Dechert

Firm overview:

Full-service, one-stop shop 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 worldwide contacts for overseas proceedings.

Dechert manages the trademark portfolios of some of the world’s most famous brands and advises a breadth of household name clients including L’Oréal, Zara and The Ivy League.

The firm has represented Apple since 2005 including in dozens of Trademark Trial and Appeal Board proceedings involving trademarks such as ‘iPhone’, ‘iPad’, ‘Apple Watch’ and more.

Dechert makes use of the latest legal practice technology to efficiently serve its clients including 12 generative AI tools, some of which it has started using on live client matters.

Team overview:

Dechert’s US trademark practice is centred on its Philadelphia and New York offices, and it also has trademark partners in Paris and London.

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”. Gundersen’s key clients include Apple, Diageo, Willis Towers Watson, and Zara.

Litigator Diane Danoff has honed her skills over 35 years' practice. Notable matters she has been involved in include representing Kellogg and Nintendo in a trademark/unfair competition suit, as well as representing Marriott International in trademark and false advertising litigation that ended in favour of Marriott.

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 beverage sweetener company Splenda in a trademark and trade dress litigation.

Gayle Denman advises clients on all aspects of brand protection, including outside of the US. She is co-chair of the International Trademark Association’s Global Bad Faith Registration Task Force and has been part of Dechert’s team representing clients such as Apple and Zara.

Key matters:

• Dechert serves as trademark counsel for benefits consulting giant Willis Towers Watson. Recent projects for the client include representing subsidiary Sage Insurance Services in defending trademark litigation in California brought by Sagesure Insurance.
• The Ivy League—the group of colleges and universities comprising Harvard, Yale, Columbia and more—has entrusted Dechert with its trademark work for more than two decades. Current matters include trademark oppositions in China and India, and US oppositions to applications for marks such as ‘Ivy’, ‘Ivy Leader’ and ‘IV League’.
• Dechert has represented Zara in trademark matters since 1989. The firm is currently defending an opposition by retail chain Ann Taylor to the client’s application to register ‘LFT’ based on its ‘Ann Taylor Loft’ mark.

Clients:

Apple, Atos IT Solutions and Services, Kellogg, Nintendo, The Ivy League, Willis Tower Watson, Zara.