Mitchell, Silberberg & Knupp - US Trademark Rankings 2023
Firm Overview:
Mitchell, Silberberg & Knupp provides trademark advice to domestic and international clients from New York, LA and DC. The prosecution practice manages portfolios of one to 10,000 records in 100+ jurisdictions. The IP team collaborates with the Corporate and Entertainment Transaction teams to provide combined IP, corporate, labour and employment law advice to clients such as joke card game maker Cards Against Humanity. Led by Eleanor Lackman, MSK successfully shut down operations by counterfeiters in China, off-line infringers in the US and obtained Trademark Trial and Appeal Board cancellations for similar registered marks such as ‘Jokes Against Morality’. MSK’s entertainment and IP litigation team provides sector advice to clients in film, television, music, gaming and animation. The team has acted on trademark matters for well known video game titles Call of Duty and Grand Theft Auto, and an impressive list of world famous artists including Jay-Z, Blondie, Outkast and One Direction.
Team Overview:
IP practice chair Lackman focuses on litigation and counselling for the media, entertainment and sports industries. Splitting her time between New York and California, Lackman has led clients in many successful trials, including appeals in federal and state courts. Her experience includes drafting amicus briefs in major trademark cases involving brands such as Disney, YouTube and Google. Chair of the Entertainment & IP Litigation Practice Group and co-chair of the Video Game & Interactive Entertainment Group Karin Pagnanelli has acted on a number of cases protecting the trademarks of leading game franchises including famous online role-playing game World of Warcraft and interactive music game Guitar Hero.
Key Matter:
- Pagnanelli, Marc Mayer, Lindsay Edelstein, and Marissa Lewis obtained favourable results for Activision, the creator of the famous Call of Duty franchise, in a recent trademark infringement case. Activision released a free game named Call of Duty: Warzone, and in response, Warzone.com, virtual board game developer of Warzone, threatened to sue. This triggered Activision to file a lawsuit seeking a declaration of non-infringement to which the defendant, Warzone.com counterclaimed, alleging trademark infringement. The matter was heard in the Central District of California in August 2022.
- The twofold Rogers test was applied, and the court considered whether Activision’s use of the mark was; i. artistically relevant, and ii. if it explicitly misled consumers as to its source.
- The court found that; i. Activision’s use of ‘Warzone’ was clearly relevant to the content of the game as it consisted of multiple players in a virtual battlefield which had all the hallmarks of the definition of a warzone, ii. the use of the term was not misleading, as ‘warzone’ is a common word with meaning independent of the defendant’s game, iii. Activision marketed the game as Call of Duty: Warzone and therefore was not explicitly misleading. The court concluded Activision had not violated the Lanham Act.
- Lackman represents NBA Properties (NBAP), the marketing and licensing arm of the National Basketball Association, in its TTAB matters. The NBAP is the owner of all trademarks and logos of the NBA and its teams. In a recent matter before the TTAB, NBAP filed an opposition regarding the logo for basketball team, the Houston Rockets, registered in a number of goods and services classes for use on merchandise. MSK obtained a successful opposition for NBAP, protecting the trademarks for the Houston Rockets team.
Clients:
Activision, Authors Guild, Blue Apron, Cards Against Humanity, Fareportal, NBA Properties, Osea, Outside Interactive, Plume, Providence Numismatic Guarantee, Sony Music, Tomorrowland.
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