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

Practice/Industry Group Overview

Valuable trademarks require comprehensive protection
Successful companies rely on the power of their trademarks and brands to communicate the quality and distinctiveness of their products and services.  Trademarks are typically some of the most valuable assets of a company.  Infringement or dilution of a mark can cost millions in revenue and goodwill.  With our proven track record in high-profile litigation and noncontentious matters, in-house counsel and other leading trademark practitioners consistently look to Finnegan to handle their most complex, high-stakes matters.

One of the most successful trademark practices in the world
Finnegan’s trademark practice is renowned for its experience, sophistication, creativity, and depth.  We have more than 25 lawyers who practice solely or primarily trademark law.  Among our ranks, we have seasoned litigators, two former trademark counsel for major corporations, and a former administrative law judge and examining attorney from the Trademark Trial and Appeal Board (TTAB).  Our practice also includes an enviable core of experienced trademark legal assistants and staff professionals, including portfolio managers, in-house investigators, and a domain name expert.  Our extensive experience with virtually every type of product and service and every facet of trademark protection helps us advise clients on the best path to protect, advocate, and leverage valuable IP assets.  With a proven track record in high-profile litigation and non-contentious matters, in-house counsel and other leading trademark practitioners consistently rank Finnegan as one of the most successful trademark practices in the world.

A comprehensive practice
We follow the life of a mark from selection, clearance, prosecution, and maintenance to portfolio management, trademark audits, licensing, watch services, disputes, and litigation. The scope of our practice offers great flexibility. For many clients, we provide the full range of trademark services, while others seek our assistance for some of these categories on a project-by-project basis.

Trademark counseling and prosecution
Finnegan’s experience in preparing trademark opinions and in filing, prosecuting, and maintaining both U.S. and foreign trademark applications and registrations is clearly demonstrated by the number of trademark matters we handle.  During a typical year, we provide thousands of trademark clearance opinions.  We are currently responsible for more than 20,000 trademark applications and registrations (U.S. and foreign), and we regularly manage large trademark portfolios, including portfolios totaling more than 4,500 registrations/applications covering over 200 countries.

Domestic Trademarks
Before adopting a trademark, we advise clients on strategies for selecting “strong” marks that are immediately protectable and registrable.  If a client prefers to use a term or mark descriptively, we can advise on how to use the term to place the client in the best possible position should it be challenged.  Our counseling during the early phases of trademark development helps avoid costly conflicts or enforcement problems down the road.

Once a mark is selected, we conduct availability searches and render clear, practical opinions.  We carefully evaluate each search request to ascertain the goods or services to search, the type of search to order, and whether to search any supplemental sources.  Moreover, our opinions are not based solely on the search results as they appear in the search report.  We investigate relevant marks and names to determine if they are in use and, if so, the nature and extent of any rights their owners may possess.  Our extensive litigation experience allows us to provide realistic opinions on a mark’s availability, as well as practical recommendations on using and registering the mark to avoid or minimize potential problems.

For Finnegan, trademark filings are not simply routine administrative matters—we work to develop an appropriate strategy regarding the form of the mark and how broadly or narrowly to describe goods or services.  We take into account the search results and possible disputes down the road.  We also consider future plans for the mark to make sure all relevant goods or services are covered by the application.  In prosecuting applications, we provide practical advice on the best and most efficient ways to respond to refusals.  If needed, we can call on the expertise of our former TTAB judge/PTO examining attorney.

International Trademarks
As with U.S. prosecution, Finnegan does not treat foreign trademark filings as routine administrative matters.  Rather, we look at the nature of the mark, the U.S. application, any U.S. or foreign search results, and potential disputes, and discuss future plans for the mark with the client.  We can then develop appropriate foreign filing strategies in terms of the form of the mark and the scope of the goods or services. 

We have nurtured a network of trademark lawyers and agents around the world to assist with foreign trademark filings.  We select foreign counsel based on their ability to provide the high level of service our clients expect.  If a client prefers to maintain its existing relationship with a firm, we are happy to comply.  Upon receipt of a communication from foreign counsel, we report the matter to the client along with a suggested strategy.  We carefully review the counsel’s recommendations and work out a response or opposition strategy that is persuasive.  We also look at whether a strategy comports with that taken in other countries and, if not, whether a departure from prior practice is warranted and the impact of doing so.  We have extensive experience with international clearance projects.  We present search results in organized and streamlined formats that are easy to understand, contain concise summaries, and include specific advice on recommended actions.  In particular, we provide practical guidance and risk analysis, because many foreign counsel are highly conservative and identify numerous “problematic” marks.  We analyze the “problematic” marks and separate them into categories of real problems and potential problems.  We further recommend precise steps to take to attempt to address any potential problems (e.g., negotiate consent agreements, acquire rights).

Services Available

Trademark litigation
Our counseling services often begin at a trademark’s inception with proactive advice during the selection and prosecution process to help avoid or minimize the chances of litigation.  But when problems arise and valuable trademark rights are at stake or an accusation has been made, we believe it pays to have seasoned litigators on your side.  We have handled cases that span numerous industries and implicate all types of trademark rights.  Representing both plaintiffs and defendants, our lawyers have decades of experience litigating both large and small trademark cases before courts throughout the country.  We regularly appear before the U.S. Patent and Trademark Office and its Trademark Trial and Appeal Board, the International Trade Commission, district courts, and other tribunals.

Our vast litigation experience makes our attorneys well versed in the best ways to approach cases, whether large or small, complex or straightforward.  We assess the potential risks and rewards of disputes and provide creative solutions for clients of all sizes.

Infringement and Dilution
Our litigation practice covers all types of trademark infringement and dilution cases involving trademarks, service marks, trade dress, product configuration, trade names, domain names, letters, numbers, colors, and telephone numbers.  We have an impressive track record of favorably resolving litigations for our clients, whether by choosing a forum that gives clients the best chance to win on the law, filing a motion to dismiss, obtaining an early temporary restraining order or preliminary injunction, positioning a case for settlement, moving for summary judgment, or taking the case to trial.

One of our strengths is the use of experts to enhance our clients’ legal positions.  For many years, we have worked with numerous consumer survey experts on a wide range of issues in trademark litigation, including likelihood of confusion, likelihood of dilution, genericness, secondary meaning, and fame.  We also make strategic use of other experts in areas such as linguistics, marketing, consumer psychology, industry practices, and damages.

Domain Name Litigation and UDRPs
We have developed an international reputation as a leading expert in the field of domain names.  We have handled more than 70 civil litigations in the U.S. involving domain names, spanning industries such as food and beverages, hospitality, computer and electronics, and media and entertainment.

Our lawyers handle hundreds of domain name disputes each year and have filed or defended more than 400 complaints under ICANN’s Uniform Dispute Resolution Policy for more than 100 different clients.  We have addressed a wide variety of factual scenarios and issues with these complaints. 

Finnegan’s experience stretches well beyond the U.S.  We have coordinated or assisted with litigation involving generic top-level domains and country-code top-level domains in many foreign countries, including Argentina, Australia, Brazil, Chile, Denmark, Germany, Greece, India, Israel, Mexico, the Netherlands, Portugal, and Uruguay.  Favorable decisions have been issued in all cases decided to date, including what are believed to be the first such decisions in India and Israel.

Because of the pervasive nature and extent of cybersquatting and infringement activity on the Internet, we have advised clients on developing domain name registration strategies to help avoid or minimize more costly enforcement work down the road.  We also help clients manage and set priorities for enforcement efforts by developing specific guidelines and strategies.

Our domain name and Internet expertise derives not only from our extensive practical experience in handling such matters, but also from writing and speaking on these topics. Finnegan attorneys author articles on trademark issues arising from the Internet, including fair use, linking, metatagging, and the Anticybersquatting Consumer Protection Act, and we also review and summarize all significant Internet-related trademark decisions from U.S. courts and post the summaries on our Web site.

Counterfeiting/Gray-market Goods
Counterfeiting and gray-market goods are growing at an alarming rate, resulting in industry losses of billions of dollars annually.  When our clients’ trademarks are challenged in these ways, we act swiftly against both manufacturers and distributors to stop the flow of counterfeit and gray-market goods.  We regularly appear in courts across the U.S. and have successfully obtained emergency injunctive relief for our clients, including ex parte seizures, temporary restraining orders, and preliminary injunctions.  Our international presence allows us to implement global brand protection programs quickly and effectively.

False Advertising
If a client’s brand and goodwill are threatened by false statements or deceptive advertising, immediate relief is often needed.  We are well versed with the Lanham Act and understand the nuances of false statements, deceptive practices, and consumer confusion.  We have successfully achieved swift resolutions for our clients, including restraining orders.

TTAB Litigation
In 2007, the rules of practice before the TTAB changed—making its proceedings more like civil litigation, including initial, expert, and pretrial disclosures.  While the rule changes may be a challenge for many firms, Finnegan has a wealth of experience in civil litigation, and we are well prepared to guide our clients through these new rules. 

We have had a substantial practice before the TTAB for decades and typically file or defend as many as 200 new U.S. oppositions and cancellations each year. We have approximately 300 to 400 active U.S. oppositions and cancellations at any time. Many of our trademark attorneys have extensive expertise in handling opposition and cancellation proceedings before the TTAB. Before joining Finnegan in 2002, one of our attorneys had a 10-year career at the PTO, where she held the positions of Administrative Trademark Judge and Interlocutory Attorney with the TTAB, and Examining Attorney for the PTO. As an Administrative Trademark Judge, she presided over opposition and cancellation proceedings and ex parte appeals from final decisions of the PTO. During this time, she authored more than 100 decisions on the merits and more than 60 summary judgment decisions, and heard over 70 oral arguments and telephone hearings. As an Interlocutory Attorney, she authored more than 150 summary judgment decisions. As an Examining Attorney, she also argued numerous ex parte appeals before the TTAB.

We treat each opposition and cancellation as a unique matter.  We look at the claims and defenses and the relevant evidence in view of our client’s goals, resources, and the merits of the case.  We then formulate a plan to best achieve that client’s goals, whether by settlement or trying the case.  In particular, we develop an early discovery plan for each case.  We often recommend minimal, targeted discovery and sometimes no discovery at all.  In cases where we represent the plaintiff, we create overall strategies, taking into consideration the nature and extent of the opponent’s use (if any) of the challenged mark.

Our client base is diverse and global
We represent small and large companies from a range of industries, including pharmaceuticals and biotechnology, financial services, publishing, the Internet, entertainment, computers and telecommunications, consumer products, automotive, and manufacturing.  We also represent several government agencies.  Our clients include:

• ABC Television
• babystyle
• Banana Republic
• Caterpillar
• Cirque du Soleil
• Disney
• Fox Entertainment
• Freddie Mac
• Fuente Cigar
• Genzyme
• Harley-Davidson
• Head
• Human Genome Sciences
• LG Electronics
• SAIC
• Starbucks
• Toshiba
• U.S. Postal Service
• U.S. Securities and Exchange Commission
• Yahoo! 

Our rankings tell part of the story
Over the years, we are proud to have been honored by our peers and in-house counsel.  Our most recent rankings include:

Full Service U.S. IP Firm of the Year, 2008
(Managing Intellectual Property)

#1 Tier U.S. Law Firm for Trademark Litigation and Non-Contentious Work, 2008
(Managing Intellectual Property’s World IP survey)

#1 Tier Law Firm for Trademark Litigation and Non-Contentious, 2008
(The Legal 500 U.S.)

#1 or #2 Tier U.S. Law Firm for Trademark Litigation and Non-Contentious Work, 2005-2007
(Managing Intellectual Property’s World IP surveys)

#1 Tier Law Firm for Trademark Litigation, 2007
(The Legal 500 U.S.)

#1 Tier U.S. Law Firm for Intellectual Property, 2007, 2008
(Chambers USA:  America’s Leading Lawyers for Business)

IP Litigation Department of the Year, 2006
(The American Lawyer and IP Law & Business)

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.

Cirque du Soleil maintains its good name
Cirque du Soleil turned to Finnegan when its brand name was misused in advertising. We obtained a temporary restraining order enjoining a nightclub from falsely advertising that Cirque du Soleil would be performing at the club’s New Year's Eve party.

Comprehensive patent transactions and strategic counseling for an international leader in the mining and distribution of industrial minerals
Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.

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.

Keeping Disney’s name secure on the internet
Finnegan successfully prosecuted an in rem action under the ACPA on behalf of Disney against 35 domain names owned by 24 different registrants, obtaining consent judgments from 22 of the domain name defendants and default judgments against the remaining defendants.

Protecting a legendary newspaper’s brand on the internet
Finnegan obtained an ex parte temporary restraining order for The Washington Post against typosquatters who registered the domain name washintonpost.com and used it for an adult-entertainment website.

Protecting a trade association’s reputation, trademark, and consumer safety in the oil and gas industry
Finnegan represented the American Petroleum Institute (API), the nation’s leading trade association for petroleum companies. Defendant PEMCO had unsuccessfully sought to have oil drilling and oil well equipment certified by API. Despite the fact that it was not certified, PEMCO placed a counterfeit of the API certification mark on its products. API objected and PEMCO agreed to cease using the counterfeit API certification mark. API later discovered that PEMCO was continuing to use the counterfeit API certification mark and retained Finnegan to sue PEMCO for trademark infringement, counterfeiting, and breach of contract. PEMCO agreed to a permanent injunction against further use of the API marks and payment of API’s costs. This result successfully stopped a counterfeiting operation that falsely passed off uncertified products as meeting API’s safety standards.

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.

The world’s largest maker of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines relies on us for patent protection
Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the U.S. and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, and other subjects. During our relationship, we have also advised on intellectual property issues related to government contracts, licensing, and copyrights, and more recently, we have taken on a significant role protecting Caterpillar's well-known trademarks around the world.