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Latham’s Intellectual Property Litigation team “maintains a fine reputation for its chemical, life sciences, technology and software IP expertise,” and is also “noted for its trademark expertise."
Chambers USA 2014

Trademark Litigation

Since trademarks are frequently one of the most important intellectual property assets a company owns, clients rely on Latham & Watkins to clear and register their brands and protect them from being infringed, diluted or abandoned.

Latham’s trademark lawyers have vast experience helping companies protect valuable goodwill built up in their brands, and handling a wide variety of trademark disputes, including those related to:

  • Trademark infringement/unfair competition
  • False advertising
  • Online infringement
  • Cybersquatting and domain name issues
  • Merchandising and licensing disputes
  • Trade dress infringement
  • Dilution
  • Counterfeiting
  • Trademark Trial and Appeal Board Practice
  • Border-seizure procedures

The firm’s trademark lawyers litigate, arbitrate and mediate trademark infringement, unfair competition, false advertising, cybersquatting, and breach of contract claims involving trademarks and/or trade dress issues.

Latham’s team has extensive experience prosecuting trademark applications and maintaining and policing trademark portfolios throughout the world. The team also routinely prepares a wide range of trademark-related contracts, including licenses, co-existence agreements and settlement agreements.

False and Misleading Advertising

The firm represents clients in a wide variety of matters before the courts, regulatory agencies and review boards, such as the National Advertising Division, involving claims of false advertising, deceptive packaging and similar issues. Latham lawyers have handled false advertising claims under the Lanham Act, as well as state law false advertising statutes, such as California Business & Professions Code § 17500. Latham's team provides review and recommendation services to its clients regarding proposed advertising claims, to help minimize the risk of a false advertising claim, as well as assistance with claim substantiation and documentation.

Worldwide Prosecution and Portfolio Management

With the firm’s global presence, Latham lawyers are able to step in and immediately manage a client's worldwide trademark portfolio through the entire prosecution process, including clearances, filing oppositions, maintenance, monitoring, and enforcement. Latham’s US and European offices handle trademark prosecution and litigation work for a large number of national and international clients in the retail, manufacturing, financial services and technology sectors. 

Unfair Business Practices

Latham lawyers have handled actions involving various US federal and state false advertising, unfair competition, unfair business practices, and consumer protection claims including claims under the Lanham Act, California's Consumer Legal Remedies Act, New York’s unfair competition laws, and California's controversial Unfair Competition Act, Business & Professions Code § 17200. These have included class actions, attorney general and district attorney prosecutions, and representative claims brought by private attorneys general.

The firm has been called upon to confront California’s Unfair Competition Act in connection with a variety of substantive legal areas, including environmental, healthcare, employment and labor, securities, products liability and food labeling.

Palladium Books, Incorporated v. Trion Worlds, Inc. et al
Latham represented Trion Worlds in a trademark infringement case in Michigan, California and the Trademark Trial and Appeal Board regarding a Massively Multiplayer Online video game called RIFTS: PLANES OF TELARA that is played simultaneously by thousands of people around the world. Palladium filed an ex parte application for TRO and preliminary injunction which were denied, and the MI case was dismissed for lack of personal jurisdiction. The California case recently settled.    

Entrepreneur Media, Inc. v. Scott R. Smith
Latham originally represented Entrepreneur Media in a trademark infringement case against Scott Smith. After Latham obtained a favorable summary judgment ruling for the client, Smith concealed assets to avoid the judgment. Smith then filed for bankruptcy in the US District Court for the Eastern District of California. At trial, Latham requested that the bankruptcy court deny Smith a discharge on the grounds that, among other matters, Smith had fraudulently concealed assets and made material misrepresentations in his bankruptcy petition. The bankruptcy court affirmed the judgment against Smith and declared it nondischargable.

S.C. Johnson & Son, Inc. v. Buzz Off Insect Shield, LLC et al.
Latham won a major jury trial victory for Buzz Off Insect Shield, LLC (BOIS) in a “bet-the-company” case tried in 2007 in the US District Court for the Middle District of North Carolina. In February 2005, S.C. Johnson & Son, Inc. (SCJ) sued BOIS for a variety of false advertising claims, challenging numerous statements made by BOIS, as well as the basic scientific efficacy of the company’s products. SCJ also sued BOIS for infringing multiple SCJ trademarks, as well as a trademark purchased by SCJ two weeks before the lawsuit was filed. Latham persuaded the court to grant summary judgment in favor of BOIS on the “OFF!” trademark infringement claim. After a five-week jury trial, Latham won a complete defense verdict on each of SCJ’s false advertising claims, in addition to a defense verdict on SCJ’s claims for unfair and deceptive trade practices. The jury returned a verdict against BOIS for infringing the newly acquired trademark, but awarded only US$280,000 (the price that SCJ paid to acquire the mark), despite SCJ’s demand for nearly US$6 million and repeated attempts to invalidate the scientific legitimacy of the Buzz Off product. Additionally, the jury found no proximate cause of injury to SCJ by BOIS.

Element Skateboards v. Old Navy
Latham represented Old Navy, a large US retail clothing chain, in a case brought by clothing and apparel manufacturer Element Skateboards Inc. (Element), for copyright and trademark infringement related to Element’s logo design and its alleged connection to Old Navy’s US$60 million line of clothing products. An out-of-court, confidential settlement was reached to the mutual satisfaction of both parties.

Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC et al.
Latham represented the Ansel Adams Publishing Rights Trust, which handles the publishing rights to Ansel Adams' works, in a trademark-related dispute in the US District Court for the Northern District of California. The Trust sued an individual and a media company that were selling products derived from what they alleged were long-lost works of the famous photographer Ansel Adams. The parties reached a confidential settlement. The case involved several cutting-edge trademark issues and has been widely publicized in the New York Times, Wall Street Journal, Los Angeles Times, San Francisco Chronicle, and in various other media outlets, including on national TV.

 
 
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