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

Practice/Industry Group Overview

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.

Representative Engagements

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.

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).