29 August 2023Features

Pryor Cashman - US Trademark Rankings 2023

Firm Overview:

Pryor Cashman is a “reputable well-known firm in [New York].” When it comes to trademarks, the midsize full-service practice is recognised as being “bigger on prosecution”. The practice has two more locations in Miami and Los Angeles and provides global searches, clearance, enforcement and maintenance for clients’ trademarks. Currently managing 10,000+ active trademarks and handling 270+ contentious trademark matters, much of the firm’s work involves advising celebrities and well-known fashion brands. Pryor Cashman has previously advised famous music artists Jay-Z and Lady Gaga on trademark matters and handled portfolio management for high fashion brands such as Yves Saint Laurent and Chloé. Though its strength lies in prosecution, Pryor Cashman is currently representing MetaX in a highly-watched litigation case against Meta Platforms, the technology behemoth and owner of Facebook.

Team Overview:

“Really good litigator” Dyan Finguerra-DuCharme is co-chair of Pryor Cashman’s trademark practice. Though she assists clients with their portfolios, her practice is largely contentious, handling matters before the Trademark Trial and Appeal Board (TTAB) and federal and state courts for the firm’s most recognisable clients and celebrities. Finguerra-DuCharme has assisted L’Oréal, as part of its wider portfolio management, in a number of recent TTAB cancellation and opposition matters to protect the cosmetic company’s marks. Brad Rose is chair of the IP Group and has represented big names in fashion and music in trademark matters including skateboard brand Supreme and streaming service Tidal Music.

Key Matter:

  • MetaX  v Meta Platforms. Pryor Cashman’s client MetaX, founded in 2010, develops virtual reality (VR) and immersive technology for promotional use and events, serving companies like Red Bull, Twitter and featuring at music festival Coachella.
  • The defendant, formerly known as Facebook, rebranded as Meta Platforms in 2021. Since the rebranding, MetaX has filed a widely reported lawsuit in the Southern District of New York, arguing Meta Platforms has violated its registered and common law trademark rights. MetaX is one of numerous companies with ‘Meta’ in its name to file a trademark infringement case against Meta Platforms. 
  • Pryor Cashman partner Finguerra-DuCharme leads the case for MetaX, commenting: “Facebook has deployed its almost limitless resources to saturate the marketplace with its infringing ‘Meta’ mark,” arguing the issue is of reverse confusion and will cause harm to its client, particularly as the two companies offer similar products in technology and VR.

Clients:

Charlotte Olympia, Honda, Piaget, Lady Gaga, L’Oréal, Pharrell Williams, Supreme, Tidal Music, Yves Saint Laurent.