Ideally, a business’ reputation for quality and service is directly connected to recognizable, high-impact symbols and product names. The trademark search and registration process is an important first step in helping a business protect its brand, identity and status in the marketplace. Once a trademark has been developed and secured, it is imperative to prevent competitors from riding the coattails of that investment. Conversely, when clients are accused of trademark infringement, they require legal advisors with the experience and sophistication to identify the strengths of the claims and the potential merit of all available defenses, and to help identify and execute the most effective resolution strategy, whether in court, before an arbitration panel or as the result of a negotiated settlement.
McDermott’s practice includes lawyers recognized by Chambers USA, The Legal 500 and World Trademark Review 1000 as top litigators nationally and internationally. Members of our team have decades of experience serving as first-chair counsel in US federal district and appellate courts, before the US Patent and Trademark Office Trademark Trial and Appeal Board, and in comparable international and national courts and tribunals in the European Union, the United Kingdom, Germany and Asia. Our lawyers have also served in leadership roles for the International Trademark Association (INTA), which recognized McDermott as the sole recipient of the 2013 Volunteer Service Award in the “Pro Bono Services Provided by Organizations” category.
We regularly represent clients in arbitration proceedings in accordance with the Uniform Domain Name Dispute Resolution policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). Our lawyers have helped numerous clients conduct online monitoring for infringements and recover domain names from hijackers and infringers.
We have represented clients from a broad range of industries, including nonprofit organizations and associations, as well as in the apparel, computer software, electronics, food and beverages, health care, hospitality, chemical lawn and garden products, medical devices, toys, and other consumer goods and services sectors.
Mars, a global chocolate brand, in the successful settlement of a trademark infringement suit. Mars Inc. v. the Hershey Co. et al., Civil Action No. 1-14-cv-00399 (Eastern District of Virginia).
Absolut Vodka in the successful representation of its affiliates in many US and European trademark infringement cases, including The Absolut Co. v. Happy Hearts Wine, Case No. 15-cv-3224 (Eastern District of New York) and The Absolut Co. v. TIML (U.K. High Court), among others.
Deutsche Lufthansa in numerous domain name proceeding wins, including a National Arbitration Forum Panel decision awarding the client the domain name (lh.com) in an ICANN complaint against Future Media Architects.
Secured more than 100 victories on behalf of AARP, Absolut, ogfish 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.).