Finnegan, Henderson, Farabow, Garrett & Dunner - US Trademark Rankings 2023
Firm Overview:
Finnegan, Henderson, Farabow, Garrett & Dunner is a “fabulous” intellectual property boutique that “always comes up very high for prosecution”. The prosecution practice is responsible for the registration and application of nearly 25,000 domestic and international trademarks, routinely filing before the European Union Intellectual Property Office, the UK Intellectual Property Office and the US Patent and Trademark Office. Finnegan is entrusted with the global portfolio for the Association of Tennis Professionals (ATP), ensuring trademark protection in each jurisdiction where its tennis tournaments are held, and ice hockey equipment manufacturer, Bauer Hockey, that has engaged Finnegan for 15 years.
In the last five years, Finnegan has handled nearly 400 opposition and cancellation matters and more than 100 US litigation cases. Before the Trademark Trial and Appeal Board (TTAB), Finnegan has assisted Sony, Starbucks and ByteDance, the owner of TikTok. Referral foreign counsel admit “if it’s a big ticket litigation, I will go to Finnegan.” The litigation practice covers a range of trademark issues, obtaining favourable outcomes for clients in US district courts. The success extends to domestic clients in overseas matters, as Finnegan scored an impressive victory for sports retailer Under Armour before the Supreme People’s Court in China against a copycat, obtaining $300,000 in damages for its client.
Team Overview:
Finnegan has five offices in the US with a further six in Europe and Asia and is home to 325+ professionals focused on IP, including 30 former USPTO examiners. Washington-based partner Douglas Rettew is “one of the most talented trademark litigators out there… he is a straight shooter, very strategic, very creative, very articulate.” With experience before the TTAB up to the US Court of Appeals for the Federal, Fourth, Eighth and Eleventh Circuits, a particular skill of Rettew’s is temporary restraining orders, having obtained a TRO for US outdoor clothing retailer Patagonia, and successfully defended Under Armour from a preliminary injunction to recall its products. Also in DC is Danny Awdeh, focusing on complex litigious matters as well as delivering effective strategies to tackle counterfeit and grey market products entering the market, for international trademark clients.
Key Matter:
- Sony Group v Neil Campbell, Opp. No. 91245851, TTAB, Judges Zervas, Lykos, Larkin. On behalf of Sony, Finnegan partners Mark Sommers, Naresh Kilaru and of counsel Katie McKnight filed an opposition against registered mark ‘Sonistream’ alleging likelihood of confusion and dilution due to Sony’s longstanding rights in the ‘Sony’ mark.
- The TTAB favoured Sony’s rights, deeming its mark “exceedingly famous” and “among the most widely recognised marks in the United States” and accepted Sony’s expert linguist’s evidence that some consumers are likely to pronounce the “Soni” in ‘Sonistream’ as “Sony”. This is the first decision finding ‘Sony’ to be a famous mark in the US.
- Maglula v Amazon.com, 1:19-cv-01570, E.D. Va., Judge O’Grady. Finnegan represented Israeli rifle and pistol magazine manufacturer Maglula in a one-of-a-kind district court litigation against Amazon, alleging the marketplace sold counterfeit products infringing Maglula’s patent, trademark, and copyright rights.
- The Eastern District of Virginia denied Amazon’s attempt to dismiss the case, finding the client presented a “straightforward counterfeit case” that the manufacturers created ‘knock-offs’ of Maglula’s products and they were sold on Amazon. “The evidence of unlawful counterfeiting … is overwhelming,” Judge O’Grady found. After defeating Amazon’s attempts to make the case go away, the parties were ordered to mediate, they entered into an agreement, and the case was dismissed.
- Finnegan’s Rettew and Yinfei Wu, led by Awdeh, collaborated with local counsel in China for a Supreme People’s Court matter on behalf of Under Armour. The sportswear client sought a preliminary and permanent injunction and damages against the defendant Uncle Martian for trademark infringement, alleging its logo had been copied.
- China’s High Court ruled in favour of Under Armour, issuing both injunctions, ordering $300,000 in damages and for Uncle Martian to publish a statement to mitigate the infringement. The Supreme People’s Court confirmed the decision. The case is significant in that the Chinese courts rarely grant preliminary injunctions, and that it recognises Under Armour’s IP rights in China.
Clients:
Ambev, AMC Mortgage, American Retirement Association, Association of Tennis Professionals (ATP), Bauer Hockey, Bridgestone Firestone, ByteDance, Dr August Wolff KG Arzneimittel, Gateway, Maglula, Patagonia, Sony Group, Under Armour.
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