Ropes & Gray

Firm overview:

Ropes & Gray is a global firm home to a team knowledgeable in domestic and international trademark law. Its attorneys assist clients throughout the entire lifecycle of an asset, from initial portfolio development and strategy, through to enforcement via litigation when necessary. Longstanding clients include artist-driven beauty brand developer Luxury Brand Partners, which has used Ropes & Gray for trademark and brand management services for a decade.

The firm also has a strong life sciences group and assists with transactions in this field where, increasingly, value is related to trademarks or branding. Ropes & Gray also advises some of the world’s most prominent pharma and biotech companies on global rights acquisition and enforcement for their marks on an ongoing basis.

Team overview:

Ropes & Gray’s trademark practice is centred on its Boston, Washington, DC and New York offices.

Boston partner Emilia Cannella (Outstanding) is an expert in prosecution and the domestic and international development of brands. Cannella manages Ropes & Gray’s trademark rights management practice and has been an active member of the International Trademark Association (INTA) for more than 25 years. A thought leader, she is also skilled in trademark-related transactional and licensing matters.

Senior DC counsel Peter Brody (Recommended) heads up the Trademark, Copyright, False Advertising and Trade Secret practice. A litigator, Brody takes on complex federal and state court matters covering all facets of IP. Brody maintains a roster of loyal clients, having advised Harvard Law Review Association, LG Electronics, Oscar de la Renta, and Pfizer, among others.

Key matters:

• Ropes & Gray filed a federal circuit appeal of a Trademark Trial and Appeal Board (TTAB) decision regarding the trademark ‘Cologne & Cognac Entertainment’ on behalf of clients Institut National des Appellations d’Origine & Bureau National Interprofessional du Cognac. The clients own the geographic certification mark ‘Cognac’ and previously filed an opposition against the registration of ‘Cologne & Cognac’ for audio and video recordings and production and related services, asserting likelihood of confusion and dilution.
  
  The TTAB denied the opposition, applying an erroneous legal standard for assessing the fame of a certification mark based on consumer awareness of its function. In August 2024, the federal circuit’s decision definitively established the standards for the protection of geographical indications as certification marks under US trademark law, clarifying that there was no requirement for the public to be aware of the mark’s “certification function”.
• Ropes & Gray regularly acts as outside trademark counsel to Bronco Wine Company, one of the US’ largest producers of wine, providing trademark portfolio management and advice as well as representation in conflict matters. Recently these have included disputes involving Bronco’s ‘Fat Cat’ and ‘Six Degrees’ marks, among others.
• The firm assists Luxury Brand Partners with the development of beauty and personal care products from initial trademark selection and clearance to worldwide rights acquisition, as well as management of the ‘In Common’, ‘IGK’, ‘V76’, ‘R+CO’, ‘Smith & Cult’ and other brands.

Clients:

Areteia Therapeutics, Bronco Wine Company, Bureau National Interprofessional du Cognac, Heartland Dental, HRGi, Institut National des Appellations d Origine, Luxury Brand Partners, Planet Fitness, TPG Capital, TSG Consumer Partners, Zaxby’s.