Australia Unlimited against allegations of trade dress and design patent infringement related to
foam shoes. Succeeded in having trade dress allegations dismissed and negotiated a settlement
based on cross-licensing of design patents.
Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems (2006), USITC Inv. No.
337 – TA – 569 – Represented respondents Canady Technology LLC and Canady Technology
Germany GmbH against allegations of patent and trademark infringement with regard to medical
devices. After trial, the complainant's patent was found not to be infringed by Canady and there
was also a finding of no domestic industry. The ALJ thus found no violation and this decision was
affirmed by the Commission. The Commission decision was affirmed on appeal by the Federal
Circuit.
New Sensor Corporation v. CE Distribution, 367 F. Supp. 2d 283 (E.D.N.Y. 2005) (attorneys’ fee
award); 303 F.Supp. 2d 304 (E.D.N.Y. 2004) (summary judgment) – Secured summary judgments
and sanctions award for distributor of electronic equipment, CE Distribution, in trademark
infringement and unfair competition lawsuit.
Heaven Sent Naturals v. Church & Dwight (D. Ariz, 2005) – Represented Heaven Sent Naturals in
a federal Lanham Act complaint filed for trademark infringement and trade dress that was
confusingly similar, thus constituting trade dress and unfair competition, for a nutritional
supplement.
Texaco Inc. v. The Pennzoil-Quaker State Co. (T.T.A.B. 2004, Fed. Cir. 2005) – Represented
Texaco in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning
The Pennzoil-Quaker State Company's application to register a clear container design for motor
oils. Texaco claimed that a clear bottle was functional in a utilitarian sense and that, if not
functional, the clear container design was not inherently distinctive and had not acquired
distinctiveness as an indicator of source for Pennzoil-Quaker State's motor oils. On May 28, 2004,
the Board sustained the opposition on both grounds and refused to register the clear container as a
trademark of Pennzoil-Quaker State. Pennzoil-Quaker State appealed the Board's decision to the
Federal Circuit. On June 10, 2005, the Federal Circuit affirmed the Board's decision.
Certain Ink Markers and Packaging Thereof (2004), USITC Inv. No. 337 – TA – 522 – Obtained a
general exclusion order for all ink markers and packaging that infringe or are confusingly similar to
Sanford’s trademarks or trade dress for SHARPIE® ink markers.
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) – Successfully represented
the petitioner, Dastar Corp., at both the certiorari and merits stages in this case, in which the US
Supreme Court unanimously reversed the Ninth Circuit. The case arose at the intersection of
trademark and copyright law, and Steptoe’s arguments persuaded the Court to overturn more than
two decades of court of appeals precedent. The Court’s opinion greatly narrowed the scope of
permissible “reverse passing off” claims, limiting such claims to situations where the defendant
strips the identifying marks off of the tangible products of another and then sells the products as its
own.
Major League Baseball Properties v. Salvino (S.D.N.Y., 2003) – Represented Major League
Baseball Properties in a case concerning the use of Major League Baseball team colors and city
names for toy plush animals. The action ended with a settlement favorable to MLBP.
Trademark Litigation
Certain Bearings and Packaging Thereof (2003), USITC Inv. No. 337 – TA – 469 – Represented
SKF USA in this investigation related to alleged infringement of registered and common law
trademarks, dilution of trademarks, and various acts in violation of the Lanham Act.
Noteworthy
Ranked as a top trademark law firm in DC by World Trademark Review, WTR 1000, 2012-2016