FEDERAL COURT LITIGATION
Appellate
Boston Prof. Hockey Ass'n. v. Dallas Cap and Emblem - 510 F.2d 1004 (CA5 1975) Established that sale of embroidered cloth patches depicting hockey team logos infringed the marks registered or used for hockey services, creating the judicial cornerstone upon which professional sports licensing is built.
Boston Prof. Hockey Ass'n. v. Dallas Cap and Emblem - 597 F.2d 71 (CA5 1979) Established that damages for trademark infringement may be calculated on the basis of the market value of lost licensing fees if the mark had been licensed to the infringer, and sustained an award of doubled damages.
Miller Brewing Co. v. G. Heileman Brewing - 561 F.2d 75 (CA7 1977) Unable to sustain preliminary injunction obtained restraining use of LIGHT for beer, because "light" was generic. A subsequent preliminary injunction restraining another brewer from using LITE was reversed on grounds of collateral estoppel in Miller Brewing Co. v. Falstaff Brewing Co., 655 F.2d 5 (CA 1 1981).
Imperial Tobacco v. Philip Morris - 899 F.2d 1575 (CAFC 1990) Sustained the Trademark Trial and Appeal Board's cancellation (on summary judgment) of the registration of a JPS [John Player Special] tobacco trademark for failure to use.
Trial and Summary Judgment
Philip Morris v. R. J. Reynolds - 188 USPQ 289 (SDNY 1975) Sole trial counsel in a 2-week trial on behalf of Philip Morris' MARLBORO Lights cigarettes, which ultimately were held not infringed by Reynolds' marketing of WINSTON Lights cigarettes.
Surf Line Hawaii v. Ahakuelo - 13 USPQ2d 1975 (DHi 1989) Successfully restrained further distribution of HAWAIIAN JAM T-shirts on behalf of the owner of JAMS for shorts and other garments, and obtained a finding "jams" was not generic.
Four Seasons Hotels v. Koury Corp. - 776 F.Supp. 240 (EDNC 1991) Succeeded in canceling a state registration of FOUR SEASONS for hotel services by the long-time user of HOLIDAY INN FOUR SEASONS, and placed limits upon the innkeeper's continued use of FOUR SEASONS.
MasterCard International, Inc. v. Nader 2000 Primary Committee, Inc. - 70 USPQ2d 1046 (S.D.N.Y. 2004), which determined that a political campaign advertisement by a presidential candidate was a parody, not an infringement, of MasterCard's famous "Priceless" advertising campaign.
Preliminary injunction
Miller Brewing Co. v. Carling O'Keefe - 452 F.Supp. 429 (WDNY 1978) Enjoined continued advertising on Buffalo television of HIGH LITE beer sold only in Canada (infringement of Miller's HIGH LIFE).
Tavaro v. Jolson - 591 F Supp 846 (SDNY 1984) Permanently enjoined use of another's sewing machine mark and certain false advertising, and preliminarily enjoined use of PRIMA VERA as a probable infringement of PRIMULA.
Philip Morris v. Star Tobacco - 879 F. Supp. 379 (SDNY 1995) Preliminarily enjoined distribution of GUNSMOKE cigarettes with a gunslinger design on its label as an encroachment upon Philip Morris' MARLBORO COUNTRY advertising trade dress.
Altira Group LLC . Philip Morris Companies - 207 F.Supp.2d 1193 (D Col. 2002) Co-Counsel in successful defense of Philip Morris Companies to change name to Altria Group.