Venable - US Trademark Rankings 2023
Firm Overview:
From 13 offices in the US, 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 represents Mattel against Burberry, opposing the fashion brand’s registration of ‘BRBY’. The US Trademark Trial and Appeal Board (TTAB) matter has gained attention alongside the July 2023 release of the popular live-action Barbie movie.
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 Counseling 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 Matter:
- 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. Burberry filed its application in July 2022, intended for use on clothing and other apparel including bags and umbrellas.
- Venable’s client claimed the mark will cause dilution and consumers will be misled that the mark is associated with its Barbie brand as the two are similar in “appearance, sound and commercial impression”.
- The opposition was filed prior to the release of Warner Bros’ box office hit movie Barbie starring Margot Robbie and Ryan Gosling. The matter has been suspended for the parties to negotiate a settlement.
Clients:
American Bar Association, Coty, Mattel, Playboy, Sony Mobile, VBrick Systems, Walmart.
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