Practice Areas & Industries: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Practice/Industry Group Overview

Full representation for your mark.
Our counseling services often begin at a trademark’s inception, with proactive advice during the selection and prosecution process. But when problems arise and valuable trademark rights are at stake, clients like Caterpillar, Disney, and Yahoo! rely on Finnegan’s experience to solve them. Both Managing Intellectual Property and The Legal 500 U.S. have recognized Finnegan’s trademark litigation experience, naming Finnegan the #1 U.S. Law Firm for Trademark Litigation in 2008 (Managing Intellectual Property) and the #1 IP Law Firm for Trademark Litigation in 2007 and 2008 (The Legal 500 U.S.).

Services Available

Finnegan has handled cases that span numerous industries and implicate all types of trademark rights, including trademarks, service marks, trade dress, product configurations, trade names, and even telephone numbers. Representing both plaintiffs and defendants, our lawyers have decades of experience litigating both large and small trademark cases before courts throughout the country. We routinely appear before the U.S. Patent and Trademark Office and its Trademark Trial and Appeal Board (TTAB), the U.S. International Trade Commission, and other tribunals. Our trademark team includes a former administrative law judge at the TTAB.

We’ve developed an international reputation in the area of domain names and other Internet-related trademark issues. We have written summaries of every Internet-related trademark decision from U.S. courts. Our lawyers handle hundreds of domain name resolutions each year and have filed or defended approximately 400 complaints under the Uniform Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.

Representative Engagements

Caterpillar relies on Finnegan for a full range of trademark services
Since 2000, Finnegan has worked closely with Caterpillar in protecting its well-known trademarks around the world. Recently, we obtained a preliminary injunction for Caterpillar against use of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR, the yellow and black color combination for footwear and any associated packaging or labels, and/or any other trademarks, trade names, trade dress, logos, or other names or identifiers confusingly similar to the CATERPILLAR or CAT marks and/or Caterpillar’s footwear trade dress.

Fast relief for Yahoo!
When Yahoo!’s famous YAHOO! trademark was misused on the Internet, the company turned to Finnegan. We obtained a temporary restraining order for Yahoo!, enjoining the defendants from using the domain name 21yahoo.com for a website offering free stock in 21Yahoo.com, Inc. In a separate matter, we obtained an ex parte temporary restraining order for Yahoo! against typosquatters who registered the domain name yaholigans.com (a typo of the name of Yahoo!’s children’s site, YAHOOLIGANS!), among others, and used them for an adult-entertainment site.

Protecting one of the most recognized global marks-the STARBUCKS trademark
Starbucks is a household name with thousands of retail locations across the globe and a brand that extends well beyond coffee. Finnegan successfully opposed an application for the mark LESSBUCKS COFFEE for coffee, tea, and coffee- and tea-based beverages and related retail locations. We obtained a ruling that the STARBUCKS trademarks is a famous mark entitled to a broad scope of protection, and that the LESSBUCKS mark was likely to cause confusion.

Protecting the trademark of a household name
When LG’s “Life’s Good” and “LG Life’s Good” corporate taglines were challenged, the company turned to Finnegan. On the eve of the trial, the plaintiff agreed to dismiss with prejudice all claims. The “Life’s Good” campaign and mark continue to run globally for a wide range of products. The firm has also protected and defended some of LG’s most critical patents.

Stopping the unauthorized sale, distribution, and importation into the U.S. of gray-market soft drinks
Beverage giant AMBEV filed suit against Express Foods, Inc. and Paulmar Inc. (“Defendants”) seeking relief from Defendants’ unauthorized sale, distribution, and importation into the U.S. of gray-market GUARANA ANTARCTICA soft drinks from Brazil, the most popular soft drink in Brazil. AmBev asserted claims for copyright infringement, trademark infringement, and unfair competition. AmBev prevailed and obtained a consent judgment, which permanently enjoined Defendants from importing, offering for sale, and distributing any GUARANA ANTARCTICA products other than GUARANA ANTARCTICA products made by AmBev specifically for the U.S. market (i.e., non-gray-market products).

Successful defense of the Toyota MATRIX trademark
Matrix Motor Company, Inc. alleged that the Toyota MATRIX passenger car infringed the MATRIX trademark allegedly used for race cars and related components and parts. The plaintiff sought an injunction and damages, but the judge granted our motion for summary judgment, finding no likelihood of confusion between the parties’ respective uses of the MATRIX mark.