Trademark, False Advertising & Unfair Competition

Consistently recognized as a leader in the field by Chambers USA and other US and international ranking services, Arnold & Porter's prominent Trademark practice covers all aspects of trademark and design protection, unfair competition, and infringement and other brand enforcement issues, including extensive experience in handling anti-counterfeiting and grey goods issues. Our experience in both counseling on and litigating trademark, false advertising, and unfair competition matters allows us to partner with clients to plan and execute comprehensive registration and enforcement strategies, effectively handle disputes on an expedited basis, including obtaining early injunctive relief, efficiently manage targeted discovery, and often achieve early disposition of such disputes by summary judgment or favorable settlement. We also have extensive experience litigating opposition and cancellation proceedings before the Trademark Office Trial and Appeal Board.

Trademark litigation and enforcement in courts throughout the country. We have distinct experience handling all aspects of trademark infringement, counterfeiting, and dilution litigation, including:

  • applications for temporary and emergency relief;
  • enforcement of word marks, design marks, and unregistered trade dress;
  • litigation of disputes involving product configuration marks and design patents;
  • conducting and litigating confusion, secondary meaning, and other trademark and false advertising surveys; and
  • obtaining substantial monetary relief, often in the eight figures.

Our trademark lawyers have won precedent-setting appellate cases in the areas of trademark protection, fair use, secondary liability, and rights of publicity. We also handle all manners of unfair competition ligation under both federal and state law, including complex false designation of origin and false advertising claims. In addition, we have unique experience litigating complex intellectual property licensing disputes, both in court and through arbitration.

US and global trademark portfolio strategy, prosecution, and management. We provide strategic advice and efficient management for clients' US and global trademark portfolios, including for more challenging issues such as the protection of color marks, trade dress, product configurations, and other non-traditional marks. Our depth of knowledge of USPTO practices and procedures, and our experience working with foreign trademark associates worldwide, allows us to provide a comprehensive array of services including portfolio strategy and management, trademark selection and clearance advice, enforcement strategies and advice, and trademark prosecution. The size and complexity of the portfolios we manage vary widely, from several marks to hundreds of marks.

Opposition and cancellation proceedings before the Trademark Trial and Appeal Board. Our trademark lawyers routinely litigate trademark opposition and cancellation proceedings, and have successfully handled dozens of such matters in recent years in a variety of industries.

Prosecution and defense against false advertising claims. Our lawyers have successfully litigated many false advertising and unfair and deceptive trade practices cases in federal and state court, before the National Advertising Division of the Council of Better Business Bureaus, and in alternative dispute forums. We have particular experience litigating false advertising disputes involving FDA-regulated products, including both prescription drugs and OTC health care products.

Leading brand and design protection practice for luxury goods, apparel, and consumer product companies. In addition to our renowned litigation practice, we also handle domestic and international investigations, work with law enforcement and border patrol personnel, and audit our clients' supply chains for evidence of both counterfeit and diverted authentic goods.

Trademark licensing and due diligence. Our transactional attorneys have tremendous depth of experience structuring and negotiating strategic trademark licenses and joint ventures in a wide range of industries. Trademark licenses present a host of issues beyond IP protection, and we leverage our firm expertise in corporate transactions, product liability, regulatory, and bankruptcy matters to provide comprehensive advice in all of these key areas. In addition, when performing trademark diligence as part of corporate transactions, our broad experience with mergers, acquisitions, joint ventures, venture capital financings, debt financings, and other corporate transactions means that we can put our diligence work in the proper context and offer practical solutions for any issues that are uncovered in our diligence.

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