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Trademarks influence our daily lives. We encounter them not only in the marketplace, but also in our homes, work, recreation, and businesses. The goodwill and loyalty that follow your brands represent value to your company, but only if you protect them.
Trademark litigation is a proven way to prevent competitors from trading on the goodwill associated with your brand or from inappropriately attempting to expand the scope of their trademarks. W|N has an active trademark litigation practice, both in the courts and before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office. We have also supervised trademark oppositions in foreign countries.
The key issue for liability in any trademark case is whether the defendant’s mark, as used in the market, gives rise to a likelihood of confusion as to whether the goods or services so marked originate with or are sponsored by the plaintiff. A successful trademark plaintiff can obtain injunctive relief, destruction of goods or packaging bearing the infringing mark, and damages, which may in appropriate cases include the defendant’s profits. This sort of relief, regardless of whether viewed from the plaintiff’s or defendant’s point of view, can significantly impact the business interests of our clients.
In a rough and tumble marketplace, competitors may make false statements about your products or their own products. If your products have a distinctive look that has gained recognition in the market, competitors may try to copy that look, so as to benefit from your success. When such statements and conduct are false or likely to deceive the consuming public, they may give rise to unfair competition claims under the Lanham Act and parallel state laws. Successful prosecution of unfair competition claims can yield injunctive relief and significant damages.
Prosecution and defense of trademark and unfair competition claims requires an in-depth understanding of the law and the markets in which you compete. Through years of experience in these types of litigation, W|N’s attorneys have developed the skills and expertise necessary to win trademark and unfair competition claims. Here is a list that represents some of our successful results in such cases.
Icon Health and Fitness, Inc. v. The Nautilus Group, Inc., Case No. 1-02-CV-109TC (D. Utah)
W|N asserted trademark, false advertising and false patent marking claims against Nautilus, the manufacturer of competing exercise equipment. W|N tried the case and obtained a verdict of $7.8 million on the trademark and false advertising claims and an award of $325,000 on the false marking claim. This award was the largest reported false patent marking award in the U.S. at the time.
The Nautilus Group, Inc. v. ICON Health & Fitness, Inc., Case No. C-02-2420-RSM (W.D. Wash)
This was an action asserted against our client by a manufacturer of competing exercise equipment for trademark infringement seeking $65 million in damages. W|N overcame a preliminary injunction granted to Nautilus and settled the case on terms favorable to its client.
Vita-Mix Corp. v. Basic Holding, Inc., Case No. 1:06-CV02622 (N.D. Ohio)
The plaintiff in this case asserted trademark claims against W|N’s client. W|N obtained summary judgment in favor of its client on the trademark claims. The summary judgment ruling was affirmed on appeal.
Jumpsport, Inc. v. Jumpking, Inc., Case No. 01-CV-4986 (N.D. Cal)
W|N obtained a permanent injunction prohibiting the plaintiff from continuing false advertising and defeated a motion for a permanent injunction against our client. These rulings were affirmed on appeal.
Happy Sumo Sushi, Inc. v. Yapona, Inc., Case No. 02:08-CV-348 (D. Utah)
W|N sought and obtained a preliminary injunction stopping defendant from using client’s trade dress. The case settled favorably to our client after entry of an injunction.
Framed Wall Art v. PME Holdings, Case No. 2:08-CV-781 (D. Utah)
W|N defeated a motion for preliminary injunction based on alleged trade dress violations. After W|N defeated the motion for preliminary injunction, the case settled favorably to our client.
Where a competitor attempts to register a trademark confusingly similar to an existing mark (irrespective of whether the existing mark is registered), a trademark opposition, filed with the U.S. Patent and Trademark Office (PTO), is often a cost effective way to nip trademark infringement in the bud. Oppositions challenge the competitor’s application before the Trademark Trial and Appeal Board.
Often, the filing of an opposition, by itself, is sufficient to persuade a competitor to drop its attempts to register a confusingly similar mark. Because oppositions frequently occur at a time when competitors have not made a significant investment in the mark, they are often willing to walk away from those marks. W|N has an active and successful opposition practice. Here are examples of successful oppositions handled by W|N’s litigation group.
Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940
W|N prevailed on summary judgment, and the opposition asserted by our client was sustained.
The Sinclair Oil Corporation v The Sinclair Group, Opposition No. 91178725
W|N’s opposition required the applicant to amend its application to exclude goods and services provided by W|N’s client.
Rastergraphics, Inc. v. 3W GMBH, Opposition No. 91156409
W|N’s opposition resulted in the withdrawal with prejudice of the applicant’s application, and the opposition on behalf of W|N’s client was sustained.
Edwards Lifesciences Corporation v. CHF Solutions, Inc., Opposition No. 91164482
W|N’s opposition forced the applicant to withdraw its application with prejudice, and the opposition was sustained.
Agrigenic Food Corporation v. Nature’s Way Products, Inc., Cancellation No. 92044046
W|N client was challenged by a party seeking cancellation of our cient’s trademark. W|N forced the plaintiff to withdraw its cancellation proceeding with prejudice.
ICON Health & Fitness, Inc. v. Lawrence D. Wollersheim, Opposition No. 91114721
W|N forced the applicant to cease use of the mark and transfer the mark to our client as part of a settlement.
ICON Health & Fitness, Inc. v. Allied Marketing Group, Inc., Opposition No. 91116954
W|N’s opposition to a trademark application was sustained.
Nature’s Way Products, Inc. v. Soteria Corp., Opposition No. 91163797
W|N’s opposition to a trademark application was sustained.
Oc© Display Graphics Systems, Inc. v. Callixo Sarl, French Opposition Nos. 073500294 and 073500169
W|N’s oppostion forced the trademark applicant to revise the description of goods as part of settlement in favor of our client.
Oc© Display Graphics Systems, Inc. v. Nicholas Campbell, et al., Opposition No. 91181096
W|N’s oppostion forced the trademark applicant to revise the description of goods as part of settlement in favor of our client.
Oc© Display Graphics Systems, Inc. v. Centralite Systems, Inc., Opposition No. 91183083
W|N’s oppostion forced the trademark applicant to revise the description of goods as part of settlement in favor of our client.