29 August 2023Features

Ropes & Gray - US Trademark Rankings 2023

Firm Overview:

Ropes & Gray is a global firm home to a team knowledgeable in domestic and international trademark law. The full-service firm offers IP services from six offices across the US and further key locations in London, Shanghai, Tokyo and Seoul, working with international contacts to curate a global strategy for clients. The consumer branded products sector is the firm’s strength, with clients such as TV Guide and Bronco Wine Company and US stock market index Dow Jones relying on Ropes & Gray’s trademark practice. The non-contentious practice collaborates with clients on prosecution, brand strategy and portfolio development, maintaining and enforcing both domestic and international marks. Ropes & Gray has worked with beauty collective Luxury Brand Partners for a decade, acquiring global trademark rights and continuing to advise on brand strategy.

For contentious matters, Ropes & Gray represents clients up to federal district courts. The Trademark Group defends and asserts claims before the Trademark Trial and Appeal Board (TTAB) having handled hundreds of opposition and cancellation proceedings as well as finding success in multiple Uniform Domain-Name Dispute-Resolution Policy (UDRP) matters concerning infringing domain names and cybersquatters. The practice is also strong on transactional and licensing issues and has previously assisted Adidas in selling its shoe business Rockport, with Ropes & Gray advising on trademark licence negotiations.

Team Overview:

Boston partner Emilia Cannella is an expert in prosecution and the domestic and international development of brands. Cannella manages Ropes & Gray’s trademark rights management practice and is active in the International Trademark Association (INTA) as global vice chair of the Publications Committee. A thought leader, she is also skilled in trademark-related transactional and licensing matters. Peter Brody, based in Washington, is the head of the firm’s 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 the Bureau National Interprofessionnel du Cognac, Comité Interprofessionnel du Vin de Champagne and Institut National de l’Origine et de la Qualité for more than 30 years.

Key Matter:

  • A team of Erica Han, Cannella, Evan Gourvitz and Edward Black assisted Luxury Brand Partners with its collection of beauty brands with initial trademark selection, clearance and acquisition through to the consistent worldwide management of the brands. 
  • Ropes & Gray has brought trademark infringement, false advertising and copyright infringement claims, including a lawsuit to protect the mark ‘Go Off’, obtaining a favourable result for Luxury Brand Partners.
  • Ropes & Gray recently acquired the global trademark portfolio for US venture capital firm Sequoia Capital. A team of Gourvitz, Brody, Cannella and Han counsels the client on a global enforcement strategy, particularly concerning infringement activities in China, Hong Kong and India.
  • Brody has represented the Comité Interprofessionnel du Vin de Champagne, a French trade association and standard-setting organisation for Champagne wines, for more than 30 years, in disputes over the unauthorised use of those names in brands and other product designations in the United States. Ropes & Gray has filed numerous trademark oppositions in the TTAB on behalf of the client.

Clients:

Adidas, Bronco Wine Company, Bureau National Interprofessional du Cognac, Cardinal Systems, Comité Interprofessionnel du Vin de Champagne, Emerson Electric, Folio Fine Wine Partners (the Michael Mondavi Family), Fratelli Branca Distillerie, Heartland Dental, Institut National de I’Orgine et de la Qualtité, Luxury Brand Partners, Sequoia Capital, TPG Capital, TV Guide.