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Clients turn to Marie Lavalleye for their most important brand and other IP Rights-related issues. They rely upon Ms. Lavalleye for her creative and practical solutions, thorough analysis and understanding of their business goals. They note she is responsive and cost effective; providing the advice they need—and can rely upon—often in a single telephone call.
Ms. Lavalleye provides broad-based global IP Rights counseling to clients in the consumer products, entertainment, financial services, pharmaceutical, publication, software, sports and telecommunications industries. She routinely devises and implements effective global trademark clearance, registration, enforcement and portfolio management strategies for clients in these industries.
For M&A and other corporate clients, including AstraZeneca, Bacardi, Charlesbank, Eisai, NFL and Microsoft, Ms. Lavalleye performs transactional due diligence and works closely with other deal team members to craft and negotiate the IP provisions of deal agreements.
Ms. Lavalleye represents clients in trademark infringement, unfair competition and rights of publicity litigation matters. In proceedings before the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), she has secured highly favorable outcomes for clients, including Daiichi Sankyo, National Geographic, Medimetriks Pharmaceuticals, Promontory and the producers of Stolichnaya vodka. She has also achieved appellate victories overturning unfavorable TTAB decisions.
- Advising on all intellectual property and licensing aspects of multi-million television, Internet and new media broadcasting deals for the National Football League, Major League Baseball and NASCAR.
- Working with tax experts in developing and implementing a global strategy for protecting, licensing and enforcing an international conglomerate’s global brand.
- Developing and implementing a brand protection and domain name enforcement strategy for a leading telecommunications company.
- Representing a global manufacturer and seller of spirits in administrative proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.
- Conducting and managing the IP due diligence relating to Goodyear’s restructuring of its multimillion dollar bank credit and accounts receivables facilities.
Pro Bono
- Representing the NFL Alumni, Inc. in connection an agreement with a developer in Texas for the development of a sports-themed recreational residential community.
- Trademark counsel to the Coordinating Counsel for International Universities, a not-for-profit organization formed by leading educators, former governmental officials and former ambassadors, whose mission is to design, establish and administer universities based on the American model of higher education in China, Afghanistan and other foreign countries.
- Trademark and copyright counsel to the SNAP Foundation, Inc., a not-for-profit organization that has put in place educational programs directed to school-aged children that promote self-esteem, self-confidence, and social and personal growth by focusing on positive life choices through the use of creative writing, artistic expression, photography and computer-aided research.
- Trademark and copyright counsel to the Cosmetic, Toiletry and Fragrance Association Foundation and its Look Good Feel Better program providing hair, make-up and skin care techniques for cancer patients and cosmetologists who provide such services to cancer patients.
Memberships and Affiliations
- International Trademark Association, member
June 20, 2017, Covington Alert
In a case that has drawn significant media attention for its potential effect on the Washington Redskins organization, the U.S. Supreme Court held on Monday, June 19, that the United States Patent and Trademark Office (“PTO”) cannot deny a trademark registration on the basis that the proposed mark may “disparage” “persons, living or dead, institutions, beliefs, or national symbols.” Instead, the Court held that the 70-year-old law prohibiting registration of such marks, 15 U.S.C. § 1052(a), “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
March 24, 2017, Covington Alert
In a highly anticipated copyright decision issued on March 22, the Supreme Court held that the designs on Varsity Brands’ cheerleading uniforms are eligible for copyright protection. In reaching that ruling, the Court set out a standard that aims to harmonize a multitude of tests across the country.
Covington Represents Tencent in $8.6 Billion Acquisition
June 21, 2016
SILICON VALLEY—Covington advised Tencent Holdings Limited, a leading provider of internet service in China, in connection with its acquisition of a majority stake in Supercell from SoftBank. A consortium established by Tencent will acquire up to 84% of Supercell for $8.6 billion in a transaction valuing Supercell at approximately $10.2 billion. Supercell is a ...
November 16, 2015
WASHINGTON, DC, November 16, 2015 - Covington advised Graham Holdings Company, a diversified education and media company, in its acquisition of Group Dekko, a manufacturer of electrical solutions for workspace, architectural lighting, and electrical components. The financial terms of the deal were not announced. According to Timothy O’Shaughnessy, president and ...
October 8, 2015
WASHINGTON, DC, October 8, 2015 — Covington advised Prosper Marketplace, a leading online marketplace that connects borrowers and investors, in its acquisition of BillGuard, a personal finance analytics company. The financial terms of the deal were not announced. According to the company’s press release, the acquisition will enable Prosper Marketplace to offer ...
Covington Announces Ten New Counsel
April 10, 2015
WASHINGTON, DC, April 10, 2015 — Covington is pleased to announce the promotion of three lawyers to of counsel and seven lawyers to special counsel, effective April 1, 2015. The new of counsel are as follows: John Balzano (New York) represents companies and industry associations on U.S. and China regulatory and policy matters related to food, drugs, and ...
October 7, 2014
LONDON, 7 October, 2014 — Covington & Burling advised Horizon Discovery Group plc, an AIM listed international life science company supplying research tools and services to organizations engaged in genomics research and the development of personalized medicines, on the acquisition of Sage Labs Inc. for a total of approximately $48 million (£29 million), ...
Covington Advises BBVA in Acquisition of Simple
February 20, 2014
NEW YORK, February 20, 2014 — Covington & Burling represented Banco Bilbao Vizcaya Argentaria, an international financial group based in Spain, in its acquisition of financial technology company Simple. The acquisition is part of BBVA's strategy to lead the technology-driven change that is transforming the financial services industry. According to Francisco ...
September 3, 2013
SAN FRANCISCO, September 3, 2013 — Covington & Burling is advising Microsoft Corp. in its purchase of substantially all of Nokia’s devices & services business. Under the transaction, Microsoft will also license Nokia’s patents, and license and use Nokia’s mapping services. The total transaction price is EUR 5.44 billion in cash — or more than $7 billion. The ...
August 5, 2013
WASHINGTON, DC, August 5, 2013 — SPI, owners of the famous STOLICHNAYA brand, secured a significant victory today, defeating the Russian Federation’s nine-year battle to take SPI’s rights in the U.S. STOLICHNAYA trademark. STOLICHNAYA is one of the bestselling vodkas in the world. The U.S. Court of Appeals for the Second Circuit affirmed complete dismissal of ...
April 23, 2012
WASHINGTON, DC, April 23, 2012 — Covington & Burling represented AstraZeneca in its $1.26 billion acquisition of Ardea Biosciences. Under the agreement, AstraZeneca will pay $32 per share for all of the outstanding shares of Ardea. AstraZeneca is a global, innovation-driven biopharmaceutical business with a primary focus on the discovery, development and ...
Avoiding Lack of Bona Fide Intent and Fraud on the PTO Risks
October 2011, CLE Presentation
August 26, 2011, Law360
Covington Advises Boehringer Ingelheim on Acquisition of Animal Health Assets from Pfizer and Wyeth
9/24/2009
NEW YORK, September 24, 2009 — Boehringer Ingelheim, and its US animal health business Boehringer Ingelheim Vetmedica, Inc., has entered into an agreement with Pfizer to acquire certain assets of Wyeth’s Fort Dodge Animal Health business upon the closing of the global Pfizer-Wyeth merger. Covington & Burling LLP represented Boehringer Ingelheim on the ...
5/1/2009
WASHINGTON, DC, May 1, 2009 — The U.S. Court of Appeals for the Federal Circuit has issued an important decision in favor of Spirits International B.V. (SPI), the owner of the STOLICHNAYA vodka brand, in a trademark case involving its MOSKOVSKAYA vodka brand. Covington & Burling LLP represented SPI in the appeal. The Court vacated a decision by the Trademark ...
April 15, 2009, Covington E-Alert
4/10/2009
NEW YORK, NY, April 10, 2009 — First Solar, Inc. has announced the completion of its previously announced acquisition of OptiSolar’s project development business. Covington & Burling LLP advised OptiSolar on the deal. OptiSolar is a California-based independent power producer committed to delivering clean, competitively priced electricity to the power grid from ...
Covington Advises Procter & Gamble On Sale of ThermaCare
7/17/2008
NEW YORK, NY, July 17, 2008 — Wyeth Consumer Healthcare, a division of Wyeth, announced that it signed an agreement to purchase ThermaCare, a leading over-the-counter heat wrap, from Procter & Gamble. Covington & Burling LLP advised Procter & Gamble on the transaction. Introduced in the United States in 2002, ThermaCare Heat Wraps use heat therapy to relieve ...
April 2008, Trademark World
Covington Advises Encysive on Pfizer Deal
2/21/2008
WASHINGTON, DC, February 21, 2008 — Encysive Pharmaceuticals Inc. announced yesterday that it has entered into an agreement to be acquired by Pfizer Inc. Under the terms of the agreement, Pfizer will make a cash tender offer for all issued and outstanding shares of Encysive for $2.35 per share, representing an equity value of approximately $195 million. ...
1/28/2008
WASHINGTON, DC, January 28, 2008 — LX Networks LLC, a leading producer of local television and broadband video programming under the LX.TV name, has been acquired by the NBC Local Media Division of NBC Universal. The announcement was made today. Covington & Burling LLP advised LX Networks in the deal. Founded in 2006 and based in New York, LX’s programming ...
11/16/2007
WASHINGTON, DC, November 16, 2007 — Covington & Burling LLP was awarded the WORLDleaders International IP Award for trademark excellence at an awards dinner held at the Grosvenor House in London last night. The WORLDleaders IP Awards are presented annually by the publishers of Trademark World, Patent World, and Copyright World, the world’s leading titles for ...
Covington Advises Barclays on Naming Rights Deal
January 19, 2007
WASHINGTON, DC, January 19, 2007 — Barclays has announced that it will pay an undisclosed amount for naming rights to the new Barclays Center located in Brooklyn, New York for a term of 20 years. Covington & Burling LLP advised Barclays on the transaction.The new Barclays Center is the core feature of the Frank Gehry designed $4 billion Atlantic Yards ...
September 2004, Cosmetic/Personal Care CPC Packaging
September 2004, Medical Device Link
Trademarks
January 2003, chapter in E-Commerce Law & Business (2 vols.), Aspen Publishers
- WTR1000, Prosecution and Strategy (2015)
- Washington DC Super Lawyers, Intellectual Property (2013-2017)
- Legal 500 US, Intellectual Property - Trademarks: Non-Contentious (2012, 2014-2016)
Practices
Industries
Education
Boston University School of Law, J.D., 1990
Université Catholique de Louvain, Candidature Unique en Droit, 1985
Cornell University, B.A., 1984
Bar Admissions
- District of Columbia
- Maryland
Languages
- French