Pillsbury Winthrop Shaw Pitman

Firm overview:

Pillsbury Winthrop Shaw Pittman is an international law firm operating 21 offices in the US, UK and Asia. Thirteen of its offices are in the US, from San Francisco to San Diego on the West Coast; New York to Miami on the East Coast; and three offices in Texas.

A recipient of various rankings and awards, Pillsbury and its lawyers are highly regarded in the industry. Known for its high-stakes IP litigation practice, the firm ranks among the top ten in the US in patent, trademark and copyright litigation.

The firm focuses particularly on the technology and life sciences, energy, financial, and real estate and construction sectors.

Pillsbury’s Trademark Counseling, Prosecution and Litigation team provides comprehensive, personalised trademark service to large and small, emerging and established companies in the US and abroad.

The team file more than 2,600 trademark applications and obtain nearly 2,000 trademark registrations for clients annually.

Pillsbury has a track record of successful enforcement and defence actions before US and international courts and administrative agencies, including the Trademark Trial and Appeal Board (TTAB).

Attorneys have litigated cases involving all types of trademarks and trade symbols, including word marks, logos, trade dress packaging and product design, and graphics, frequently with overlapping design patent, utility patent and copyright claims.

Team overview:

IP partner Callie Bjurstrom is recognised as a top litigator delivering big wins, as well as for her trademarks prowess. A tenacious client advocate, Callie has successfully tried cases to verdict as lead counsel in both state and federal courts, as well as represented clients before the International Trade Commission. She litigates patent, trademark, trade secret, copyright, unfair competition and other bet-the-company disputes.

Notably, Bjurstrom prevailed in a unanimous ten-day trial on behalf of San Diego Comic Convention in which a California federal jury found that a rival event in Utah infringed on Pillsbury’s client’s “Comic-Con” trademarks. She obtained an award of nearly $4 million in attorney’s fees and costs.

Trial lawyer William (Bill) Atkins is notable for his track record as lead counsel in more than 150 intellectual property and bet-the-company litigations during his 30-plus years with the firm. In one example of his trademark cases, Atkins obtained a preliminary injunction denial against Alibaba for a small cryptocurrency client offering Alibabacoins.

IP partner and trademark specialist Pat Jennings has extensive experience in every aspect of trademark law, providing counsel that is both seasoned and practical. His practice encompasses trademark counseling, clearance, prosecution, portfolio maintenance and management, due diligence, enforcement, domain name disputes, licensing, and oppositions and cancellations. Before joining Pillsbury, Pat was a trademark examining lawyer at the USPTO.

Key matters:

• Pillsbury represented the San Diego Comic Convention in a trademark infringement and unfair competition case that gained national media coverage. A California federal jury unanimously decided in favour of the San Diego Comic Convention, ruling that the defendants infringed all three of San Diego Comic Convention’s asserted “Comic-Con” trademarks.
• Represented complainants Hyundai Motor America and Hyundai Motor Company of Korea, in an ITC matter to stop the importation of illegal, gray-market service and repair parts using the Hyundai trademarks in which the ITC issued a Limited Exclusion Order, Cease and Desist Orders, and a Consent Order against four automotive parts dealers, including the US dealer, the middleman, and the suppliers.  (Certain Replacement Automotive Service and Collision Parts and Components Thereof, No. 337-TA-1160).
• Defended a space rocket manufacturer against infringement claims, leading to a favourable settlement.
• Defeated Sony Ericsson’s request for a Preliminary Injunction seeking to prohibit Clearwire from nationwide use of its trademark in the US.

Clients:

San Diego Comic Convention, Hyundai, Clearwire