Debevoise & Plimpton

Firm overview:

Peers single out Debevoise & Plimpton’s “strong litigation group” as one of the top trademark practices in the US. The group is known for handling the most difficult cutting-edge cases, transactions and counselling projects in trademark, copyright, patent, advertising, right of publicity, privacy, and related matters.

Debevoise & Plimpton represents clients in in forums from the Trademark Trial and Appeal Board up to the Supreme Court. The firm has acted on precedential and bet-the-company cases for a roster of well-known brands across industries, including Bank of America, retail corporation CostCo, food delivery platform Grubhub and luxury brand Yves Saint Laurent. Headquartered in New York and with nine offices worldwide, Debevoise offers high-quality advice to its global clients on their US and cross-border trademarks matters.

Alongside the litigation practice, the group teaches and writes on intellectual property law, advocating for regulatory and legislative improvements in the law, and promoting efficient alternative dispute resolution mechanisms for intellectual property cases.

Team overview:

“Phenomenal lawyer” David Bernstein (Outstanding, Contentious) chairs the Intellectual Property Litigation Group and is unrivalled in his track record of trademark matters. One of his many landmark cases includes representing Booking.com in the first US Supreme Court case conducted by telephone, prevailing with an 8-1 ruling for the client to add ‘.com’ to its trademark. Fellow IP lawyers commend the “gold standard” litigator not only on Bernstein's high-level advocacy, but his pro bono work and involvement in supporting his colleagues.

The team includes “terrific lawyer” Megan Bannigan (Highly Recommended, Contentious), an heir apparent versed in emerging trademark trends, who led on a high-profile, NFT-related case against Nike. Other clients include Merck, MSCHF, X Corp and The Standard Hotel Group.

Debevoise & Plimpton strengthened its IP litigation group in August 2024 with the addition of ex-Quinn Emanuel partner Lindsay Cooper Hayman, who has a track record of securing major wins in high-stakes IP and commercial disputes.

Key matters:

• Bernstein represented Snap, owner of Snapchat, in what he said was a “significant win that ensures that Snap finally will obtain its trademark registration for ‘Spectacles’”. The USPTO had rejected the application for the mark, which relates to Snap’s augmented reality glasses, on the basis that the name was either generic or descriptive. However, in September the company convinced a California judge that the office erred in the denial and the trademark was placed on the secondary Supplemental Register.
• Bernstein and Bannigan represent art group MSCHF which was sued by footwear and apparel company Vans over the collective’s distorted parody versions of Vans trainers. The parties reached a confidential settlement agreement in August 2024.
• In April 2024, Bank of America prevailed in convincing a US appeals court that its ‘Erica’ virtual assistant does not infringe the rights of a website creator who owned an earlier ‘Erica’ mark. Bernstein represents Bank of America.

Clients:

Apollo Group, Arcesium, Bank of America, Casa Azul Spirits, DraftKings, Grubhub, Judd Foundation, Mark Anthony International, Merck KGaA, Pernod Ricard, Printify, Rauch Industries, Rhode NYC, Snap, SpaceX, StockX, WEX, X Corp.