Contact: Jennifer Lee Taylor
Morrison & Foerster has a thriving and diverse trademark practice that includes all aspects of brand protection. The firm’s
trademark attorneys have represented numerous clients in a wide range of trademark-related matters, including:
- Trademark clearance, registration and enforcement;
- Trademark oppositions and cancellations;
- Trademark due diligence;
- Negotiation of licenses and co-existence agreements;
- Trademark and domain name.
The firm’s trademark clients are drawn from a wide range of industries, including banking, sports, entertainment, consumer
products, investment management, computer software and hardware, telecommunications, Internet, healthcare, biotechnology,
pharmaceuticals, apparel, alcoholic and non-alcoholic beverages, publishing, and retail services.
The firm is pleased to have J. Thomas McCarthy, a renowned authority on trademarks and unfair competition and on the rights
of publicity, as Of Counsel. Professor McCarthy, author of the well-respected McCarthy on Trademarks and Unfair Competition , consults with clients on trademark clearance and enforcement issues and advises on litigation strategy.
Trademark Registration and Counseling. Morrison & Foerster helps clients develop and protect the value of their trademarks and service marks by preparing, filing,
prosecuting and maintaining trademark applications and registrations; conducting trademark searches; working with clients
to develop trademark protection strategies and to manage portfolios; negotiating trademark licenses and co-existence agreements;
and handling opposition and cancellation proceedings. The firm has represented numerous clients in opposition and cancellation
proceedings before the Trademark Trial and Appeal Board.
The firm works internationally with an established network of non-U.S. counsel, who handle trademark filings, oppositions,
cancellations, and litigation outside the U.S.
From time to time, the firm offers client seminars on new developments relating to trademarks. In addition, the firm works
actively with clients to develop trademark handbooks, usage guidelines and other educational programs to enhance trademark
protection. The firm also helps clients avoid potential infringement issues by reviewing labeling and marketing materials.
Transactional Activities. The firm’s trademark attorneys work closely with Morrison & Foerster’s corporate lawyers on trademark licenses, trademark
due diligence, and trademark issues in connection with the formation, operation, financing, and sale of businesses.
The firm often provides clients with strategic advice that enables them to evaluate better their intellectual property portfolios,
helping clients consolidate and streamline their holdings both to protect their trademarks and service marks and to reduce
the costs of maintaining their portfolios.
Trademark and Domain Name Litigation. Morrison & Foerster’s litigators represent clients in all types of trade practice claims under both federal and state laws
— trademark, service mark and trade dress infringement, dilution, unfair competition, counterfeiting, cybersquatting and unfair
advertising cases. In addition, the firm has represented many clients in disputes involving infringing Internet domain names
and cybersquatting through ICANN’s arbitration procedures.
Anti-Counterfeiting Advice. The firm advises technology and entertainment clients on counterfeiting and customs issues and has obtained ex parte writs of seizure for counterfeit parts and labels in the U.S. and other countries. The firm works closely with clients to
develop global enforcement and anti-counterfeiting programs and strategies to aid in the worldwide protection of trademarks
and service marks.
Representative Matters
Morrison & Foerster represented Lasting Impressions I Inc. in the only trademark case heard by the Supreme Court of the United
States during its 2004-2005 Term: KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc. Professor J. Thomas McCarthy, of counsel to Morrison & Foerster and author of the preeminent treatise in the field, McCarthy
on Trademarks and Unfair Competition, was part of the brief-writing team. The question presented in the case was whether fair
use is an absolute defense to trademark infringement, irrespective of whether or not consumer confusion may result. KP Permanent
argued that when a defendant has used a term in good faith and truthfully to describe its goods or services, the defendant
prevails under the fair use defense of Section 33(b)(4) of the Lanham Act, regardless of any customer confusion that the use
may cause. We argued, on behalf of Lasting Impressions, that the fair use defense should prohibit uses that are likely to
cause consumer confusion and, at a minimum, requires consideration of likelihood of confusion as a relevant factor in determining
whether a use is fair. On December 8, 2004, the Supreme Court held that a party raising the fair use defense does not bear
a burden of negating any likelihood of confusion, but explicitly left open for Lasting Impressions to argue on remand that
the extent of any likelihood of confusion is relevant to determining whether the use at issue was objectively fair.
The firm has represented clients in the wine industry, such as Robert Mondavi Winery and Calera Winery. One case revolved
around the Robert Mondavi Winery's registered trademarks TO-KALON and TO-KALON VINEYARDS and their association with approximately
359 acres of historical vineyard land in the Rutherford region of the Napa Valley. The 359-acre vineyard land was first planted
in 1868 by Hamilton W. Crabb, a pioneer of Napa Valley viticulture. Beginning in 1874, the vineyard and the wine produced
using the grapes from the vineyard were called To Kalon, which translates to "the good" or "the beautiful" in Greek. Wine
production stopped temporarily as a result of Prohibition and, starting in 1943, the land was divided and sold. Robert Mondavi
became the owner of 250 acres of the historical vineyard land in 1976. His winery began selling wine under labels containing
the TO-KALON term in 1987 and registered the marks for wine with the United States Patent & Trademark Office shortly thereafter.
In 1993, Beckstoffer Vineyards purchased 89 acres of the historical vineyard land and sold the grapes to third-party wine
makers such as Schrader Cellars. Starting with the 2000 vintage, Schrader Cellars sought to use the term "To Kalon" together
with its wine. The Robert Mondavi Winery brought suit against Schrader Cellars alleging, among other things, trademark infringement
and false advertising claims. Beckstoffer Vineyards brought a separate suit against the Robert Mondavi Winery alleging, among
other things, false advertising claims and seeking cancellation of the trademark registrations for the TO-KALON and TO-KALON
VINEYARD marks. The parties eventually settled their dispute.
Morrison & Forester represents Target Corporation in connection with a right of publicity and false endorsement lawsuit brought
by Ishmael Butler and other members of the musical group Digable Planets. The case arose out of Target's use of a recording
of the Digable Planets' song "Rebirth of Slick (Cool Like Dat)" in a 2003 television commercial. Butler and the other plaintiffs
did not dispute that Target had acquired a valid license to use the song and recording from the copyright owners, but maintained
that Target did not have permission to use their voices or their "identity" as embodied in their "signature song." The Firm
won a dismissal on Target's behalf of the plaintiffs' claims with respect to the use of the song and recording, based on the
preemption/preclusion of those claims by the Copyright Act. Still remaining in the case are claims relating to Target's use
of in-store signage related to the commercial, as well as a claim for breach of certain guild collective bargaining agreements.
