Even if it looks like a duck, walks like a duck, and quacks like a duck, it might really be a motion mark.
Pattishall partner Belinda Scrimenti obtained a service mark registration for the famous "Duck March" held at The Peabody Hotels' historic Memphis and sister hotels in Orlando and Little Rock--in which Mallard ducks parade from the rooftop, down the elevator, across a red carpet and into each hotel lobby's marble fountain daily. "While there are a handful of other motion marks on the trademark register, the Duck March truly is one of a kind," she explains.
Scrimenti focuses on protecting her clients' intellectual property rights throughout a brand's life stages--from counseling and clearance, to registration and enforcement, with over 25 years of experience litigating trade identity disputes.
Her national litigation experience has encompassed cases in more than 40 federal court districts and before the Trademark Trial and Appeal Board. She has litigated over 100 cases in federal courts involving trademark, trade dress, product configuration, unfair competition, dilution, domain name, copyright, counterfeiting, generic products, false advertising, and product disparagement claims.
Her trial experience includes cases in the Eastern District of Virginia's notorious "rocket docket" (where many domain name cases can be brought), a jurisdiction where cases go to trial within six to nine months. She has also litigated numerous ex parte motions for seizure and impoundment orders, and motions for temporary restraining orders and preliminary injunctions.
Her litigation experience is diverse. For example, she prevailed in a published preliminary injunction decision that served as a hallmark for a national enforcement program for the "Power Rangers" property. In a recent case, she served as lead counsel in a suit brought by one of the largest national casual dining restaurant chains against a competitor over trademark infringement of plaintiff's multi-million dollar signature dining promotion.
In addition to hotel and restaurant businesses, Scrimenti has represented clients in the fields of merchandised character and sports properties, toys and giftware, personal care products, cosmetics, apparel, luxury goods, computer technology, and publishing, as well as real estate development, construction, security, trade association, and managed health care services.
Scrimenti has counseled on and registered many nontraditional trademarks, including color, building design, configuration, sound, motion, and lengthy narrative marks. She's resolved Internet and domain name problems involving the removal of pornographic, political, and defamatory material from websites, through enforcement and Uniform Domain Name Dispute Resolution (UDRP) actions. She also supervised an international enforcement program to halt infringement of two internationally famous comic strip characters in over 50 countries.
Scrimenti's extensive litigation experience helps clients at all stages of the branding process. "My job is to be the 'worrier,'" Scrimenti says. "My motto is 'plan for the best, but prepare for the worst.' I always consider the potential ramifications of decisions made in the early stages of branding, to minimize the likelihood of disputes and litigation later; but at the same time, help clients be best prepared should litigation become necessary."
Scrimenti came to Pattishall laterally, most recently practicing in Washington, D.C. Of her Pattishall experience, she says, "While I already knew the firm by its premier reputation in our field, I now know first-hand how much more we offer clients. The firm has immense depth and breadth of talent and experience, led by nationally-recognized experts, that is second to none."
Industry Expertise
ˇ Consumer Durables & Apparel
ˇ Hotels, Restaurants & Leisure
ˇ Media
ˇ Retailing
ˇ Food & Drug Retailing
ˇ Food, Beverage & Tobacco
ˇ Household & Personal Products
ˇ Real Estate
ˇ Health Care Equipment & Services
ˇ Pharmaceuticals & Biotechnology
ˇ Commercial Services & Supplies
ˇ Transportation
ˇ Software & Services
ˇ Technology Hardware & Equipment
Honors & Awards
ˇ 2012 The International Who's Who of Trademark Lawyers 2012 : One of the world's leading Trademark lawyers
Trials, Appeals & Litigation
ˇ Bosch Security Systems, Inc. v. Seaguard Electronics, L.L.C. et al., Case No.: 2:11-cv-356 (D. Nev. 2011, Judge Hicks) (Defendants withdrew infringing trademark application, took down infringing website, and abandoned domain name at issue) (Trademark Infringement, Unfair Competition, Cybersquatting)
ˇ Darden Concepts, Inc., et al. v. Briad Restaurant Group, L.L.C., et. al., Case No.: 10 CV 2077 IEG (S.D. Cal. 2010) (permanent injunction on consent; confidential settlement) (Trademark Infringement, Unfair Competition, Trademark Dilution)
ˇ Peabody Management, Inc. (plaintiff in multiple cases for domain name infringement), NAF Case Nos. FA1009001349529, FA1009001349525, FA1010001349833 (NAF 2010) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
ˇ Peabody Management, Inc. v. Peabody Painting & Waterproofing, Inc., C.A. No. 2:2007cv02675-dkv (W.D. Tenn. 2007) (Judge Donald) (Trademark Infringement)
ˇ Slazengers Ltd. v. The Sports Authority, Inc., Case No. 1:2007-cv-01024 (E.D. Va. 2008, Judge O'Grady) (gray market golf ball case) (Trademark)
ˇ Spansion LLC v. Esalk LLC, Case No. D2007-1237 (WIPO 2007) (ADR, arbitration, Mediation, and Expert Witnesses)
ˇ Darden Corp. et al (Olive Garden) v. IHOP Corp., Case No. 6:2004cv00149 (M.D. Fla. 2005, Judge Sharp) (Trademark Infringement)
ˇ Peabody Management v. Sunburst Hospitality, et al, Case No. 8:2003cv00509 (D. Md. 2003, Judge Chasanow) (General)
ˇ Daniel H. Shooster v. BT Orlando, LP, Case No. 1:1999cv02048 (S.D. Fla. 2001, Judge Huck) and Opposition No. 91119471 (TTAB 2002) (General)
ˇ Adrien Arpel, Inc. v. California Fragrance Company, Cancellation No. 92025508 (TTAB 1998) (General)
ˇ Healthcare Compare v. United Payors, et al, Case No. 1:1996cv02518 (N.D. Ill. 2000, Judge Moran) (on behalf of key non-party witness) (General)
ˇ In Re: First Health Group, et al v. United Payors, Case No. 8:1999mc00019 (M.D. Fla. 1999, Judge Bucklew) (on behalf of key non-party witness) (General)
ˇ Saban Entertainment, et al v. Rubie's Costume Co., Case No. 1:1994cv03592 (E.D.N.Y. 1997, Judge Trager) (General)
ˇ Bob DeGabrielle & Associates, Inc. v. Florez & Florez, Case No. 2:1997cv00012 (E.D.N.C. 1997, Judge Howard) (General)
ˇ Saban Entertainment, et al v. 222 World Corp., et al, 865 F. Supp. 1047 (S.D.N.Y. 1994, Judge Chin) (General)
ˇ Control Risks Group, et al v. Corporate Risk Intl, et al, Case No. 1:1993cv01494 (E.D. Va. 1994) (General)
ˇ Ganz Bros. Toys v. Midwest Importers, et al, Case No. 1:1993cv00549 (E.D.N.Y. 1993) (General)
ˇ NEXxUS Products Co. v. Gentle Concepts Inc., 28 U.S.P.Q.2d 1257 (M.D. Fla. 1993, Judge Duggan) (General)
ˇ Caterpillar, Inc., et al v. Kat-Parts, et al, Case No. 4:1991cv00444 (S.D. Tex. 1993, Judge Black) (General)
Professional Activities
ˇ International Trademark Association : 2012-2013 Emerging Issues Committee
ˇ Women's Bar Association of Illinois : Director, 2010-2012, 2012-1014
ˇ Women's Bar Association of Illinois : Chair, Corporate Committee, 2011-2012
ˇ Women's Bar Association of Illinois : Co-Chair, Bylaws Committee, 2011-2012
ˇ International Trademark Association : 2010-2011 Non-Traditional Marks Committee, U.S.P.T.O. Non-traditional mark analysis project and non-traditional mark decisions court monitoring project (7th Circuit)
ˇ Women's Bar Association of Illinois : Co-chair, Joint Professional Dinner, 2010
ˇ Women's Bar Association of Illinois : Co-chair, Corporate Counsel and Programming Committees, 2010-2011
ˇ International Trademark Association : 2008-09 Non-Traditional Marks Committee, and Non-traditional mark decisions court monitoring project (7th Circuit)
ˇ International Trademark Association : 2007 Annual Meeting Committee Project Team Group Leader
ˇ International Anti-Counterfeiting Coalition : Lobbied passage of Maryland state anti-counterfeiting statute
ˇ International Trademark Association : 2005 Anti-Counterfeiting Seminar Forum Project Team
ˇ International Trademark Association : 2003 Madrid 101 Distance Learning Seminar Project Team
ˇ International Trademark Association : Programs, Public Relations and Legislation Committees
ˇ International Anti-Counterfeiting Coalition : Former Biannual Meeting Co-Chair
ˇ American Intellectual Property Law Association : Member
ˇ Intellectual Property Law Association of Chicago : Member, Domestic and International Trademark Committees
ˇ American Bar Association : Intellectual Property and Litigation Sections; Entertainment and Sports Industry Forum
ˇ District of Columbia Bar Association; Sections of Patent, Trademark and Copyright Law : Arts, Entertainment and Sports Law
ˇ Women's Bar Association of Washington, D.C. : Sustaining Member, Intellectual Property Law Committee
ˇ Virginia State Bar Association : Member, Intellectual Property Section
ˇ Ohio State Bar Association : Member
ˇ Illinois State Bar Association : Member
ˇ Chicago Bar Association : Member, Intellectual Property Section
ˇ Women's Bar Association of Illinois : Member, Joint Professional Dinner and Annual Meeting Dinner Committees
Publications
ˇ "A Legal Kaleidoscope - Single Color Trademarks From pre-Owens-Corning Pink Insulation to Louboutin Red-Soled Shoes," ABA Section of IP Law, 27th Annual Intellectual Property Conference Paper (March 2012)
ˇ Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names, WBAI Fall Newsletter (October 2011)
ˇ Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names - Deadline for Sunrise Period for Blocking Registrations is October 28, 2011, Pattishall IP News (August 2011)
ˇ The Likely Impact of a Federal Government Shutdown on the United States Patent and Trademark Office, Copyright Office, and Federal Courts, Pattishall IP News (April 2011)
ˇ Co-authored a chapter supplement on "State Trademark and Unfair Competition Law Remedies," for the American Bar Association/BNA book Trademark Infringement Remedies (November 2010)
ˇ USPTO Registers Unique "Non-Traditional" Service Mark: A 109-Word Narrative Story -- Registration of The Peabody Hotels' "Legend of the Ducks" Follows Earlier Motion Mark Registration of its Iconic Duck March, Pattishall IP News (October 2010)
ˇ "U.S. Supreme Court Upholds Federal Court Jurisdiction Over Copyright Infringement Claims for Unregistered Works: Reed Elsevier, Inc. v. Munchink," Pattishall IP News (March 2010)
ˇ "Chicago Trademark Attorneys successfully conclude Federal court litigation to protect the Peabody Hotels' Peabody name and famed marching ducks," Pattishall IP News (May 2009)
ˇ Book chapter, "State Trademark and Unfair Competition Law Remedies," Trademark Infringement Remedies (ABA/BNA 2006; Supps. 2006, 2007, 2008).
ˇ "Defending Copyright Infringement Claims Involving the 'Total Look and Feel' of Literary and Artistic Works", American Intellectual Property Law Association, Fall 1995, AIPLA Selected Legal Papers.
ˇ "Trademark Law Revision Act of 1988 and Its Impact on Trademark Prosecution and Enforcement in the U.S.," 3 The Corporate Analyst 176 (1991) (Co-Author).
ˇ "A Journalist's View of The Progressive Case: A Look at the Press, Prior Restraint and the First Amendment from the Pentagon Papers Cases to the Future," 41 Ohio State L.J. 1165 (1980).
Presentations
ˇ "The Rise and Fall of Aesthetic Functionality," ABA 27th Annual Intellectual Property Law Conference, Arlington, VA (March 2012).
ˇ "How Do Small Women-Owned Businesses Protect Intellectual Property?," Women's Business Development Center's "Connection Points," Chicago, IL (December 2011).
ˇ "It's Not Your Grandfather's Trademark - It's a Theme, It's Colorful, It's Noisy, It Moves, It's Shapely, It Lights Up, etc. ("The Creative World of Trade Dress and Non-Traditional Marks")," Texas Bar CLE Program, Austin, Texas (October 2011).
ˇ "Your Association is a Brand -- Protect it Like One: Hot Topics on Protection of Trade and Professional Association Intellectual Property Rights," Chicago Bar Association (December 2008).
ˇ "The Foundation Of International Enforcement Against Counterfeiting - International Trademark Registration And Border Control Registration Protections," IQPC Seminar (September 2007).
ˇ "Worldwide Registration to Protect Brands," IQPC/Legal IQ Workshop (October 2006).
ˇ "The Borders Beyond - Using U.S. and Foreign Customs Agencies To Halt Exportation and Importation of Counterfeits Worldwide," INTA Anti-Counterfeiting Forum (February 2005).
ˇ "Filing and Prosecution Strategies," INTA Madrid 101 Distance Learning Seminar (December 2003).
ˇ "Navigating Copyright and Trademark Basics," IACC Meeting Enforcement Seminar & Handbook (October 2000).
ˇ "Damages in Trademark Cases," IACC Meeting (October 1998).
ˇ "Success in Trade Dress Litigation Can Mean More Than An Injunction - The Tools Plaintiffs Need To Improve Prospects For Monetary Relief," INTA Spring Forum on Trade Dress (February 1997).
ˇ "Defending Copyright Infringement Claims Involving the 'Total Look and Feel' of Literary or Artistic Works," AIPLA Annual Meeting (1995).
ˇ "Annual Trends in Anticounterfeiting: 1994-1995," IACC Meeting (1995).
ˇ "Fundamentals of Copyright" and "Protection of Copyrights in Judicial Reports - From the 19th Century to West Publishing Co. v. Mead Data Central, Inc. to Feist Publications, Inc. v. Rural Telephone Service Co.," Association of Judicial Court Reporters Annual Meeting (1991).