Trademark Litigation

Representative Matters

• Representation of American Automobile Association (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 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 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.
• Representation of Yahoo! in a trademark infringement suit in the United States District Court for the Central District of California in which Yahoo! was accused of infringing the mark “Street Buzz” by using the term on its website in connection with web-based video segments.
• Representation of American Express in the United States District Court for the Northern District of California against claims by Visa that Advanta, in conjunction with American Express, used Visa marks beyond the scope of a trademark license and contrary to the Lanham Act.
• Representation of Bradley Pharmaceuticals in trademark litigation, including a preliminary injunction hearing, involving the KERALAC mark in the United States District Court for the Eastern District of Pennsylvania.
• Representation of Corporate Risk International in a trademark action involving its CORPORATE RISK mark that was tried to a jury in the United States District Court for the Eastern District of Virginia.
• Representation of DIHK and several other plaintiffs in a complex trademark infringement lawsuit pending in the Southern District of California, in which plaintiffs seek, among other things, to enjoin defendants from using the marks GERMAN AMERICAN CHAMBER OF COMMERCE CALIFORNIA and related acronyms.
• 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 the Russian Federation claiming ownership of the STOLICHNAYA marks in the United States.
• Representation of luxury goods makers Montblanc and Coty in trademark infringement litigation in federal district and appellate courts resulting in injunctive relief against unauthorized sellers of imported gray market goods.
• Representation of National Geographic Society
  • in the United States District Court for the District of Massachusetts against claims of infringement of an alleged family of ZONE marks asserted by the author of a series of ZONE books on health and nutrition; and
  • in an opposition proceeding before the U.S. Trademark Trial and Appeal Board, claiming that applicant's EXPLORE CHANNEL mark is likely to cause confusion with National Geographic's EXPLORER marks.
• Representation of Public Broadcasting Services (PBS)
  • in trademark litigation to recover the PBS.COM domain name in the United States District Court for the Eastern District of Virginia; and
  • in an opposition proceeding before the U.S. Trademark Trial and Appeal Board, claiming that applicant's mark BE MORE RESPONSIBLE is likely to cause confusion with PBS's BE MORE mark.
• Representation of Lorillard in a petition for certiorari to the United States Supreme Court raising the question whether undisputed evidence that a retailer sold counterfeit goods establishes “irreparable harm” supporting entry of a preliminary injunction.
• Representation of McGraw-Hill and other major textbook publishers in gray goods trademark and copyright litigation in the United States District Court for the Eastern District of New York to prevent the illegal importation and sale over the Internet of textbooks published abroad and not intended for sale in the United States.
• Representation of MasterCard in trademark litigation in the United States District Court for the District of Utah against a bank that was using a MASTER CARD mark for various banking services offered to account holders.
• Representation of NAVIGON companies in trademark infringement litigation involving the NAVIGON and NAV N GO marks for competing GPS devices in the United States District Court for the Northern District of Illinois and the United States District Court for the District of Nevada.
• Representation of Atari Games in litigation involving home video game trademarks in the United States District Court for the Northern District of California.
• Representation of Armani in trademark litigation in the United Stated District Court for the Eastern District of Virginia to recover the ARMANI.COM domain name from a man whose initials and last name are A.R. Mani.
• Representation of Cartier in an in rem action in the United States District Court for the Eastern District of Virginia to recover more than 100 infringing CARTIER domain names.
• Representation of Chloé in trademark litigation in the United States District Court for the Middle District of Florida concerning defendant’s use of the CHLOÉ mark for women’s clothing offered for sale on its website and for a women’s clothing store.
• Representation of Government of the District of Columbia in connection with its appeal before the U.S. Trademark Trial and Appeal Board of the PTO’s refusal to allow registration of a mark consisting of an official seal of the District of Columbia.
• Representation of Rosie O’Donnell in an action in the United States District Court for the District of Oregon asserting trademark and right of publicity claims based on the ROSIE name and logo against a radio station using ROSIE as the station name and a very similar logo.
• Representation of Encore Marketing in a trademark action against Travelocity involving the PREFERRED TRAVELER mark for travel club services in the United States District Court for the District of Delaware.
• Representation of The Society of Permanent Cosmetic Professionals and The Distinguished Citizens Society International in an amicus brief to the United States Supreme Court in the KP Permanent Make-Up trademark fair use case.
• Representation of Sun Life of Canada in two trademark actions against Sun Life of America and SunAmerica concerning the SUN LIFE mark in the United States District Court for the Northern District of Georgia and on appeal in one of the actions to the United States Court of Appeals for the Eleventh Circuit.
• Representation of a subsidiary of Zomba Music Publishing in a trademark infringement action concerning the mark ESSENTIAL in the United States District Court for the Middle District of Tennessee.
• Representation of American Automobile Association, Bacardi, Bank of America, John Deere, Newsweek, Pfizer, Public Broadcasting Services, Ringling Bros. and Sotheby’s in an amicus brief to the United States Supreme Court in the Victoria’s Secret trademark dilution case.

Accolades

Covington's intellectual property attorneys have been recognized by:

• The Best Lawyers in America (2007-2010).
• Chambers USA - America's Leading Business Lawyers (2006-2010)
• Legal 500 EMEA - Intellectual Property, Belgium (2010)
• 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? - Recognized for Intellectual Property (2009)
• 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)
• IP Law & Business - Laurie Self named one of "Top IP People Under 45" (2008)
• WORLDLeaders European Awards for trademark excellence (North America/Canada) (2007)