Hogan Lovells - US Trademark Rankings 2023
Firm Overview:
Hogan Lovells’ “terrific team” of US lawyers has extensive trial experience on trademarks cases through local and federal district courts nationwide. The team works with the appellate group at the Courts of Appeals and the US Supreme Court on trademark matters, recently in Romag Fasteners v Fossil and B&B Hardware v Hargis Industries.
The US trademarks practice has five partners and ten other lawyers in DC with five other partners and seven other lawyers across San Francisco, New York, Boston and Northern Virginia. The US team integrates with one of the world’s largest IP practices with clients drawing on a global protection, enforcement and litigation network of 400 IP professionals across the EMEA and APAC regions.
Anna Kurian Shaw is a first chair trial lawyer with nearly 25 years’ experience litigating trademark, unfair competition, false advertising, and copyright cases. Shaw has worked on enforcing and obtaining protection for non-traditional trademarks such as the shape of the Tic Tac mint, the product configuration of various furniture designs, and the purple colour of a protective glove. She has represented iconic brands such as Nutella, American Red Cross, The Smurfs, Goodyear, Segway, Ketel One, Kia, and Girl Scouts. The trademarks team works closely with colleagues that have held key government positions, including Neal Katyal, a former acting solicitor general of the United States.
The team’s trademark portfolio work includes advising Park Hotels & Resorts, a publicly-traded hotel REIT. The team undertook trademark counselling work and a successful Trademark Trial and Appeal Board defence against an opposition to register its mark by a foreign hotel hospitality chain.
Key Matter:
- Hogan Lovells represents rideshare company and technology giant Uber in a trademark infringement and unfair competition lawsuit brought by real estate company UberRE, in the US District Court for the Northern District of California.
- UberRE sued Uber, claiming prior rights in the ‘Uber’ mark deriving in part from an acquired trademark registration for ‘Uber’ in connection with real estate services. UberRE alleges Uber’s recent launch of ‘Uber Travel’ and its pending application for that mark infringes those rights, and seeks US$250 billion in damages. Following the filing of Uber’s motion to dismiss, UberRe filed a stipulated dismissal with prejudice of its complaint.
- Hogan Lovells represented Italian confection and food maker Ferrero, Soremarec, and Ferrero USA in a cross-border matter with the US, Italy and Luxembourg, in connection with the management and enforcement of the US trademark portfolio related to its confectionery business, including the ‘Nutella’, ‘Tic Tac’, ‘Ferrero Rocher’, and ‘Kinder Joy’ marks, among other trademarks and trade dress.
- The team assisted Ferrero with trademark prosecution and management, investigation, enforcement, and litigation matters, including prosecution of the source-identifying production configuration for the Tic Tac pill, prosecution of the trade dress for the recently launched Kinder Joy product, and enforcement of Ferrero’s associated trademark rights.
- The team successfully settled through mediation and litigation relating to the sale of an infringing product called King Egg, as well as materially different grey market Ferrero products in the US.
Clients:
Uber Technologies, Ferrero and Ferrero USA, Office Depot, Spark the Journey, Canyon Bicycles, Jaguar Land Rover, Roxor Gaming, Tango Card, Moxilla Foundation, Cassin, Tadeusz Ogrodnik Tropical, Signant Health Global, Roland.
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