Venable

Firm overview:

Venable advises its industry-diverse clients on global trademark matters. The full-service firm offers the complete range of contentious and non-contentious services and manages large portfolios for industry leaders, including lifestyle and adult entertainment brand Playboy, handling its 10,000+ marks in 190 countries. Notably, Venable represented Mattel against Burberry, opposing the fashion brand’s registration of ‘BRBY’; a settlement was reportedly reached in 2023.

Historically, Venable’s trademark litigation team has acted on significant matters up to the US Supreme Court. In 2000, Venable succeeded on behalf of Walmart in the precedential Walmart v Samara Brothers. The case established the principle that for the owner to obtain trademark protection for a product design, it must be widely recognised that the product was created by the owner.

Team overview:

Partners Rebecca Liebowitz and Andrew Price co-chair the Trademark Prosecution and Brand Management Group. Liebowitz assists clients with prosecution matters including opposition and cancellation matters before the TTAB. Price’s practice focuses on brand management and strategy, assisting with clearance, registration, enforcement and licensing. His clients cover diverse industries, and include leading mobile phone manufacturer Sony Mobile.

Key matters:

• Liebowitz assisted Taylor Swift’s management group with applications for trademarks including ‘Female Rage: The Musical’ and ‘Taylor-Con’.
• Mattel v Burberry, Trademark Trial and Appeal Board, Opposition No. 91285723. Venable’s Sharoni Finkelstein filed an opposition to British fashion brand Burberry’s trademark ‘BRBY’ on behalf of multinational toy and entertainment company, Mattel, prior to the release of Warner Bros’ box office hit movie Barbie. A settlement was reportedly reached in late 2023.

Clients:

American Bar Association, Coty, Mattel, Playboy, Sony Mobile, VBrick Systems, Walmart.