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Trademark

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We know trademarks. With a team of more than 25 lawyers, including Professor J. Thomas McCarthy, world-renowned author of the well-respected McCarthy on Trademarks and Unfair Competition, we are a one-stop practice for guarding valuable business assets.

Case Studies

MoFo Fall 2023 IP Insights Series

Leveraging Trademark Rights Across Borders: How to Shore Up Your Portfolio

Fraud at the TTAB: Leveraging the Lower Standard, Mitigating Risk of Cancellation

Navigating Cross-Border Trademark Disputes with the Lanham Act

LAIPLA Washington in the West

Fraud at the TTAB: Leveraging the New Lower Standard, Mitigating Risk of Cancellation

Events

It Takes Two to Taco: Taco John’s Abandons “Taco Tuesday” Trademark Registration

U.S. Supreme Court Eliminates Extraterritorial Applications of the Lanham Act

Who Let the Dogs In? How the Supreme Court Chewed Up Parody

Lessons from Lizzo’s Precedential Trademark Win

Hermès Successfully Defends its Trademark in the Metaverse

Partner Spotlight: Joyce Liou

Insights

Digital decisions: brands in the metaverse

Top Women IP Lawyers Take on Patent Law’s Gender Gap

Bita Rahebi Named to The Los Angeles Business Journal’s List of Leaders of Influence: Litigators & Trial Attorneys

SCOTUS Ruling on Foreign Reach of Lanham Act ‘Leaves More Questions’

High Court Makes it Harder to Stop Foreign Counterfeit Goods

SCOTUS Says Lanham Act Does Not Reach Extraterritorial Infringement

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Steven James is a Partner based in the London office of Morrison Foerster. He specialises in intellectual property disputes, and advises on the protection and exploitation of intellectual property, as well as a wide range of commercial matters.Steven practices in intellectual property, technology, and commercial law, with a focus on new technologies and innovation. His experience includes advising clients on both contentious and transactional intellectual property and commercial matters, predominantly in the tech, financial services, life sciences, retail and luxury goods, food & beverage, and media sectors. He advises on the full spectrum of IP rights, including trade marks, passing off, copyright, designs, patents and confidential information. Steven counsels clients on the development of IP and branding strategies and formulates strategic approaches for the licensing and enforcement of intellectual property rights. He also has experience of advising on commercial disputes, defamation and data protection matters.Steven has been recommended for Intellectual Property law and Technology, Media & Telecommunications Law multiple times over many years in The Legal 500 UK. He is described by clients as "always on hand to provide confident and practical advice. His deep and technical knowledge of IP is unparalleled". Steven has also been named an IP Star by Managing Intellectual Property and as a recommended individual by IAM Patent 1000. He has been awarded a Distinction in Intellectual Property Law from the University of Oxford. Steven has conducted matters before the U.K. Intellectual Property Office, the EU Intellectual Property Office, the Intellectual Property Enterprise Court, the High Court and Court of Appeal, and the Court of Justice of the European Union. Steven is a Solicitor-Advocate with rights of audience in all civil proceedings in the higher courts of England and Wales.<h4>Representative Experience</h4><ul><li>Representing Wirex Limited, one of the world’s leading cryptocurrency platforms, in its successful trade mark infringement claim and damages inquiry against Cryptocarbon Global Ltd & Others (Wirex Limited v. Cryptocarbon Global Ltd & Others ([2021] EWHC 617 (IPEC) and [2022] EWHC 1161).</li><li>Novaerus Patents Limited v Quest International (UK) Limited [2016] EWHC 95 (Ch): Represented medical technology provider Novaerus in a summary judgment claim in a complex contractual dispute about the sale of various patents and subsequent cross-licensing.</li><li>Advising World-Leading COVID Rapid Test Provider Excalibur Healthcare Services on a ground-breaking Licence and Development Agreement with Sensyne Health in respect of the use of Excalibur’s lateral flow diagnostic tests with Sensyne Health’s clinical AI software, ‘MagnifEye’.</li><li>Acting for an electrical wholesaler in relation to a passing off claim against a nationwide chain. </li><li>Acting for a software development company on a High Court Technology & Construction Court dispute with a global retail bank.</li><li>Acting for the acquirers of the iconic Crombie coat brand, and advising on its global IP portfolio.</li><li>Acting for an electrical wholesaler on a passing off action against a listed building merchants’ business.</li><li>Acting for an online fashion retail platform in respect of parallel trade mark infringement proceedings in the U.K. and United States.</li><li>Interflora Inc v Marks & Spencer plc (Case C-323/09): Acting for Interflora on a high profile trade mark infringement case relating to the use of keywords on Google’s AdWords program, which was referred to the Court of Justice of the European Union.</li><li>Orion Publishing Group Ltd v Novel Entertainment Ltd [2012] EWHC 1951 (Ch): Acting for a major commercial publisher in relation to a dispute over a royalty verification clause in a publishing agreement.</li></ul>

Steven James

Partner

Joyce Liou co-chairs the Trademark Group and is a partner in the firm’s Intellectual Property Group. She engages in a broad intellectual property practice, with an emphasis on both IP counseling and litigation for a diverse roster of clients. Joyce has litigated numerous district court disputes involving trademark, copyright, false advertising, right of publicity, and unfair competition claims, and has secured preliminary injunctions, summary judgment rulings, and trial verdicts for her clients. In addition to federal litigation, she routinely handles proceedings before the Trademark Trial and Appeal Board, and has extensive experience with trademark clearance, prosecution, licensing, and due diligence. Joyce manages IP portfolios and provides global strategies for industry giants and startups alike, from a broad spectrum of fields, including technology, consumer goods, entertainment, pharmaceuticals, food, and agriculture.Joyce’s successes have built her reputation as a recognized leader in trademark law. In 2022 and 2023, she was shortlisted for Trademark Lawyer of the Year by Euromoney Legal Media. Joyce serves on the Legislation and Regulation Committee for the International Trademark Association. Outside of her practice, Joyce is a passionate advocate for diversity and inclusion in the greater community. She serves on the Development Committee for the National Center for Lesbian Rights, and participates in clinics to help individuals seeking U.S. naturalization or asylum on the basis of their sexual orientation or gender identity.Joyce received her J.D. cum laude from the University of Michigan Law School in 2010. While attending law school, she externed for the Honorable William H. Alsup of the U.S. District Court for the Northern District of California. She received her B.A. in economics and political science with distinction from the University of California, Berkeley in 2007.

Joyce Liou

Jennifer Lee Taylor is the chair of the firm’s Trademark Group. She is engaged in a broad intellectual property practice, with an emphasis on litigation and counseling. Jennifer has litigated a variety of intellectual property cases, with a focus on trademark, design patent, and copyright infringement actions, as well as unfair competition and false advertising actions. She has trial and appellate experience, and extensive experience litigating opposition and cancellation proceedings before the Trademark Trial and Appeal Board.Jennifer’s cases have included litigation of trademarks and trade dress relating to mobile phones, medical devices, apparel, motorcycles, pharmaceuticals, food and beverages, computer software and hardware, and consumer products and a variety of service sectors, including hospitality and restaurant services, research services, online gaming services, payment services, medical services, retail and distributorship services, and software as a service in a variety of fields. She has also litigated patents directed to integrated circuits, processes used in the semiconductor industry, and medical devices, and design patents related to consumer electronics. Jennifer also regularly litigates cases involving competitor claims of false advertising and unfair competition, representing both clients who have asserted such claims under the Lanham Act and state law and defending clients from such claims.In addition to her litigation practice, Jennifer regularly counsels clients regarding trademark, copyright, and false advertising matters, including registering trademarks, service marks, trade dress, and copyrights; managing portfolios; enforcing trademarks and copyrights; and advising clients on licensing and competitor false advertising issues. She has also counseled clients regarding intellectual property and false advertising related to the Internet and social media, including claims under the Digital Millennium Copyright Act.Among companies that Jennifer has represented in connection with trademark matters are McCormick & Company, Pfizer, Fitbit, Alcon Vision, VMware, Target, Fendi, Ubiquiti Networks, RH, Yamaha, PricewaterhouseCoopers, the Keg Steakhouse + Bar, Indian Motorcycle, Calera Wine Company, Evite, IAC Search & Media, Credit Karma, Huneeus Vintners, LinkedIn, PC Mall, French Sole, World Wildlife Fund, and Starlight Foundation.Jennifer and her team’s 2019 success in obtaining a summary judgment for defendant Dropbox was recognized on the Daily Journal’s “Top 10 Defense Verdicts” in California list. Previously, her work for Ubiquiti Networks was recognized on the Daily Journal’s “Top 10 Plaintiff Verdicts by Impact” list. In this case, Jennifer led the Morrison & Foerster team that obtained a permanent injunction and final judgment of copyright and trademark infringement against Kozumi USA and Kozumi’s owner, William Hsu, which shut down an international counterfeiting scheme.Jennifer attended the George Washington University, where she received her B.A. with honors in international affairs, with a specialization in East Asia, in 1986. She received her J.D. from the University of Michigan Law School, where she was a notes editor for the Michigan Journal of International Law, in 1991. Following graduation, she attended the Inter-University Center in Yokohama, Japan, where she studied Japanese.

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