Trademark and Domain Name Litigation

The Intellectual Property Group enforces our clients’ valuable trademarks and domain names in court, World Intellectual Property Organization (“WIPO”) arbitrations, and U.S. Patent and Trademark Office (“PTO”) proceedings.

The group’s trademark work has been groundbreaking.  For example, we helped to set the standards for Internet jurisdiction by persuading a federal court to dismiss a trademark action filed by the “Blue Note” jazz club in Manhattan against the “Blue Note” music club in Missouri for promoting itself on a “passive” website.  We developed an innovative campaign that enabled our client Weight Watchers to recapture the integrity of its POINTS® service mark in the face of expanding unlicensed use by third parties.  We represented Vision Direct in a seminal case concerning the use of search engine keywords to generate pop-up advertising.  The group also represented the Hard Rock Hotel in an early Internet licensing dispute with the Hard Rock Café and Planned Parenthood in a landmark infringement action against the operator of an anti-abortion website.

The group has won numerous WIPO arbitrations to recover infringing domain names for clients such as Doctors Without Borders; has successfully resolved Trademark Trial and Appeals Board proceedings for clients including Accenture, Vestar Capital Partners and Virgin Mobile; and has helped clients overcome oppositions and office actions in the PTO to register hundreds of trademarks.