Contact: Jennifer Lee Taylor
Morrison & Foerster offers clients a world-class trademark litigation practice. The firm’s intellectual property litigators
have successfully represented clients such as Target Corporation, Metabolife International, Robert Mondavi Winery, Hebrew
University, Ralphs Grocery Company and Cheap Tickets.com in numerous high-stakes cases. 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.
J. Thomas McCarthy, perhaps the foremost authority on trademarks, unfair competition, and on the rights of publicity, is Of
Counsel to the firm. Professor McCarthy, author of the well-respected McCarthy on Trademarks and Unfair Competition, is available
to advise on litigation strategy. 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 and Anti-CyberSquatting Consumer Protection
actions.
Morrison & Foerster’s emphasis on litigation skills, and experience in trying cases, gives the firm’s trademark litigators
the ability to win trademark cases before a jury. While versed in the intricacies of trademark law, the firm’s trademark
litigators are at ease in the courtroom, a quality sometimes missing in specialized trademark practices. The firm also has
the expertise and depth to seek the emergency provisional relief so often necessary in trademark cases, as well as the ability
to ramp-up on short notice to successfully oppose requests for such relief. The firm’s clients have often found their cases
settled on favorable terms after obtaining, or defeating, a temporary restraining order or preliminary injunction.
Morrison & Foerster is also one of a small number of U.S. law firms with a significant international IP litigation practice.
Its global reach, and multiple offices in Asia, allow the firm to offer worldwide trademark enforcement and the ability to
stop infringement both in the United States and around the world. Currently, the firm is advising the Beijing Organizing
Committee for the XXIXOlympiad 2008 Summer Games (BOCOG) with respect to worldwide registration, licensing, use and protection
of the Olympic symbols and other Olympics-related intellectual property rights.
The firm also possesses significant litigation experience in trade secret, rights of publicity, copyright, and patent matters.
Likewise, it provides clients with counseling in all of these areas of law, as well as assistance in filing trademark registrations
and designing trademark enforcement mechanisms.
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. 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. The firm 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 represents the Las Vegas Convention and Visitors Authority ("LVCVA") in its effort to protect the famous WHAT HAPPENS
HERE STAYS HERE mark for the promotion of Las Vegas as a travel destination. In litigation pending before a federal court
in the District of Nevada, LVCVA seeks damages, injunctive relief, and cancellation of registrations of the confusingly similar
WHAT HAPPENS IN VEGAS STAYS IN VEGAS mark registered by Dorothy Tovar for use on T-shirts and other clothing. Upon consideration
of cross-motions for summary judgment, the Court ruled in LVCVA's favor, finding that LVCVA’s WHAT HAPPENS HERE STAYS HERE
mark is a strong mark and that as a matter of law Ms. Tovar’s use of WHAT HAPPENS IN VEGAS STAYS IN VEGAS marks is likely
to confuse consumers. The Court will hear evidence on damages and fees and, thereafter, enter judgment in LVCVA's favor, permanently
enjoining Ms. Tovar from using WHAT HAPPENS IN VEGAS STAYS IN VEGAS and ordering the cancellation of her federal registrations.
- The firm represented Juvenon, Inc., in a trademark infringement action brought against it by Dr. Matthias Rath and Dr. Rath
Health Programs USA, B.V. This case, brought in the United States District Court for the Northern District of California,
alleges that Juvenon Inc's use of the phrase “cellular health supplement” on its product and promotional materials to describe
its dietary supplement infringes Dr. Rath’s registered trademark rights in CELLULAR HEALTH for dietary supplements. In denying
plaintiffs’ motion for a preliminary injunction, Judge Armstrong found that “cellular health” was generic or highly descriptive
of plaintiffs’ goods, Juvenon had established “great doubt as to the validity” of plaintiffs’ federal registration, and that
plaintiffs’ had failed to meet their burden to show the mark had acquired secondary meaning. Judge Armstrong also found plaintiffs
had failed to establish a likelihood of success on the issue of likelihood of confusion. The parties settled shortly thereafter.
- The firm represented Gimbal Brothers, Inc. in a lawsuit filed against it by Jelly Belly Candy Company for trade dress infringement.
Located in South San Francisco, Gimbal Brothers is a family owned candy company that has been doing business since 1898. In
recent years, Gimbal Brothers began making and selling high quality gourmet jelly beans that compete with the jelly beans
made and sold by Jelly Belly. Jelly Belly alleged trade dress infringement based not only on the Gimbal Brothers product packaging,
but on the product design of the gourmet jelly beans themselves. Specifically, Jelly Belly alleged that the size, shape, coloring
and speckling of the gourmet jelly bean product are its trade dress and that Gimbal Brothers infringed that trade dress by
making and selling jelly beans of that same size, shape, coloring and speckling. Jelly Belly further alleged that Gimbal Brothers
infringed certain aspects of Jelly Belly’s product packaging, including among others, the menu of jelly beans on the back
of the package showing the flavor of each colored bean and the “recipes” that tell the consumer which beans to eat in combination
to experience a new taste sensation. Gimbal Brothers vigorously maintained, among other things, that all of these product
design and product packaging elements were functional and therefore could not be protected as trade dress. The parties settled
their dispute.
- The firm represents Cheap Tickets, Inc. (a brand of Travelport, Inc.), owner of the popular “cheaptickets.com” website, in
litigation brought by International Consulting Services, Ltd. ("ICS") in the United States District Court for the Eastern
District of New York. The firm obtained summary judgment in favor of Cheap Tickets on its counterclaims alleging trademark
infringement and cybersquatting by ICS for its operation of the "cheapticket.com" website and defeated a summary judgment
motion by ICS, in which ICS claimed that Cheap Tickets’s service marks are generic and thus not entitled to trademark protection.
In addition, the Court sanctioned ICS for its destruction of documents sought in discovery. After having prevailed against
ICS on its appeal of the Court's decision, Cheap Tickets will now be filing its application for an accounting of profits,
damages, attorneys' fees, costs and sanctions.
