The trademarks and service marks of a business – the words, names, symbols, designs and product configurations by which its goods and services are recognized – can be some of its most valuable assets. Our attorneys have decades of experience helping a wide variety of clients manage trademark selection, registration, licensing, and enforcement issues in the U.S. and working with foreign counsel on international trademark matters. This experience has been invaluable in applying traditional trademark principles to issues presented by the explosion of e-commerce and new media activities. The firm’s expertise includes the protection of trade dress, trade secrets, and non-traditional intellectual properties and resolution of disputes involving a wide variety of false advertising, infringement of publicity rights and other unfair competition claims.
- Lutzker & Lutzker, in conjunction with another law firm, developed the strategy that successfully defended a client’s delivery of Internet “pop-up” ads as part of its innovative contextual marketing program. Since novel issues necessitate novel approaches, part of the litigation plan consisted of identifying and working with a Harvard Business School professor to develop expert testimony on how “pop-up” ads benefit consumers and enhance competition in the marketplace. The firm retained a nationally-recognized survey expert to identify flaws in the plaintiff’s survey evidence. When courts in New York and Virginia ruled in favor of our client, the judge’s opinion adopted much of the reasoning of the firm’s brief.
- Serving as co-counsel representing Sprint, the first-to-market user of the term PUSH-TO-TALK for walkie-talkie-style half duplex telecommunications services, in a genericness challenge brought by Verizon.
- Litigating and ultimately obtaining a settlement on behalf of a doctor whose name was used without his permission in advertising by a dating service franchise.
- Representing a U.S. importer of a top brand of Greek ouzo in litigation in the Second Circuit over trade dress infringement.
- Protecting Malibu brand rum against infringement by an ice cream manufacturer.
- Filing a declaratory judgment and injunctive action to ensure that a client’s new business could use a descriptive word claimed as a trademark by a third party defendant (prevailed against motion to quash service or dismiss).
- Protecting the University of Arkansas’ collegiate logo, “Razorbacks,” against trademark infringement.
- Obtaining trademark protection for the University of Wisconsin’s collegiate logo, “Bucky Badger.”
- Successfully effecting trade dress protection for a client’s bottles and containers.
- Representing the owners of a historic inn at the center of an important branch of the American Arts & Crafts movement, in their efforts to protect trademarks used in connection with the Inn and related merchandise.
- Defending a regional coffee service company against service mark infringement and dilution claims of a national coffee equipment manufacturer.
- Securing cancellation of a Boeing Company registration (FOREVER NEW FRONTIERS) that incorporated a telecommunications client’s famous FRONTIER trademark.
- Counseling the U.S. subsidiary of a Philippines-based cosmetics company on its U.S. and European trademark strategy.
- Developing a strategy for a domestic company to maintain its trademark rights in light of Madrid Protocol filings claiming competing rights.
- Chairing a trademark subcommittee of the Intellectual Property Owners Association (IPO) focusing on initial interest confusion.
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