Dechert - US Trademark Rankings 2023
Firm Overview:
Full-service, one-stop shop, international firm Dechert is recognised for its strength in trademark searching and clearance. The multinational trademark team assists with contentious and non-contentious matters on a global scale, utilising extensive global contacts for overseas proceedings. Dechert advises a breadth of household name clients, including Apple, L’Oréal and Inditex, the parent company for fashion brands Zara, Pull&Bear and Massimo Dutti. On the contentious side, the firm acted on a highly reported matter on behalf of the Cousteau Society, owner of trademarks related to Jacques Cousteau the famed oceanographer and filmmaker.
Team Overview:
Dechert has 21 offices, with ten based across the US. Partner Glenn Gundersen is a peer-recognised “expert in clearance”. Based in Philadelphia, Gundersen advises on global trademark portfolios, prosecution and opposition and cancellation matters. A client says “he’s legendary, he really knows a lot about trademark trends and all of the different challenges… there’s no question about his expertise.” Joining Gundersen in Philadelphia is litigator Diane Danoff, who has honed her skills over 35 years practising and represented Kellogg’s and Nintendo in a trademark and unfair competition matter. New York-based partner Jennifer Insley-Pruitt is skilled both in contentious and non-contentious matters. With her colleague Danoff, Insley-Pruitt has represented convenience store chain Sheetz against hot drink sweetener company Splenda in a trademark and trade dress litigation.
Key Matter:
- Dechert’s Gundersen represents technology mammoth Apple before the Trademark Trial and Appeal Board (TTAB) in an ex parte appeal. The appeal concerns the TTAB’s refusal to register the mark ‘Apple Music 1’. Gundersen has previously succeeded in opposition matters for Apple, with one concluding in 2022 opposing the use of marks infringing on Apple’s ‘Ceramic Shield’.
- The Cousteau Society v Celine Cousteau. Dechert represented plaintiff The Cousteau Society (TCS) in a complex matter concerning the intellectual property of the famous oceanographer Jacques Cousteau. TCS brought the case against companies owned by Cousteau’s granddaughter, Celine Cousteau, alleging her use of her grandfather’s name, likeness and trademarks, including his famous red hat, to promote her documentaries.
- The matter was highly reported on due to the reputation of Jacques Cousteau. The court heard the matter in 2020, granting some of TCS’ claims and denying others. In August 2022, Dechert obtained an amicable settlement between TCS and Celine Cousteau. Acting for TCS were Dechert’s team led by Insley-Pruitt and including Gundersen and Daniel Roberts.
Clients:
Apple, The Ivy League, The Cousteau Society, Epson, Fortune magazine, Inditex, Kellogg’s, Nintendo, Sheetz, Willis Towers Watson.
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