Trademark & Related IP Litigation

iplitigation

Ropes & Gray’s experienced IP litigators help leading businesses protect against unfair competition in the form of trademark infringement or false advertising.

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Overview

Protecting Your Reputation

We understand that protecting a company’s brand and the reputation and image of its products or services is critical to success in today’s marketplace. Whether it involves asserting or defending claims of trademark infringement or false advertising, we provide our clients with unmatched client service and in-depth substantive experience.

Attorneys in our trademark and false advertising litigation practice bring with them decades of experience and knowledge across diverse industries. We have a sophisticated understanding of the trademark and advertising laws that affect our clients, including the Lanham Act; Federal Trade Commission Act; Food, Drug & Cosmetics Act; and state unfair competition and false advertising laws. Our clients represent a broad range of fields, including financial services, the Internet, consumer products, telecommunications, food and beverage, electronics, publishing, chemicals, pharmaceuticals, software, and personal care and cosmetics.

Experienced and Successful Litigators

We are, first and foremost, trial lawyers, with an established record of courtroom success in trademark and false advertising cases. The clients for which we have handled such matters include a host of well-known brand owners, including Charles Shaw Wine, Dow Jones, Gillette, Nestlé, Oscar de la Renta and Simmons Bedding.

Our clients’ disputes often span multiple countries, and we work closely with a network of trusted international counterparts to coordinate a global strategy for such matters. Trademark or false advertising disputes often require immediate action, and our attorneys are well versed in helping clients obtain injunctive relief, including temporary restraining orders. When resolution outside the courtroom is not possible, we vigorously represent our clients in both jury and nonjury trials, in federal, state and appellate courts, and arbitration tribunals. We can quickly assemble an experienced team, including expert witnesses, who can guide a client through discovery, trial preparation and trial.

We routinely and deftly represent clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. We also have substantial experience in litigation between licensors and licensees, and in franchise disputes. Our attorneys have handled numerous Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings to protect clients’ trademarks against infringing domain names, and have litigated cybersquatting actions and disputes over search engine keyword advertising, metatags, pop-up ads and other types of online piracy and infringement.

With respect to advertising litigation, our practice encompasses all manner of disputes, including intercompetitor controversies involving false or misleading statements, comparative advertising, claim substantiation, and consumer class actions. In addition to jury and bench trials in federal and state courts, we have substantial experience in proceedings before industry and regulatory bodies such as the National Advertising Division, the FDA and the Federal Trade Commission, and are familiar with the nuances of their policies and procedures.

Problem Solvers and Trusted Advisors

We are skilled negotiators and committed problem solvers who do not believe that every dispute requires litigation, which can be protracted and expensive. When disputes arise, we counsel clients on alternatives to litigation, including informal and formal methods of resolution. We bring a practical and cost-conscious approach to every matter and strive to find ways to resolve disputes as efficiently as possible, consistent with the client’s objectives. When alternative dispute resolution is appropriate, we bring to bear our substantial experience in mediation and arbitration.

Exceptional Client Service

In both counseling and litigation, our commitment to client service is simple: collaborate with clients to create effective solutions that respond to their business needs. We work in a manner that is efficient, effective and consistent with the client’s strategic objectives.

Experience

Our trademark and false advertising litigation experience includes a number of precedent-setting cases and other significant engagements. Here are some noteworthy examples:

  • We represent TRIA Beauty, the leading maker of laser-based aesthetic devices for home use, in trademark, false advertising and unfair competition matters throughout the United States.
  • We regularly represent the Institut National de l’Origine et de la Qualité, an agency of the French government responsible for regulating the use of noteworthy product names based on geography of production, in disputes over unauthorized use of those names in brands and other product designations in the United States. Additionally, we represent the Comité Interprofessionnel du Vin de Champagne and the Bureau National Interprofessionnel du Cognac, both of France, in similar matters. We have appeared in numerous trademark opposition proceedings in the U.S. Trademark Trial and Appeal Board, including a precedent-setting and successful opposition to registration of the mark "Canadian Mist and Cognac."
  • We served as counsel for Gillette in a series of Lanham Act false advertising suits against rival Schick Manufacturing in what became known as the “razor wars.”
  • In Home Box Office (HBO) v. Showtime/The MovieChannel, the court devised a new standard for testing the adequacy of a disclaimer in upholding the rights of our client, HBO.
  • We represented Oscar de la Renta, Ltd. in a litigation and arbitration with its former global fragrance trademark licensee, which resulted in restoring the fragrance line to our client.
  • In Nestle v. Casa Helvetia, the court, in excluding gray market Perugina chocolates, clarified the circumstances under which the sale of gray market goods can be enjoined.
  • In Toy Manufacturers Association v. Helmsley-Spear, we relied on a trade dress theory to persuade the court to enjoin the defendant’s use of its own building lobby, and to allow our client to use the defendant’s lobby to register attendees for its well-known trade show TOY FAIR, as our client had done for decades.
  • We handled a series of counterfeiting matters for Ford Motor Company in which we worked closely with law enforcement agencies and prosecutors to obtain the conviction of one of the largest distributors of generic automobile parts in New York.

Awards