Experience
Counseled Brewery through Trademark Challenge
Client: Moonlight Brewing Company
Our client, Moonlight Brewing Company, filed an application with the U.S. Trademark Office for their brand MOONLIGHT for their beer. A restaurant named Moonlite BBQ filed a surprise opposition to try to stop Moonlight Brewing from registering their name. Though the restaurant had not sold a beer branded MOONLIGHT, it aggressively pushed forward with the opposition. The restaurant also claimed their name recognition entitled them to our client’s trademark. We worked closely with and guided Moonlight Brewing through a lengthy and hard fought proceeding before the Trademark Trial and Appeal Board, including a rare oral argument before the board. We ultimately received a complete and favorable ruling for Moonlight, including on a Request for Reconsideration filed by the restaurant to try to overturn the decision.
New Media Enforcement Actions
Ongoing representation of a production and marketing company that manages YouTube talent. We handle a variety of new media matters for the client, including negotiating and drafting talent and independent contractor agreements, including details surrounding production services, marketing, revenue splits, IP ownership and placement of content. We also provide fair use analysis and content reviews to proactively identify potential infringement issues, as well as monitoring federal copyright laws and any applicable state laws, including rights of publicity and privacy. Additionally, we handle a variety of enforcement actions for the client relating to copyright infringement under the Digital Millennium Copyright Act, including the filing of takedown notices, drafting cease and desist letters, and performing routine monitoring checks on social media sites and smart phone applications. Our work enables the client to avoid infringement concerns, grow its business and produce innovative content via the YouTube platform.
New Media Enforcement Actions
Ongoing representation of a financial services provider that created a prepaid debit card from Visa. We have handled a large number of enforcement actions relating to the infringement and unauthorized use of our client’s trademarks, copyrights, and other proprietary information, via the internet through search engine optimization tools, keywords, metadata, and other internet marketing tools. Our actions have included the filing of takedown notices with domain registrars, and sending of cease and desist letters to the infringers. Additionally, we have recently filed two lawsuits within the Southern District of Ohio to combat trademark infringement. We also manage their trademark portfolios and frequently strategize with their in-house counsel regarding the best ways to monitor and address the internet infringement and misuse. Our work enables the client to protect their valuable trademarks, copyrights and proprietary rights from potential infringement and avoid potential financial harm or damage to the goodwill associated with the marks.
Rebranding of Name
We conducted extensive reviews of potential names for the organization and actively worked with our client to narrow down its options and eventually select its new name. Once selected, we successfully prosecuted an application for the new logo with the US Trademark Office to registration.
Trademark Infringement Litigation
We represented our client’s organization in a lawsuit filed against his brother and his brother’s company for infringement of a trademark. After successfully defending through trial against a counterclaim that our client’s brother was a partner in our client’s business empire, the Court granted summary judgment in our client’s favor on the trademark claims in October 2011. A permanent injunction was entered against our client’s brother and his organization shortly thereafter.
Trademark Portfolio Management
Procurement, maintenance and management of worldwide trademark portfolios for various clients in numerous industries.
User Agreement for Smart Phone Application
We negotiated and drafted a user agreement for an individual who designed a smart phone application designed to work in conjunction with local clothes retailers. The application focused on digital shopping by enabling consumers to create avatars of themselves and try on clothes. We put together two separate agreements for the application. The first was a user agreement that contained provisions addressing privacy rights, intellectual property rights and issues, and general guidelines for appropriate usage of the application. The second was an agreement for the actual vendors whose clothing would be featured in the application, containing provisions that addressed intellectual property rights, usage guidelines and cost structuring. The agreements offered protection to the client and enabled her to move forward with her innovative idea.
Worldwide Rebranding
We conducted extensive, worldwide searches and reviews of potential names selected by our client for its rebranding. We then coordinated the filing and prosecution of applications for the new name 15 different countries, including the United States, where we successfully defended the marks against claims of a potential likelihood of confusion with another mark.