Trademark Prosecution & Counseling

Led representation of global specialty vinyl manufacturer in federal lawsuit and TTAB cancellation proceeding brought under the Lanham Act and related state laws against unauthorized reseller Defendants who engaged in trademark infringement and false advertising by, among other things, incorporating our client’s mark into their own federally registered mark.  The matter was successfully settled in our client’s favor during the discovery period.

Obtained summary judgment in defense and favor of renowned entertainer against complaint for trademark infringement in federal court, resulting in permanent injunction against plaintiffs. The district court’s decision was affirmed on appeal to the Fifth Circuit Court of Appeals (2017 WL 2954398) and the Supreme Court denied petition for a writ of certiorari.

Represented the management of a division of a multi-national public company in successfully acquiring the assets of the division in a “Stalking Horse” Bid in the US Bankruptcy Court in Delaware. After acquiring all of the assets, he represented the company for more than ten years in various corporate matters until he assisted the client in a stock sale of the company to a large public company.

Led trademark enforcement action for client in pool care products space against direct competitor. Quickly obtained favorable settlement for client, requiring competitor to cease sales of infringing goods, repackage existing inventory, recall infringing goods from marketplace, and agree to pay liquidated damages for any future infringement.

Led the defense and favorable resolution of global trademark infringement dispute and related opposition/cancellation proceedings brought by fashion house against personal care products manufacturer.

Following the filing of federal lawsuit and motion for injunctive relief, obtained successful settlement for home medical service provider on its claims for federal trademark infringement and various state law violations (including deceptive trade practices, dilution and unfair competition) against a competitor who had misappropriated client’s trademark.

Represented U.S. manufacturer in federal trademark infringement action against a former distributor. Obtained summary judgment on manufacturer’s trademark infringement claim, which included an award of treble damages and attorney’s fees. Successfully defeated distributor’s appeal of the district court’s summary judgment order in the United States Court of Appeals for the Eleventh Circuit and petition for writ of certiorari to the United States Supreme Court.

Successfully sued a former distributor of a client for trade dress infringement relating to coffee packaging. The case was resolved in three days.

Performed copyright clearance work for nationwide quick-service restaurant chain, for use of musical works at seminars, in marketing and advertising materials, in training materials, and in special events. The clearance work included, but was not limited to, negotiation of license agreements with major public performance organizations, as well as drafting and negotiation of licenses for specific works with rights owners.

Served as co-counsel on a trade dress infringement case, wherein a client sued a rogue former franchisee who had set up a competing, copycat restaurant. The case was favorably settled in favor of our client, who received a consent judgment precluding the former franchisee from operating restaurants using our client’s trade dress.

Advised a group of restaurant franchisee owners, allowing them to adjust the requirements of a franchisor’s program that could have exposed the franchisees to potential liability for violations of rights of privacy, as well as false claims of endorsement, affiliation or sponsorship, among other concerns. AGG assisted the client in negotiating resolution of the dispute, short of litigation.

Successfully sued one of the largest food companies in the nation for trademark infringement involving a line of frozen food products on behalf of a food distribution cooperative, receiving a very favorable settlement after a preliminary injunction hearing (but before the court’s decision).

Successfully defended a request for preliminary injunction brought by a major snack food manufacturer against another snack food manufacturer, alleging trade dress infringement based upon the respective companies’ product packaging.

Counseled client in the television industry regarding trademarks, copyrights, and brand protection.

Acted as intellectual property counsel to the host of an AM radio show.  The representation included drafting and review of a radio talent and studio use agreement, providing intellectual property advice on the development of content for the radio show, prosecution of trademark and copyright applications covering content created for the show, and drafting model and photograph releases for use with third parties appearing on the radio show.

Involved in proceedings before the United States Trademark Trial and Appeal Board opposing a trademark application on behalf of a restaurant franchise client. The trademark application was filed by a former franchisee, seeking to register an infringing trademark for use in a competing restaurant business.

Represented a consumer products company in a suit against a competitor for trademark infringement and violations of Georgia’s Deceptive Trade Practices Act and the federal Anticybersquatting Consumer Protection Act.  The United States Court of Appeals for the Eleventh Circuit affirmed an order granting summary judgment to our client.

Represented U.S. manufacturer of boating equipment in federal false advertising litigation against a competitor. Obtained a preliminary injunction on behalf of client requiring the competitor to cease distribution of promotional materials, remove pages from its website, issue retraction letters to customers, and undertake corrective advertising. Negotiated a favorable settlement on behalf of client prior to trial.

Assisted client Network Services Company, Inc., a multi-national network of suppliers and distributors who provide top-quality, name-brand products to customers worldwide, with a major rebranding effort. The representation included assessment of Network’s entire trademark portfolio, the prosecution of a number of new applications to register trademarks domestically, as well as the creation and execution of monitoring and enforcement programs for the protection of Network’s intellectual property.

Counseled American Breast Care LP, a worldwide manufacturer of post-mastectomy breast care products,  on the international protection of its intellectual property. The representation included the prosecution of applications to register trademarks in twelve foreign countries, as well as the creation and execution of monitoring and enforcement programs for the protection of intellectual property domestically and abroad.

Obtained favorable settlement for a consumer products company in its trademark and copyright infringement lawsuit against an international counterfeiter. Conducted an ex parte seizure of counterfeit goods stored at a warehouse with the assistance of U.S. Marshals.

Obtained favorable settlement for a marine products company in its Lanham Act lawsuit against a competitor using website Meta tags and Google AdWords infringing the company’s trademarks.