29 August 2023Features

Davis Wright Tremaine - US Trademark Rankings 2023

Firm Overview:

General practice firm Davis Wright Tremaine, with nationwide office coverage and serving industries from entertainment to fashion to healthcare, is acknowledged by peers as a leading player in trademark portfolio management for major brands. DWT’s scale means the team is seen to have “a never-ending flow of work”. DWT’s experience in trademark clearance, protection, and worldwide portfolio management sits alongside its enforcement, disputes and litigation and anti-counterfeiting practice.

Team Overview:

Alexandra Nicholson, national chair of the Media, Entertainment & Intellectual Property Practice, advises well-known companies on global brand protection and enforcement, transactions and strategic planning. Roxanne Elings has been lead counsel in more than 60 trials, substantive court hearings, and appellate arguments. Elings was the first to obtain an order applying the concept of extraterritorial jurisdiction in cases arising under the Lanham Act. In June 2023, the group lost trademark prosecution and transactions attorney Matthew Moersfelder to rival Seyfarth Shaw with a mission to establish Seyfarth’s IP practice in Seattle.

Key Matter:

  • Nicholson is responsible for the worldwide trademark portfolio of Sesame Workshop, producer of Sesame Street and other renowned children’s television programming, spanning 120 countries around the world. 
  • Nicholson is responsible for the worldwide trademark portfolio of BlackBerry, consisting of clearance, protection, enforcement, and claims/disputes, including global protection and enforcement strategy in 159 countries.
  • Ellings is acting for Blackberry in its opposition to Aiberry’s filing of the mark ‘Botberry’.
  • Nicholson acts as outside trademark counsel to Home Box Office, the cable television network. Nicholson is responsible for providing trademark advice and expertise to HBO’s in-house trademark department related to the network’s extensive programming.
  • Nicholson acts as outside trademark counsel to Macmillan Publishers, the global book publishing company. Nicholson is responsible for trademark clearance and protection of the company’s many global imprints and brands.
  • Steven Klein secured a rare order for clothing brand Garan from an Oregon federal judge reversing a decision of the Trademark Trial and Appeal Board (TTAB). The judge found Garan’s ‘Garanimals’ mark is famous and entitled to broad protection and cancelled the TTAB’s registration of a similar brand name for clothing.

Clients:

Blackberry, Garan, Home Box Office, MacMillan Publishers, Revelry Vintners, Send A Cake, Sesame Workshop.