Practice/Industry Group Overview
Morris Polich & Purdy LLP provides the expertise in trademark, copyright and trade secret cases that today’s businesses need in order to protect their brands, products and services. We advise our clients on how to safeguard their proprietary content, guiding them through the many facets of both traditional and new media. Our attorneys offer extensive trademark prosecution counseling and services both domestically and worldwide. In the international arena, we work with an extensive global network of attorneys to help our clients navigate foreign jurisdictions. Where problems arise, our attorneys are there to protect you. We offer a full range of trademark and copyright services in order to address our clients’ issues relating to procurement, registration, licensing and infringement, involving: music, internet content, art, photographs, images, promotional literature, architectural plans and other intellectual property. Representing our clients in federal, state trial or appellate courts in the United States, MPP has the depth of litigation expertise and trial experience necessary to protect your invaluable IP investment. We aggressively represent plaintiffs and defendants from all industry sectors at trial and appellate levels.
A CROSS SECTION OF OUR EXPERIENCE
Trademark Counseling, Prosecution & Enforcement
In our trademark prosecution practice we do not treat applications to register marks like routine, ministerial tasks. We recognize that to properly protect a client’s trademark rights, we must have a comprehensive understanding of the client’s business operations, marketing and branding strategy, and its competitive landscape. Before ever filing an application, we work with our clients to identify its registrable marks and prioritize them according to their importance, understand the trade channels through which the goods or services are marketed, and assess third-party registrations and use of marks that could affect the client’s trademark registration strategy. By identifying and evaluating third-party registrations and applications, we can describe our client’s goods or services in a manner that will permit registration. Or we can approach the third parties to obtain consent letters or co-existence agreements, permitting our client’s application to proceed to registration.
After filing the application, we are zealous yet strategic advocates while prosecuting the matter before the U.S. Patent and Trademark Office. We recognize that positions we take while prosecuting the trademark application can have significant effect on the client’s future trademark enforcement matters. Persuading the Trademark Office to register the mark as non-descriptive, for example, may bolster the strength that a future court affords the mark in the event our client files suit against an infringer. Additionally, we employ creative strategies to overcome objections raised in Office Action letters, to obtain appropriate registrations as efficiently as possible.
Trademark Trial and Appeal Board Proceedings
We believe that our competence handling matters before the TTAB is an integral part of our trademark prosecution services. We create strategies to use the TTAB’s cancellation and partial cancellation procedures to obtain registrations for our clients where the Trademark Office initially refused registration.
Monitoring and Portfolio Management
During the prosecution of the application and after registration, we monitor third-party use and applications to register marks that could encroach on our client’s rights of exclusivity. We issue cease-and-desist letter, obtain co-existence agreements, and, when necessary, file opposition proceedings before the TTAB or commence litigation against the infringing party.
International Trademark Counseling
Our clients look to us to craft strategies to obtain registrations in the foreign jurisdictions critical to their business success. Where possible we prosecute the applications ourselves and, where appropriate, we tap a deep network of international attorneys to deliver efficient results for our clients.
Trademark, Unfair Competition & Copyright Litigation
In cases where trademark disputes cannot be resolved informally or with interparty proceedings, MPP’s attorneys aggressively litigate the matter in the federal or state court system. We successfully represent plaintiffs and defendants in both federal and state jurisdictions in trademark infringement, false advertising, counterfeiting, theft of trade secrets and other unfair competition disputes arising under state law, at both the trial and appellate levels. We also represent numerous clients in various industries and professions in copyright infringement litigation in federal courts throughout California and Nevada.
We have a group of specialized appellate lawyers with the experience and understanding of how to frame and argue an IP case most persuasively to the appellate courts. In fact, we have successfully handled many trademark and copyright appeals for clients who we did not represent in the trial courts. Whether on in-house appeals, or new appeals in the first instance, we bring seasoned yet fresh eyes to our client’s case.
OUR REPRESENTATIVE MATTERS
- Our client was sued in a trademark infringement case brought by a European sports car manufacturer over our client's use of the company’s logo and trademark. We obtained monetary recovery for our client, the defendant.
- Despite initial, significant resistance by the PTO examining attorney to statement of use, we obtained a federally registered trademark for an NBA All-Star Player.
- We successfully represented a digital printing company in trademark litigation over a competitor’s use of trade names, resulting in geographical use protection for our client.
- When an advertising specialty client was sued by a manufacturer of gift pens as a result of online advertising activities, we obtained a favorable settlement of trademark infringement and litigation.
- We obtained permanent injunction in favor of our client, a children’s health food company, against a competitor which used a confusingly similar internet domain name.
- We successfully resolved a California-based aerospace company’s trademark prosecution in Australia against a Sydney-based competitor.
- We successfully represented a jazz record label, casino and various individual record producers against a musician’s union in a copyright infringement action involving the use of originally “boot-legged” recordings of A-list artists’ concerts.
- We successfully represented a professional coaching corporation against copyright infringement claims by a competitor involving use of coaching literature.
- MPP represented an architectural firm in three large-scale copyright infringement actions involving a real estate developers’ use of our client’s architectural plans for the construction of unauthorized apartment and timeshare communities.
A sampling of recent published decisions in this area include:
- Jules Jordan Video, Inc. v. 144942 Canada Inc. (9th Cir. 2010) 617 F.3d 1146 [copyright, publicity]
- Toyota Motor Sales, U.S.A., Inc. v. Tabari (9th Cir. 2010) 610 F.3d 1171 [domain name infringement]
- Halicki v. Carroll Shelby International (9th Cir. 2008) 547 F.3d 1213 [trademark, copyright]