Trademark Litigation

Intellectual Property    Trademark Litigation
 

Intellectual Property

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Covington has litigated trademark infringement, trademark dilution, counterfeiting, cyberpiracy, unfair competition, gray market, and rights of publicity cases in courts throughout the United States on behalf of numerous clients, including American Automobile Association (AAA), American Express, Armani, Atari, Bacardi, Cartier, Coty, MasterCard, Microsoft, Montblanc, National Basketball Association (NBA) and its member teams, National Geographic Society (NGS), Public Broadcasting Service (PBS), SPI Group, Sun Life of Canada and Yahoo!.

We also have recovered hundreds of domain names registered by cybersquatters, utilizing enforcement programs featuring court actions, including in rem actions, under the Anticybersquatting Consumer Protection Act, as well as UDRP proceedings under the arbitration rules adopted by ICANN.  We have litigated numerous opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board.  In addition to many important litigation victories, we have achieved significant favorable outcomes for our clients through mediation, arbitration, and negotiated settlements.

Representative Matters

  • Representation of World Marketing in successful jury trial, in which unanimous jury found that Quiksilver willfully infringed World Marketing’s VISITOR trademark and that World Marketing was entitled to $3.625 million in damages.
  • Representation of SPI Group in the United States District Court for the Southern District of New York and the United States Court of Appeals for the Second Circuit in defense of its rights to the famous STOLICHNAYA trademarks in litigation brought by agents of the Russian Federation claiming ownership of the STOLICHNAYA marks in the United States.
  • Representation of The American Automobile Association, Inc. (AAA) in numerous federal and state court actions and arbitration proceedings against third party infringers of AAA’s famous marks.
  • Representation of Microsoft as a defendant in trademark infringement suits challenging keyword advertising practices and alleging reverse confusion.
  • Representation of sanofi aventis in a trademark infringement and false advertising suit involving its FERRLECIT product and Watson Pharmaceutical’s use and advertising of NULECIT.
  • Representation of Spirits International, an affiliate of SPI Group, on appeal to the United States Court of Appeals for the Federal Circuit from a decision of the U.S. Trademark Trial & Appeal Board denying registration of the mark MOSKOVSKAYA on the ground that it is primarily geographically deceptively misdescriptive.  The Court vacated the decision by the TTAB and ruled in our client’s favor.
  • Representation of numerous clients, including Microsoft, Verizon, New Skies Satellites, LIN Television, American Automobile Association and Ourisman Dodge in UDRP domain name proceedings.
  • Representation of numerous clients, including Merck, Verizon, Spirits International, National Geographic Society, Public Broadcasting Services, M Financial, Promontory Financial Group, U.S. Soccer Federation, Lewis Brothers Bakeries and Rosie O’Donnell in opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board.
  • Representation of Bacardi & Company Limited and Bacardi U.S.A., Inc. as third-party intervenors in a proceeding in which plaintiffs seek to execute a judgment against the Republic of Cuba pursuant to proceedings supplementary against Cubaexport and other agencies and instrumentalities of the Cuban government.  One of the assets at issue is Cubaexport’s interest in the HAVANA CLUB trademark -- an interest that is also the subject of separate pending legal proceedings between Bacardi and Cubaexport.  We also represent Bacardi in those proceedings.
  • Representation of NBA Properties and the NBA member teams in trademark litigation concerning the DREAM TEAM mark in the United States District Court for the Eastern District of Missouri, and also in anti-counterfeiting litigation concerning other NBA marks brought in the United States District Court for the District of Columbia against purveyors of counterfeit NBA merchandise in connection with an NBA All-Star game.

Accolades

Covington's intellectual property attorneys have been recognized by:

  • The National Law Journal - Recognized on the Intellectual Property Hot List (2014)
  • Chambers USA, Intellectual Property and Intellectual Property Litigation (2013)
  • Chambers USA Awards for Excellence, shortlisted in Intellectual Property (2013)
  • Legal 500 US, Intellectual Property - Trademarks: Litigation (2013)
  • WTR 1000, listed as a Leading Trademark Firm in "Enforcement and Litigation" and "Prosecution and Strategy" (2014)
  • Washington DC Super Lawyers and Rising Stars (2013)
  • World Trademark Review 1000’s, Kristina Rosette (2013-2014) was recognized as one of the “World’s Leading Trademark Professionals.”
  • The Best Lawyers in America (2007-2013)
  • Chambers Europe (2012)
  • Legal 500 UK, Intellectual Property (2011-2013)
  • Legal 500 EMEA, Intellectual Property, Belgium (2011-2013)
  • U.S. News Media Group and Best Lawyers, Litigation - Intellectual Property: National, San Francisco and Washington, DC first tier ranking (2011)
  • Managing Intellectual Property Global Awards, short-listed in the pan-European category "New Media/Internet" (2010)
  • The Practical Law Company (PLC) - Life Sciences, Which Law Firm? - Intellectual Property and Commercial Intellectual Property (2011-2012)
  • WORLDLeaders IP Awards, short-listed in the worldwide categories "Excellence in Domain Name Policy Implementation" (2008) and "Domain Name Strategy and Management" (2009)
  • Managing Intellectual Property Global Awards, "US IP Firm in Europe" for EU and regulatory work (2008)
  • WORLDLeaders European Awards for trademark excellence (North America/Canada) (2007)

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Biographies
News
Publications

Trademark, False Advertising, Copyright and Trade Secret Litigation Practices Brochure

Significant Developments in U.S. Trademark Law 2013 Brochure

Significant Developments in U.S. Trademark Law 2012 Brochure

Significant Developments in U.S. Trademark Law 2011 Brochure

Significant Developments in U.S. Trademark Law 2010 Brochure

Contacts

rdove@cov.com
202.662.5685

sfrankel@cov.com
415.591.7052

bleverich@cov.com
202.662.5188

nroman@cov.com
202.662.5695