Preliminary Injunctions Denied and Settlements Obtained in Trademark Infringement Actions
Defended several clients against trademark infringement preliminary injunction motions, driving favorable settlements for the clients.
Trademark Rights Enforced on Behalf of Consumer Goods Companies
Enforced trademark rights on behalf of various consumer goods companies.
Successful Trademark Settlement for OEM Supplier
Represented trademark OEM against supplier who used part numbers and references to OEM in sales activity. We settled the matter on favorable terms for our client.
Successfully contested a motion to compel in the U.S. District Court for Northern Illinois involving a trademark infringement matter.
Successful Settlement of Trademark Matter Ensures Right For Client to Keep Using Its Name
Settled a trademark infringement matter and secured the right for our client to keep using its name. We successfully drove the settlement by filing a motion to remove the case to federal court, a motion to dismiss the plaintiff's dilution claim, and advising plaintiff that it had no rights in its mark outside of its local area.
Trademark Rights Enforced on Behalf of Automotive OEMs
Enforced various trademark rights on behalf of automotive OEMs.
Successful Enforcement of Common Law Trademark
Represented a plaintiff inventor in federal litigation against a multinational housewares company for infringement of the plaintiff's common law trademark. The court granted summary judgment in our client's favor on liability and determined that our client owned the mark, that the defendant infringed the mark, and that defendant's infringement was willful, resulting in a multimillion-dollar settlement for our client.
Plaintiff Drops Trademark Infringement Action Against Nonprofit Veteran's Organization
Represented a nonprofit veteran's organization against a claim of trademark infringement by persuading the plaintiff to drop its claim.
Seizure of Infringing Shoes at Tradeshow
Represented shoe manufacturer in connection with enforcement of its design patents and trademarks. Successfully obtained and executed order permitting the seizure of shoes displayed at the World Shoe Association tradeshow.
National Steakhouse Settles Trademark Infringement Claim
Represented restaurant owners in defense of trademark infringement claims brought by national steakhouse. Successfully negotiated settlement of dispute.
Foreign Nationals' Online Casino Websites Shut Down for Trademark Infringement and Cybersquatting
Represented Las Vegas casinos in multiple trademark infringement and cybersquatting cases against foreign nationals operating online casinos using counterfeit trademarks. Successfully obtained orders shutting down the websites.
Franchisor Obtains Injunction
Represented a tutoring franchisor in litigation against a franchisee that continued using the franchisor's trade secrets, marks, and trade dress following termination of the franchise agreement. We prevailed against the franchisee's efforts to have the claims dismissed and removing the case to federal court, and obtained an injunction enjoining franchisee's wrongful conduct following an evidentiary hearing.
Successful Dismissal of Trademark Infringement Action – Metatag Evidence Too Speculative
Obtained dismissal of trademark infringement action against a manufacturing company in the Northern District of Illinois after previously defeating a motion for temporary restraining order. The Plaintiff asserted trademark infringement through metatags to direct online shopping search results. We successfully argued to the Court that the Plaintiff's allegations were based on speculation and contained no factual support.
Lead Counsel in Trademark Matters for Worldwide Leader in Diving and Safari Excursion Travel Industry
Lead counsel in prosecuting USPTO and U.S. Trademark Trial and Appellate Board proceedings that protect a global family of trademarks on behalf of a worldwide leader in the diving and safari excursion travel industry.
Protected NYSE® Corporation's Trademarks and Brand Name
Lead intellectual property litigation counsel for international NYSE® telecommunications and data center corporation in federal trademark litigation and strategic counseling to protect a worldwide brand name.
Trademarks Protected for Worldwide Leader in Textile Manufacturing and Luxury Hotel Linen Industry
Lead counsel in prosecuting USPTO and Trademark Trial and Appellate Board proceedings that protect a global family of trademarks on behalf of a worldwide leader in textile manufacturing and the luxury hotel linen industry.
Patent, Trademark, Copyright, and Trade Secret Rights Enforced on Behalf of U.S. and International Clients
As lead prosecution counsel and defense counsel, successfully negotiated and resolved scores of U.S. Federal Court patent, trademark, copyright, and trade secret intellectual property disputes involving U.S. and foreign companies, including international clients from, among other places, China, Canada, Mexico, Austria, and Australia.
Seizure of Infringing Nutritional Supplements at Tradeshow
Represented nutritional supplement manufacturer in connection with the enforcement of its patents and trademarks. Successfully obtained and executed order permitting the seizure of nutritional supplements displayed at SupplySide West tradeshow.
Successful Defense of Trademark Infringement Claims Against Healthcare Companies
Represented healthcare companies in defense of trademark infringement claims brought by public university.
Registrant of Domain Names Using Blackmail Scheme Identified
Represented owner of retail stores in action against anonymous registrant of domain names used in blackmail scheme. Obtained an order identifying registrant.
Dismissal with Prejudice Obtained in Design Patent Infringement Action
Secured a dismissal with prejudice in a case against our clients for design patent infringement, false advertising, and tortious interference in exchange for no payment from our client. We brought counterclaims for false assertion of patent coverage and false association under the Lanham Act, which drove the favorable settlement. AirHawk International, Ltd. v. TheRealCraigJ, LLC et al., 8:16-CV-00624 (C.D. Cal. 2016).
Seizure of Infringing Tires at Tradeshow
Represented tire manufacturer in connection with enforcement of its trademarks. Successfully obtained and executed order permitting the seizure of tires displayed at SEMA tradeshow.
Summary Judgment Granted for Shoe Manufacturer in Defense of Trademark Infringement Claims
Represented shoe manufacturer in defense of trademark infringement claims. Obtained an order striking plaintiff’s expert report and obtained summary judgment on behalf of shoe manufacturer.
Successful Settlement for Telecommunications Company in Trademark Ownership and Infringement Case
Successfully defended a telecommunications client in a complex trademark ownership and infringement case, reaching a favorable settlement after winning key victories in preliminary injunction and discovery motions.
In-House Counsel for Big Boy Restaurants
Acted as interim in-house general counsel for 12 months for Big Boy Restaurants International, a regional family restaurant franchisor, in matters such as advising, directing, and handling the legal aspects of franchising, leasing, construction, employment, insurance, property sales, trademark, and various other day-to-day legal matters as they arose.
Lead Trial Counsel for Dietary Supplement Manufacturer
Lead trial counsel for a popular dietary supplement manufacturer in numerous high stakes contract, business tort, trade secret, and trademark litigation matters nationally.
Jury Issues Defense Verdict on $5MM Copyright Claim
After a four-week jury trial, we successfully obtained a defense verdict on the plaintiff’s $5MM copyright claim alleging infringement on a website. We also successfully defended and limited plaintiff’s damage claims for infringement of a service mark (U.S. District Court for the Middle District of Florida).
Representation of Major OEM Automotive Vehicle Manufacturers in Anti-Counterfeiting Trademark and Copyright Matters
Represented major OEM automotive vehicle manufacturers in anti-counterfeiting trademark and copyright activity over a period extending more than 20 years.
Seizure Order, Permanent Injunction and $56MM Judgment for Shoe Manufacturer
Represented a shoe manufacturer in a copyright and trademark infringement action arising out of the sale of counterfeit footwear accessories. We obtained a seizure order, permanent injunction, and a $56MM judgment.
Temporary Restraining Order Issued Involving Infringing Cosmetics
Obtained an emergency temporary restraining order precluding distribution of infringing cosmetic products against former owners of plaintiff’s brand (U.S. District Court for the Northern District of Illinois).
Represented Franchisor in Bankruptcy and Intellectual Property Matters
Represented a franchisor in connection with a terminated franchisee's bankruptcy and the debtor's attempt to continue using the franchisor's trademarks, trade names, and service marks.
Settlement Obtained for Pharmacy in Unfair Competition and Lanham Act Suit
Successfully defended a small nuclear pharmacy against claims of unfair competition and violation of the Lanham Act. The matter settled shortly after the client obtained a favorable ruling on a motion for partial judgment. Syncor Int'l v. Biotech Pharmacy, Inc., No. 2:98-CV-01396 (D. Nev. 2002).