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Representative Cases and Matters for Intellectual Property

Intellectual Property - Trademark Office - Successful Petition for Cancellation of Mark that Competed with Client's Mark Application

Successful Petition for Cancellation of Mark that Competed with Client's Mark Application

When applying for marks for their clients, intellectual property lawyers sometimes need to nullify the registration of a competing mark. Here, Milena S. Mishev filed a petition with the U.S. Patent and Trademark Office for the cancellation of a registered mark cited by the Trademark Office's examining attorney against Milena's client’s applied-for mark. Prior to filing the petition, a sophisticated investigation conducted by Milena revealed that the CEO of the registrant-company had terminated the entity, and that the mark had practically not been in use for over three years, which in itself is a prima facie evidence of abandonment. The U.S. Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is considered abandoned when "its use has been discontinued with intent not to resume such use." However, because registrations are presumed valid under the law, the party seeking to cancel a registration on the ground of abandonment bears the burden of proof to establish the case by a preponderance of the evidence. If petitioner makes a prima facie case of abandonment, the burden of production (i.e., going forward) then shifts to the registration owner to rebut the prima facie showing with evidence. As a result of Milena's work, the Trademark Office granted Milena's petition for cancellation, thereby requiring approval of Milena's client's application for the mark.

Intellectual Property – Cease and Desist Letter - Trademark Infringement - Clothing Company

Intellectual Property – Cease and Desist Letter - Famed French Luxury Goods House Discontinues Infringing Use of Its Famous Design by a U.S. Up Market Street Wear Clothing Company

Our Intellectual Property lawyers know that managing and protecting a client's brand involves policing it, especially in the modern information age. Enforcement action needs to be taken as soon as infringements are detectable. Therefore, when it became known that a U.S. "up market" street fashion clothing company was unlawfully using our client’s famous device mark on the company’s website and on the Twitter page of the owner of the infringing company, Milena S. Mishev sent a cease and desist letter, demanding immediate and permanent discontinuation of the infringing use. As a result, the owner of the infringing company provided written assurance that the infringing use has stopped and will not reoccur.

Intellectual Property - Trademark Office - Withdrawal of Refusal of Registration - Ornamental & Repetitive Mark

Thirty Years of Continuous & Exclusive Use of World Famous Device Mark; trademark Office Withdraws Refusal of Registration on Alleged Ground that Mark was Ornamental and Repetitive

Intellectual Property lawyers, who specialize in Trademark Law, must know and understand all of the intricacies of sections 1, 2 and 45 of the Trademark Act. Under those sections, an application for trademark can be refused by the U.S. Patent and Trademark Office, if the subject matter is purely decorative or ornamental in its nature and does not identify and distinguish the applicant’s goods. Here, the Trademark Office had initially refused registration of Milena S. Mishev’s client’s device mark, despite the fact that the mark had been used in France for over 150 years and in the United States for about 30 years. In Milena's response to the Trademark Office, she argued that the mark had become highly recognized among the purchasing public in the United States as a source identifier of the high-end luxury goods. Milena also provided massive evidence of the distinctiveness of her client’s device mark in the nature of newspaper and magazine articles, printed advertisements and other promotional materials. The Trademark Office then properly withdrew their refusal to register the mark.

Intellectual Property - Stopping Unfair Competition By Client’s Competitors - Federal Court Action For Injunctive & Monetary Relief

Successful Action on behalf of Major Nutritional Supplement Client against Competitors' False Claims against Client’s Products

In addition to their experience on patent work and other Intellectual Property issues, McCarthy Fingar's Intellectual Property lawyers represent clients on a variety of related issues. Here, Peter D. Aufrichtig represented a major Nutritional Supplement client in a series of litigations in Federal Courts around the country enjoining various Competitors who made claims for their products which improperly argued for their products’ superiority over the Client’s products. Through use of scientific studies and analysis of the alleged support of the Competitor’s claims, Peter was able to enjoin each of the unfounded claims of the Competitors and in some cases also recover significant monetary damages for the Client.


Corporate & General Business - Intellectual Property – Enforcing Client’s Trademark Rights in Federal Court Litigation

Representation of Trademark Holder in Successful Litigation of United States Registered Trademark against Infringer

McCarthy Fingar's intellectual property lawyers represent clients on trademark infringement issues. Here, Peter Aufrichtig represented the holder of a Federal Trademark Registration against a major competitor using its Trademark. Peter was able to secure, through an action in Federal District Court in Salt Lake City, Utah, early injunctive and monetary relief. The infringing activity was stopped and the client received monetary damages from the Infringer.

Corporate & General Business - Intellectual Property - Represention of a Licensee in Negotiation of a Trademark & Design License

Represention of a Licensee in the Successful Negotiation of a Trademark & Design License

Our corporate and intellectual property lawyers sometimes help their clients on licensing name brands as part of their business plan. Here, Milton R. Gleit represented a licensee in the successful negotiation of a seven year trademark and design license for several internationally recognized fashion brands. Historically, the client's exclusive territory has generated more than $25 million of gross wholesale sales annually.

Corporate & General Business - Intellectual Property - Representing a Licensee Negotiating an Extension and Expansion of Multi-Million Dollar Trademark License

Representing a Licensee Negotiating an Extension & Expansion of a Multi-Million Dollar Trademark License

As part of the work of our Corporate & Intellectual Property lawyers, we often help clients on licenses for trademarks. Here, Milton R. Gleit represented a licensee negotiating an extension and expansion of a multi-million dollar trademark license.