Practice Areas & Industries: Kilpatrick Stockton LLP

Practice/Industry Group Overview

Kilpatrick Stockton is unique among general practice firms in the practice of IP law. Our Intellectual Property Practice is one of the largest in the firm, and is further supported by lawyers in the Litigation Group, many of whom have experience in the protection and defense of intellectual property assets and holdings from trademarks to patents to copyrights.

Commitment to the practice of intellectual property law is woven into our firm's fabric at the highest levels of management. In an independent worldwide survey taken among in-house and private practitioners, the trade publication Managing Intellectual Property rated our firm chairman as #2 of the top 50 practicing trademark lawyers in the world. Our firm-wide Managing Partner, Bill Brewster, also practices in the Intellectual Property Group.

Whether representing clients in trademark, copyright or patent proceedings among many others, our firm subscribes to a philosophy of partnership. Through the collaboration of knowledge and ideas, we share both the risks and rewards of your business.

TRADEMARK PRACTICE

We built our reputation in the trademark field long before other general practice firms began to recognize the value of Intellectual Property. As early as 1893, Kilpatrick Stockton secured a federal trademark registration of the COCA-COLA trademark. Later, firm partner Harold Hirsch -- one of the early leaders in the field of trademark and unfair competition law -- worked on behalf of the cola company to persuade the Supreme Court to recognize a doctrine of secondary meaning in trademark law in Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143 (1920). We subsequently advised the Coca-Cola Company to adopt a uniform bottle shape, for which the firm obtained trademark protection.

We have steadfastly built upon this tradition. In an independent worldwide survey taken among more than 4000 in-house and private practitioners, the trade publication Managing Intellectual Property rated our firm chairman, Miles Alexander, as #2 of the top 50 practicing trademark lawyers in the world. This same publication ranks our trademark litigation group in the top five leading practices in the United States, making Kilpatrick Stockton the highest rated general practice firm. Seven of our IP partners were ranked by their peers among the very top trademark lawyers in Euromoney's (Managing IP Magazine) 2004 Guide to the World's Leading Trademark Practitioners. The International Who's Who of Business Lawyers for 2004-2005 names three Kilpatrick Stockton trademark partners.

Services Available

With thirty-five attorneys dedicated full-time to the trademark practice, Kilpatrick Stockton offers comprehensive domestic and international services that include experience in a number of specialty areas:

• Trademark selection and branding
• Trademark prosecution
• Infringement litigation
• Inter partes litigation in the United States Patent and Trademark Office and before other registries around the world
• Domain name disputes and other cyber-litigation
• Alternative Dispute Resolution (ADR)
• International licensing
• Sweepstakes, advertising, and promotion law
• Structuring of intellectual property holding companies in the U.S., Europe, and various other jurisdictions
• International trademark portfolio management for U.S. and European brand owners
• Multinational counseling, prosecution, enforcement and litigation
• Software and digital rights counseling and management
• Exploitation of musical and other works
• Exploitation of merchandising rights
• Protection and enforcement of personality rights

Kilpatrick Stockton's IP expertise has been repeatedly recognized by leading IP organizations:

• 13 Kilpatrick Stockton IP lawyers were recognized in the 2005-2006 edition of The Best Lawyers in America®.
• Three Kilpatrick Stockton trademark partners ¿ Miles Alexander, George Little, and Virginia Taylor ¿ are Distinguished Neutrals on the International Trademark Association/Center for Public Resources panel of approved neutrals. Kilpatrick Stockton is the only firm in the U.S. with as many members.
• The 2004-2005 edition of Chambers USA: America's Leading Business Lawyers names seven Kilpatrick Stockton attorney as "Leading Individuals" -- the most of any U.S. firm.
• The May 2003 issue of Intellectual Property Today recognized Kilpatrick Stockton as #13 on its list of "Top Trademark Firms."
• Kilpatrick Stockton attorneys have been selected as authors for the International Trademark Association amicus briefs in the five most recent United State Supreme Court trademark decisions.

Kilpatrick Stockton attorneys employ a proactive approach, working to counsel companies regarding the protection of all manner of intellectual property, from conventional trademarks to non-conventional articles like packaging or sounds. Our attorneys regularly perform these tasks for hundreds of companies. For some of these clients, Kilpatrick Stockton acts as lead trademark counsel and handles virtually all matters relating to brand management. For others, Kilpatrick Stockton is preferred trademark counsel and is responsible for certain delineated tasks such as opinion work and litigation. As well, many of our clients handle most routine trademark matters in-house and turn to us when the situation demands. For example, The Cartoon Network turned to us to assist in the registration of the CARTOON NETWORK mark, and Hewlett-Packard frequently requests similar specialized assistance from the firm.

With experienced attorneys dedicated to the litigation and resolution of trademark issues, and a comprehensive offering that includes experience in such areas as licensing and branding, sweepstakes law, and cyber-litigation, Kilpatrick Stockton's Trademark Practice remains an active force in the field of trademark law, successfully prosecuting over 550 domestic and over 420 foreign trademark applications through to registration in 2002.

Trademark Selection and Branding
Because successful brand management and trademark enforcement programs begin well before litigation arises, we favor a proactive approach. Kilpatrick Stockton's general trademark counsel and opinion work includes counseling for companies seeking to protect all manner of property, not only conventional word and design marks, but also non-traditional trademarks such as packaging, product configurations, restaurant interiors, animated characters, and sounds. Some matters in which Kilpatrick Stockton has provided counsel regarding non-traditional trademark formats include:

• Kilpatrick Stockton assisted Hewlett-Packard in obtaining trademark protection in the design of the packaging used for its printer and photocopier cartridges. These efforts have entailed promotional campaigns to establish recognition of the distinctiveness of the designs prior to their emulation by competitors.
• The firm's lawyers routinely have been selected by the International Trademark Association (INTA) to prepare that organization's amicus filings before the Supreme Court in trade dress cases.
• Kilpatrick Stockton has assisted Harley-Davidson in protecting the unique sound of its motorcycles.

U.S. Trademark Prosecution
The May 2003 issue of Intellectual Property Today identified Kilpatrick Stockton as #13 on its list of "Top Trademark Firms" based on the number of federal trademark registrations secured. The firm filed over 500 domestic applications and successfully prosecuted over 500 applications through to registration during 2002 -- a number that does not include foreign trademark registrations secured through the firm's extensive international practice.

Ex Parte and Inter Partes Litigation in the Patent and Trademark Office

Kilpatrick Stockton is a recognized leader in the field of trademark litigation within the Patent and Trademark Office over the registrability of particular marks. Kilpatrick Stockton trademark lawyers have been counsel of record in reported proceedings before the Federal Circuit Court of Appeals, the Court of Customs and Patent and Appeals, the Trademark Trial and Appeal Board and the Commissioner of Patents from the 1930s to the present. One of our current partners has served twice as program chair for the Advanced TTAB Practice Forum -- an annual program sponsored by INTA and offered to advanced trademark practitioners.

Trademark Litigation
Kilpatrick Stockton represents a wide range of companies in connection with trademark litigation matters, both domestic and international. The firm has secured favorable outcomes for its intellectual property clients in reported opinions from the United States Supreme Court, federal appellate panels and trial courts in the First, Second, Third, Fourth, Fifth, Sixth, Eighth, Tenth, Eleventh and Federal Circuits, and numerous state appellate courts across the country. We recently were designated as national preferred trademark litigation counsel for General Electric Company and its subsidiaries and regularly handle trademark litigation around the country for a range of leading companies, including:

• adidas
• Anheuser-Busch
• Blue Cross and Blue Shield Association
• Daimler-Chrysler
• General Mills
• Harley-Davidson
• Hewlett-Packard
• Krispy Kreme Doughnuts
• Putt-Putt Golf Courses of America
• Smith & Nephew
• 1-800-Flowers.com

Kilpatrick Stockton also has superior capabilities in litigation of distinctiveness, including genericness and protectability against dilution. Marks defended by the firm against genericness challenges include:

• DaimlerChrysler's JEEP mark (multiple jurisdictions)
• Kraft's JELL-O mark (multiple jurisdictions)
• Frito-Lay's FRITOS mark (Northern District of Illinois)
• IMAX Corporation's IMAX mark (Southern District of New York)
• Chef America's HOT POCKETS mark (District of Colorado)
• 800-Flowers' 1-800-FLOWERS mark (Eastern District of New York)
• Gaylord Entertainment's OPRY mark (Eastern District of North Carolina)

On the opposite side of the spectrum, Miles Alexander was a member of the blue ribbon Trademark Review Commission that drafted what became the Federal Trademark Dilution Act. Other firm partners have written award-winning articles on dilution and have directed major dilution litigation. Ted Davis, for example, co-authors the Trademark Law Handbook: Annual Review of Developments in Trademark Law & Practice, published each year by the International Trademark Association.

Kilpatrick Stockton also has considerable expertise in the use of survey evidence in trademark claims. Our attorneys have commissioned several hundred surveys bearing on mark distinctiveness, likelihood of confusion, dilution, and the impact of allegedly false advertising on consumers. As a result, the firm has garnered experience in the design and defense of surveys, as well as in challenges to opposing parties' surveys using Daubert motions.

Kilpatrick Stockton's litigation experience also involves a variety of non-traditional marks. For example, as counsel for a manufacturer of wooden outdoor furniture in a product configuration trade dress infringement action, the firm's attorneys secured an award in excess of $1 million from a Southern District of New York jury and then successfully defended that outcome on an appeal to the Federal Circuit. In contrast, the Kilpatrick Stockton attorneys successfully defended another manufacturer of outdoor furniture against similar allegations in a bench trial in the Northern District of Georgia.

Kilpatrick Stockton's reputation in the litigation and appellate field is such that, out of several hundred law firm members of the International Trademark Association, Kilpatrick Stockton lawyers have been selected as the authors for INTA amicus briefs in the five most recent United States Supreme Court trademark decisions: Mosely v. V Secret Catalogue, Inc.; TrafFix Devices, Inc. v. Marketing Displays, Inc.; Wal-Mart Stores, Inc. v. Samara Bros.; Qualitex Co. v. Jacobson Prods. Co.; and Two Pesos, Inc. v. Taco Cabana, Inc.

Trademark Licensing
Kilpatrick Stockton represents both trademark licensors and licensees in connection with transactions and merchandising programs. Our firm serves as national trademark counsel to the Collegiate Licensing Company, one of the most successful licensing originations in the country, which represents over 160 colleges, universities, conferences, and bowl games in connection with their licensing efforts. We also assist CLC in registration, infringement licensing, and counterfeiting matters.

Our additional trademark licensing experience includes:

• Special counsel selected by the Blue Cross/Blue Shield National Association to create a uniform license with its nationwide Blue Cross network.
• Trademark and licensing counsel for Genesco, Inc., whose footwear and retail brands include JOHNSTON & MURPHY, JARMAN and JOURNEYS, and the DOCKERS brand.
• Licensing counsel for the Cabbage Patch Kids toys and merchandise.
• Counsel for MedicAlert, the country's leading provider of medical emergency response-identifying jewelry and services, in connection with international licensing.
• Counsel for Spalding Sorts Worldwide in connection with trademark and licensing for the BEN HOGAN trademarks and rights of publicity.

Trademark Counterfeiting
Kilpatrick Stockton has particular experience in developing and implementing anti-counterfeiting strategies. In addition to representing CLC (discussed above), our attorneys have prosecuted actions against infringers and counterfeiters on behalf of both National Football League Properties and NBA Properties. The firm's notable efforts include obtaining and collecting a judgment in excess of a million dollars for counterfeit trading cards, and responsibility for combating counterfeit products at Super Bowl XXIII and Super Bowl XXIX, for which the firm secured ex parte temporary restraining orders and coordinated seizures of counterfeit merchandise. The firm also served as counsel to Tommy Hilfiger in obtaining a multi-million dollar award for counterfeit clothing.

Our attorneys also have handled counterfeiting cases for, among others, adidas, Louis Vuitton, CLC, Anheuser-Busch, Nexxus, Ocean Pacific, and Cartier. In a recent suit, the firm successfully obtained a multi-district order targeting counterfeiting on behalf of the rock group Pearl Jam.

Alternative Dispute Resolution
One of our firm's greatest strengths is our recognized experience in Alternative Dispute Resolution (ADR) and creative settlement approaches to litigation.

Kilpatrick Stockton is a member of a number of organizations active in the ADR field, including the Center for Public Resources (CPR). As a matter of policy, settlement options and alternative dispute resolution are explored diligently early in any litigation matter.

We have experience in representing parties in all types of arbitration, mediation and other ADR proceedings, and lawyers in the firm have published extensively on ADR subjects. We also routinely handle international arbitration matters, including a range of IP cases. Courts and other lawyers regularly call upon lawyers in the firm to act as arbitrators or mediators. Three of our attorneys are Distinguished Neutrals for the CPR/INTA trademark panel of approved neutrals.

Internet Litigation
The firm has extensive experience in addressing U.S. and international trademark and copyright issues on the Internet, routinely advising both clients whose businesses are primarily conducted on-line and/or who use the Internet solely for marketing, as well as clients that simply want to monitor the Internet for possible infringements. We have successfully handled matters seeking to stop on-line counterfeiting, sale of gray market goods and consumer fraud, as well as trademark infringement, unfair competition, dilution and copyright infringement involving website content keywords, pop-up advertising and other forms of advertising and uses of trademarks and copyrights on the Internet. We also have substantial experience enforcing clients' rights against on-line defamation and misappropriation of identity arising from misuse of their marks and advising clients on questions involving fair use, parody, and initial interest confusion on the Internet.

With respect to domain names, Kilpatrick Stockton attorneys worked closely with INTA to assist in the preparation of the bill that became the Anti-Cybersquatting Consumer Protection Act of 1999 ("ACPA"). Even prior to the enactment of this legislation, lawyers, at the firm were amongst the first attorneys handling such matters on behalf of clients and had secured relief for clients against cybersquatters in traditional trademark suits. Since the enactment of the ACPA, the firm has handled ACPA lawsuits throughout the United States, including in rem actions and has assisted numerous clients in obtaining both damages, injunctions and the transfer of infringing domain names. We have also successfully handled a number of disputes involving individual country code top level domain names.

Kilpatrick Stockton attorneys are also well versed in arbitrations under the Uniform Domain Name Disputes Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN), and in the alternative dispute mechanisms set up for many individual country code top level domains. Our lawyers have obtained cancellation or transfer of hundreds of domain names that infringed or diluted clients' marks in multiple domain name arbitrations.

International Practice
To supplement our work in the Intellectual Property arena, we are actively engaged in an extensive international trademark counseling, registration, litigation and transactional practice. Here, we provide portfolio management and counseling to hundreds of trademark owners with thousands of registrations worldwide, handling international trademark matters for clients including: Genesco, Interface, Inc., Walt Disney Company, R.E.M., Gaylord Entertainment, Interland, Yorkshire Group, plc., Equifax, Cingular, NSI, Acuity Brands, Zodiac, The Weather Channel and many others.

The firm is active in MARQUES, the leading trademark owners organization in Europe; The Association of European Trademark Owners; Pharmaceutical Trade Mark Group (PTMG), the worldwide pharmaceutical trademark owners' group; Licensing Executive Society (LES) in the United States, Britain and Ireland; Asian Patent Attorneys Association; the International Bar Association; and Inter-Pacific Bar Association. Kilpatrick Stockton is the only U.S. based firm represented on the Counsel of MARQUES. Because the firm maintains offices in the European Community staffed by European lawyers, Kilpatrick Stockton is among a very few U.S. intellectual property firms qualified to directly file and prosecute European Community trademark applications.

Kilpatrick Stockton attorneys are personally acquainted with an extensive network of local lawyers and agents in many countries, with whom we have longstanding relationships. We have extensive experience in supervising and assisting local counsel in connection with ex parte appeals and adversarial trademark litigation both in the courts and before patent office tribunals around the world, including in England, France, Sweden, Germany, Italy, Spain, the European Union, Argentina, Brazil, Chile, Peru, Colombia, Venezuela, Uruguay, Japan, China, Greece, Slovenia, and others.

Kilpatrick Stockton attorneys are experienced in obtaining trade remedies in International Trade Commission proceedings and U.S. Customs seizures.

We also have attorneys who are fluent in numerous languages, including French, German, Italian, Japanese, Russian, and Spanish.

Advertising and Promotion Law

Kilpatrick Stockton has comprehensive advertising and promotions practices. We provide advice in all aspects of advertising and trade regulation law; represent companies under investigation by government agencies for unlawful advertising and sales practices; and litigate unfair competition claims. The firm provides advice in all aspects of marketing and promotions activities, including:

• Advertising review
• Promotions, contests and sweepstakes
• Internet law
• Telemarketing
• Privacy protection

Our practice encompasses all aspects of running promotions, contests and sweepstakes -- including structuring of promotions to achieve our clients' goals and satisfy applicable laws, drafting contest and sweepstakes rules, registering promotions in applications states and territories, and post-promotion activities such as awarding prizes, preparing affidavits of eligibility and liability releases, preparing the relevant income tax forms for winners, and securing the release of bonds.

We have extensive experience in counseling clients regarding concerns about data collection for promotion participants. Our attorneys regularly assist companies in protecting information databases to comply with privacy (e.g., financial, children, health care and international privacy) and consumer fraud rules.

Kilpatrick Stockton attorneys also have significant experience in counseling and litigation regarding advertising compliance and substantiation. We advise clients regarding Federal Trade Commission (FTC) advertising and labeling compliance and similar issues under Food and Drug Administration, U.S.D.A., and other regulatory schemes. We have litigated numerous false advertising and unfair competition cases under section 43(a) of the Lanham Act.

Kilpatrick Stockton is a member of the Promotion Marketing Association (PMA), the leading nonprofit trade association that represents the multi-billion dollar promotion marketing profession

• Kilpatrick Stockton Copyright attorneys successfully represented the heirs of Dr. Martin Luther King, Jr. against CBS in a highly-publicized case.
• The Copyright practice made headlines by winning a reversal of a preliminary injunction against the distribution of The Wind Done Gone, a parody of Gone With The Wind.

Copyright Practice

Kilpatrick Stockton's copyright practice includes registration, licensing, client counseling, litigation and related antitrust matters. Our firm has successfully represented a wide range of clients in major copyright litigation, including publisher Houghton-Mifflin, Inc.; the Estate of Martin Luther King, Jr.; DC Comics; BellSouth; Original Appalachian Artworks, Inc.; and Interface, Inc.

Some highly publicized recent cases attracting national interest include:

• Kilpatrick Stockton attorneys recently made headlines by winning a reversal by the Eleventh Circuit of a preliminary injunction entered against the distribution of The Wind Done Gone -- a parody of Gone With The Wind -- which had been challenged by the estate of Margaret Mitchell. See SunTrust Bank v. Houghton Mifflin Co. , 252 F.3d 1165 (11th Cir. 2001).
• Kilpatrick Stockton recently filed an amicus curie brief with the United States Supreme Court on behalf of a number of newspaper and magazine companies to request that that Court grant certiorari to review the decision by the Eleventh Circuit in Greenberg v. National Geographic Society, 244 F.3d 1267 (11th Cir. 2001). The case presented the issue of whether reproduction of intact issues of periodicals on a CD-ROM is grounds for copyright infringement.
• The firm's attorneys successfully represented the heirs of Dr. Martin Luther King, Jr. against CBS in a highly publicized case before the Eleventh Circuit, Estate of Martin Luther King, Jr. v. CBS, 194 F.3d 1211 (11th Cir. 1999). The decision upheld the validity of the copyright of the famous "I Have A Dream" speech against a challenge that it had entered the public domain.
• Kilpatrick Stockton attorneys continue to defend a musical band and record company in a challenge brought by civil rights leader Rosa Parks to the client's use of "Rosa Parks" as the title of a Grammy-nominated song. See Parks v. LaFace Records, 76 F. Supp. 2d 775 (E.D. Mich. 1999), aff'd in part, rev'd in part, 329 F.3d 437 (6th Cir. 2003), cert. denied, 2003 WL 22303348 (Dec. 8, 2003) (representing the defendants).

Our experienced attorneys have represented numerous clients in obtaining and enforcing software copyrights. Additionally, we have extensive experience in the representation of both purchasers and creators of rights in copyrightable works, including audiovisual and literary works, music, art, architecture, photography, and software in both transactional matters and controversies.

PATENT PRACTICE

Kilpatrick Stockton's Patent Practice consists of 95 attorneys, more than 40 of whom are registered to practice before the United States Patent and Trademark Office. Among other distinctions, our experienced patent attorneys have been listed in The Best Lawyers in America®, Who's Who in American Law, and Euromoney Guide to the World's Leading Patent Law Experts.

Representing clients ranging from Fortune 500 to emerging growth companies, our patent attorneys offer a full range of services to clients throughout the world, including counseling, patent prosecution, litigation, and licensing in a wide range of industries such as food and textiles.

Our dedication to clients is evidenced in our commitment to innovative technology. Kilpatrick Stockton offers a powerful tool that provides our clients secure, immediate and reliable access to the status of their intellectual property, at each stage in the legal process. This tool tracks all client intellectual property information -- from filing to prosecution, to issuance and maintenance.

Similarly, our Patent Group also offers the Intellectual Asset Management (IAM) program, a product that unlocks value imbedded in current IP holdings and defines the direction of future IP growth. These objectives are accomplished through management interaction and product development direction, smart targeting of competitors or competitive processes of others, and effective proactive licensing and enforcement. IAM ultimately transforms a cost center to a profit center, and helps to unify corporate strategies.

Patent Prosecution
Kilpatrick Stockton Patent Practice attorneys have experience in patent litigation, foreign and United States patent prosecution, inter partes proceedings in the United States Patent and Trademark Office, licensing, and client counseling on strategic planning, managing patent portfolios, product development and defending and protecting patent assets, among many others.

In 2002, our attorneys filed over 1200 domestic patent applications on behalf of clients and received over 400 domestic patents. We also assisted clients in generating millions of dollars of licensing royalties through portfolio management, and remain active in related fields such as technology transfer and licensing, raising capital, technology company formation and other areas relating to the creation, utilization and protection of intellectual property. Additionally, our patent lawyers regularly assist U.S. and non-U.S. clients in formulating patent strategy, preparing and prosecuting patent applications, and licensing and enforcing their patent rights in a variety of technical areas.

Patent Litigation Practice
Kilpatrick Stockton's patent litigation practice has long been an integral part of our intellectual property practice. With over 40 registered members of the U.S. Patent Bar, our experience in patents and technology uniquely qualifies us as the primary provider of patent litigation services for a number of established technology leaders. IP Law360 ranked Kilpatrick Stockton as one of the top 10 most frequently hired patent litigation firms in the United States in 2005.

Our ability to provide seasoned commercial litigators to lead or assist patent litigation efforts is an additional asset in resolving these complex disputes. Our depth of experience in handling patent disputes has been primarily responsible for the rapid expansion of our patent litigation practice by allowing us to assist clients in navigating the intricacies of patent law and the complexities of the underlying technology.

Experience has also taught us that much, but not all, patent litigation relates directly to important corporate strategy regarding new products or ideas. In cases where the technology is critical to the company, our approach is to translate, simplify, and teach our client's position to the decision-maker(s) in a cost-effective manner. Whatever the technical complexity, the case and the concepts must be made comprehensible to judges and jurors who typically have limited background or interest in the subject matter. We make a commitment of time and energy to gain a thorough understanding not only of the technology at issue, but of its long-term significance to the client -- working with the client to develop an appropriate strategy in which litigation is among the means to achieve the client's ultimate business goals.

Our goal in all litigation, including patent cases, is to focus from the first day on the development of a winning strategy and on the tasks that are truly important. For instance, some clients find themselves the recurrent target of opportunistic patent owners. Our objective in such situations is to evaluate the threat and pursue the appropriate action, including efforts to evaluate technological alternatives that avoid any threat of infringement proceedings, or to shift liability to suppliers or other involved parties. Generally, our experience as plaintiffs has been that most cases can and should be prepared without excessive reliance on discovery. As defendants, we find a somewhat different approach may be required in order to force the plaintiffs to properly define and limit their claims and clearly state the evidence upon which they rely.

Finally, our experience in patent acquisition matters allows us to give careful consideration to the strategic value of parallel Patent Office proceedings, ranging from mere discovery of the patent examiner to requests for re-examination or reissue applications. In assessing the desirability of such parallel proceedings, the extensive experience of our patent prosecution attorneys is invaluable.