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Trademark Litigation

Fish works closely with all trademark clients to develop and implement appropriate enforcement strategies. If a dispute arises that cannot be resolved by other means (e.g., cease and desist letters, UDRP actions, or oppositions) clients turn to us to provide sophisticated litigation advice. We represent both plaintiffs and defendants in trademark and trade dress infringement cases and we often win early victories for our clients via temporary restraining orders or preliminary injunctions in federal court. In most cases we are able to favorably settle cases through negotiation, or through a more formal mediation process. Through our Munich office and our many dedicated relationships with foreign associates around the globe, we can also handle international trademark litigation and other related disputes.

Managing Intellectual Property awarded Fish “US Trademark Case of the Year” for our representation of client Bose Corporation in In re Bose, a case that was also named one of the Top IP decisions of 2009. In re Bose was a landmark case in which the Federal Circuit overturned the Trademark Trial and Appeal Board’s (TTAB) controversial Medinol decision and reversed a TTAB order cancelling the registration of the famous Bose WAVE trademark. Fish trademark attorneys and litigators set a new standard for proving fraud with this case. World Trademark Review has also recognized Fish’s trademark and trademark litigation practice in WTR 1000, its guide to the world’s leading trademark practitioners and firms.

Cricket Communications, Inc. v. ABC Wireless Choice
Fish obtained a preliminary injunction for client Cricket in this trademark and false advertising case in the Northern District of Illinois involving the CRICKET mark in connection with Defendant's cellular stores. We subsequently obtained a permanent injunction and an award of attorneys' fees.

BBU Inc., et al. v. Sara Lee Corp., et al.
Fish successfully represented BBU in a trademark infringement and unfair competition action relating to its SANDWICH THINS trademark. Obtained a preliminary injunction enjoining Sara Lee's sale of a competing bread product under the THINS mark. Decision affirmed on appeal by the Ninth Circuit Court of Appeals.

D.J. Miller Music Distributors, Inc. v. Strauser, et al.
Fish represents D.J. Miller Music Distributors, Inc. in a cybersquatting action in the Middle District of Florida against D.J. Miller Music's former employee, her husband, and their competing business. The defendants hijacked a number of the client's domain names and threatened to use them to divert consumers to their website for a directly competing business if D.J. Miller Music did not pay them nearly $100,000.00. Fish filed a complaint and obtained a temporary restraining order against the defendants one week to the day after first being briefed on the case. A preliminary injunction on consent pending the determination of the case has been entered by the Court.

Therapy Products d/b/a/ Erchonia Medical v. Lionel Bissoon et al.
Fish won a summary judgment motion on behalf of all four defendants in this trademark infringement case in the Southern District of New York. Judge Denise Cote found that plaintiff's alleged trademark LIPOLASER, was merely descriptive as a matter of law. The court awarded summary judgment to all defendants on all claims (including a false advertising claim), and thereby ordered the case closed. In a subsequent decision, the Court awarded defendants reimbursement of attorney’s fees and costs. The case was appealed by the plaintiff to the Second Circuit Court of Appeals. Plaintiff attempted to appeal the summary judgment award to defendants and the fee award to defendants, separately. Appeal of the fee award for lack of jurisdiction was successfully dismissed. Subsequently, the Second Circuit Court of Appeals affirmed the award of summary judgment to the defendants on the trademark claim.

U.S. Risk of Virginia LLC et al. v. Risk Transfer Holdings, Inc.
Fish obtained a jury trial win of $5.3 million for the plaintiff after a two week trial of a trademark case in federal court in the Northern District of Texas involving the LIGHTHOUSE mark for insurance products and services.

Stop & Shop Supermarket Co. et al. v. Big Lots Stores, Inc. et al.
Fish defeated plaintiffs’ motion for preliminary injunction, which sought to enjoin Big Lots’ holiday advertising campaign, on the basis that plaintiffs’ lacked trademark rights.

In re Bose
Fish successfully represented Bose in its appeal of the TTAB decision finding fraud and ordering the cancellation of the famous Bose WAVE® trademark registration. The Federal Circuit reversed, finding Bose did not commit fraud, and in doing so clarified the standard for proving fraud on the PTO in trademark cases. Managing Intellectual Property named this one of 2009’s Top Ten IP decisions in the world.

Larry Klayman v. Freedom’s Watch, Inc., et al
Fish obtained summary judgment for defendants on the basis that the plaintiff lacked service mark rights in the alleged Freedom Watch service mark.

Artskills v. Royal Consumer Products LLC
Fish defeated plaintiff's motion for a temporary restraining order in a case alleging trade dress rights in posterboard accessory products in the Eastern District of Pennsylvania. Thereafter the case settled.

Carroll Shelby and Ford v. Superformance
Fish successfully defended Superformance, which makes replicas of the COBRA “muscle car” designed by Shelby and sold by Ford. Case involved trade dress infringement and counterfeiting claims. Fish won summary judgment, and the First Circuit dismissed an appeal in January 2008.

Cartier, et al v. Allied Marketing Group
Fish represented Allied Marketing Group in the Southern District of New York in a trade dress infringement action by Cartier claiming that a watch sold by mail order too closely resembled its famous (and enormously more expensive) Pasha de Cartier. Defeated a motion for preliminary injunction in a case that later settled.

Cricket Communications, Inc. v. HipCricket, Inc.
Fish represented Cricket Communications in a trademark infringement, dilution, unfair competition, and cybersquatting action relating to its CRICKET trademark. We obtained a favorable settlement through mediation shortly before trial.

Implant Innovations, Inc. (Biomet 3i) v. Bicon, LLC, et al.
Fish successfully defended a motion for preliminary injunction on behalf of defendants regarding the trademark NANOTITE for dental implants. A concurrent trademark opposition in the USPTO against the plaintiff 3i, a wholly owned subsidiary of the medical device company Biomet, was resolved in Bicon's favor on the basis of the District Court's findings.

Supernova v. CBS, Inc., et al
Fish successfully represented the original Supernova punk rock band in the Southern District of California against the television “reality” show Rock Star Supernova, which was threatening to crown a rock band to be formed on the show “Supernova.” Fish attorneys obtained a preliminary injunction forbidding the new band to call itself Supernova, which was granted only hours before the East Coast showing of the final episode in the Rock Star Supernova series.

3M Co. v. Rollit LLC, et al.
Fish obtained a preliminary injunction for 3M against Rollit, preliminarily enjoining the defendant from using the trademark ROLLIT and 3M’s Canary Yellow color trademark in connection with sticky notes.

Callaway Golf Co. v. Akribis Golf Company
Fish represented Callaway Golf in a trademark declaratory judgment case against Akribis involving the name of a golf putter. Akribis’ claims against Callaway were voluntarily dismissed with prejudice.

MasterCard International Inc. v. Nader 2000
Fish defeated an effort by MasterCard International to prevent Ralph Nader’s presidential campaign from continuing to run a television advertisement that parodied MasterCard’s “Priceless” ad campaign. MasterCard sued, alleging infringement and dilution of its trademarks under the Lanham Act and infringement under the Copyright Act. MasterCard had been using its $250 million “Priceless” ad campaign since 1997. Judge George B. Daniels of the US District Court for the Southern District of New York denied MasterCard’s motion for a Temporary Restraining Order, finding that there was insufficient evidence that MasterCard would suffer irreparable injury if Nader used the parody as part of his presidential campaign.

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