Greenberg Traurig

Firm overview:

“Big player” Greenberg Traurig is home to one of the largest international trademark practices in the world. The IP & Technology practice has more than 250 IP professionals worldwide. GT’s Global Trademark & Brand Management group advises on all matters of non-contentious trademark law from selection to enforcement to worldwide portfolio growth.

On the litigation side, GT’s trademark litigators are well versed in all areas of contentious matters in federal and state courts, including complex litigation, trials and appeals, and implement global brand protection programmes for international clients. The full-service firm also boasts a strong transactional practice and benefits from a variety of legal skills outside of IP at its disposal to assist clients.

Team overview:

GT has 34 US offices coast to coast, and a further 12 in Europe, the Middle East and Asia. The Atlanta office is home to the highly recommended Joel Feldman, co-chair of the Trademark & Brand Management group. Feldman is “very good at portfolio management” and “great at prosecution”, say peers. His experience includes representing renowned brands in entertainment, the Grammy Awards and the estate of Michael Jackson before the Trademark Trial and Appeal Board (TTAB).

Stephen Baird is based in the Minneapolis office and covers the full range of trademark matters, including obtaining successful outcomes for non-traditional marks, single colours, product configuration marks and product packaging marks.

Susan Heller is known for her “great business sense” and brand strategy expertise. Based in Orange County, Heller is co-chair of the Global Trademark and Brand Management group and litigates on notable matters, including precedential cases in the district courts. Her expertise in new legal developments is sought by the UN for its AI for Good initiative, as she advises on AI and its impacts on IP.

Chicago-based Marc Trachtenberg specialises in online matters such as domain names, ecommerce, social media and innovative technologies such as NFTs and is active in ICANN. His transactional practice leads peers to say “on the tech transactional side he knows more than anybody”.

Key matters:

• Michel Keck v Mix Creative Learning Center
  Greenberg Traurig secured an appellate court victory in the Fifth Circuit for Houston art studio Mix Creative Learning Center, in a dispute with mixed-media artist Michel Keck. Keck alleged copyright and trademark infringement based on Mix Creative’s use of his Dog Art in art kits sold by the studio online. The district court found there was no wilful infringement and that the doctrine of ‘fair use’ protected the centre’s conduct, decisions that the Fifth Circuit affirmed. The district court also awarded attorney’s fees and costs to Mix Creative, which amounted to more than $100,000.
• Atlanta Greenberg Traurig shareholder Joel Feldman, co-chair of the Trademark & Brand Management group and adjunct law professor, represents Campari America as potential opposer to the mark CASACABO, owned by The Wine Group. Feldman filed a Trademark Trial and Appeal Board Extension of Time to Oppose motion on 12 April 2024.
• Los Angeles-based Greenberg Traurig shareholder Candice Kim, co-chair of the Global Trademark & Brand Management practice group, represents Tophatmonocle, which develops AI-enhanced learning platforms. The company is the defendant in a Trademark Trial and Appeal Board opposition to its mark 'T' by Deutsche Telekom. Ross Panko in ArentFox Schiff’s DC office filed an Extension of Time to Oppose motion on behalf of Deutsche Telekom on 18 November 2024.

Clients:

American Airlines, Caesars Entertainment, Campari America, Graco, Groupon, Johnny Rockets Licensing, Kinect Capital,  Mix Creative Learning Center, Propelled Brands, SE Gaming Services, Ther-A-Pedic Associates, Tophatmonocle, United Parcel Service.