Trademark and False Advertising Litigation

• Secured more than 100 victories on behalf of AARP, Absolut, Dogfish Head, Guggenheim Capital, Papa John’s, Pebble Beach, Tyson Foods and Victoria’s Secret in domain name proceedings.
• Guggenheim Capital and Guggenheim Capital Partners in several legal victories involving an international trademark counterfeiting ring. In late 2010, McDermott filed a complaint, Guggenheim Capital and Guggenheim Partners v. Toumei, Civil Action No. 1-10-cv-8830 (Southern District of New York). The New York federal court entered judgment in favor of the plaintiffs for approximately $1.75 million and enjoined defendants from using the Guggenheim name. The primary defendant appealed the case to the Second Circuit, which affirmed the judgment. Guggenheim Capital, et al. v. Birnbaum, et al., 722 F.3d 744 (2d Cir. 2013). Subsequently, the primary defendant sought to free himself of the $1.75 million dollar judgment by declaring bankruptcy. In July 2014, through a 32-page published opinion, the Bankruptcy Court for the Eastern District of New York held the $1.75 million judgment was non-dischargeable as a matter of law because it arose from intentional misconduct, In re Birnbaum, 513 B.R. 788 (2014).
• Pebble Beach Company, which owns and operates the world-famous Pebble Beach Resorts in Pebble Beach, California, in multiple successful trademark infringement actions, including:
  • The infringement of the famous golf resort’s “Pebble Beach” marks on spa tubs. The case settled favorably for Pebble Beach and included the cessation of use of the “Pebble Beach” marks by the defendant. Pebble Beach Company v. Dynasty Spas Inc., Case No. 3-12-cv-06319 (Northern District of California).
  • The infringement of the famous golf resort’s “Pebble Beach,” “Spyglass Hill” and “Lone Cypress” marks. The case settled favorably for Pebble Beach and included the cessation of use of infringing marks by the defendant. Pebble Beach Co. v. Hydra Plastics, Inc. (d/b/a Clearwater Spas), Case No. 5-12-cv-00291-EJD (Northern District of California).
  • The infringement of the famous golf resort’s “Pebble Beach” marks on furniture and breach of prior settlement agreement. The case settled. Pebble Beach Company v. COA Inc. (d/b/a Coaster Company of America), Case No. 5-12-cv-2562-EJD (Northern District of California).
• AAA, formerly the American Automobile Association, in its successful representation against false advertising claims involving falsely advertising discounts to AAA members. The settlement included cessation of defendant’s advertising. American Automobile Association v. CFO Optical Group, Civil Action No. 2-09-cv-1437 (Eastern District of New York).
• Trend Micro, a global security software company, in a successful trademark litigation relating to the use of the trademark “DataArmor” on full-disk data encryption software. The resolution was concluded after a mediation hearing before Magistrate Judge Daniel Martin. Qtopia Incorporated v. Trend Micro Incorporated, Civil Action No. 1-12-cv-02546 (Northern District of Illinois).
• Kythera Biopharmaceuticals in its successful trademark infringement suit which sought a permanent injunction. Lithera moved to dismiss the action on the ground that Kythera’s trademark registration for “Kythera” was invalid because Kythera had not yet commenced selling the drug; it was still conducting trials for FDA approval. The court rejected Lithera’s motion in a lengthy published opinion by Chief Judge Lew of the Central District of California: Kythera Biopharmaceuticals, Inc. v. Lithera, Inc., 998 F. Supp. 2d 890. (Kythera Biopharmaceuticals, Inc. v. Lithera, Inc., Case No. cv 13-6338 RSWL (SSx)) (Central District of California).
• Red Mango, a frozen yogurt and smoothie brand known for its all-natural frozen yogurt, in its successful defense against allegations of trademark infringement of “Red Mango Yogurt.” McDermott defeated the motion for preliminary injunction and secured a favorable consent judgment, resulting in the cessation of use by the plaintiff of its “Red Mango Yogurt” marks and the transfer of numerous domain names to our client. Red Mango Yogurt, Inc. v. Red Mango, Inc. et al., Case No. 2-07-cv-04504 (Central District of California).
• Univision Communications, the fifth-largest television network in the United States, in its successful resolution of numerous trademark disputes around the world. (Disc Marketing, LLC v. Univision Communications Inc.; Liberman Broadcasting Inc., et al. v. Univision Communications Inc., et al.; Wilen v. Univision Communications, Inc.).

Show Less