Kirkland & Ellis - US Trademark Rankings 2023
Firm Overview:
“Terrific firm” Kirkland & Ellis has argued bet-the-company matters up to the US Supreme Court and is known for acting on “cutting edge” and “the hardest trademark” cases. The trademarks group of “the world’s richest law firm”, with firmwide revenues of $6.5bn in 2022, is recognised by peers for its “depth of clients” earning the trust of some of the biggest global brands including Nike, Apple, PepsiCo and Walt Disney. The full-service corporate firm has 19 offices globally, with 12 in the United States. Clients seek the team’s when-situations-go-south knowledge to advise on complex non-contentious matters to help avoid, or plan for, potential future litigation.
Team Overview:
“Top trademark litigator” Dale Cendali helms the Copyright, Trademark, Internet & Advertising (CTIA) practice group, with a “very, very good team behind her”. Alongside Cendali in New York is Claudia Ray, advising clients in pre-litigation matters and before the courts, including Delta Air Lines, shoe brand Converse and supermarket chain, Trader Joe’s. “Fine (Los Angeles) lawyer” Diana Torres represents AI to music and entertainment companies. Appellate and trial court litigator Joshua Simmons is “very smart”, say peers. His experience includes a landmark case considering the IP rights of dance steps where he obtained a dismissal on behalf of Epic Games, concluding the client had not violated the plaintiff’s trademark rights by featuring dance steps in video games.
Key Matter:
- RiseandShine v PepsiCo, No. 21-2786 (2d Cir. 2022)
Rise Brewing Company brought a preliminary injunction to halt further sales of PepsiCo’s new ‘Mountain Dew Rise Energy’ drink under the ‘reverse confusion’ argument, that consumers would confuse the drink with Rise Brewing’s ‘Rise’.
PepsiCo instructed Dale Cendali and Diana Torres to lead an appeal in the Second Circuit that concluded the District Court judgment made two errors: i. that ‘Rise’ was a weak mark, frequently used in connection with drinks alluding to an increase in energy and waking up; and ii. that the products were similar, concluding that the only similarity was the word ‘rise’ which in the context was a shared use of an ordinary word. PepsiCo successfully reversed the initial injunction.
- Apple v US Patent and Trademark Office, No. 1:22-cv-01231, US District Court for the Eastern District of Virginia
Apple struggled to trademark its ‘Smart Keyboard’ accessory from product launch in 2015. The mark’s rejection by the United States Patent and Trademark Office was upheld by the TTAB in 2020, both on the basis that the mark was too generic and merely descriptive of the product.
Apple brought in Kirkland & Ellis’ Cendali and Mary Mazzello to represent its appeal to the Eastern District Court of Virginia, who provided evidence that ‘Smart Keyboard’ is distinctive to Apple, including arguments of a lack of relevant Google search results prior to product launch. Kirkland’s team set out how the United States Patent and Trademark Office has granted a number of registrations to trademarks using ‘smart’ to accompany a tech-related word. The case is ongoing.
Clients:
pple, AECOM, Cleveland Guardians Baseball Company, Constellation Brands, Delta Air Lines, Dick’s Sporting Goods, Epic Games, Hello Products, Lucky Brand, Nike, PepsiCo, Take-Two Interactive Software, JK Rowling, Walt Disney.
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