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

Practice/Industry Group Overview

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.

Services Available

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.

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.

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.