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BRANDS

We drive businesses forward by helping clients develop, manage, protect, and monetize their brands.

While we provide top-notch prosecution, enforcement, and litigation services, clients most value the way we strategically manage and grow their brands. Working shoulder to shoulder with our clients, we ensure that successful brand management and global enforcement programs are in place before marks are launched.

Our focus is on foreseeing issues and providing forward-thinking advice designed to prevent disputes. Of course, if the need for litigation arises, we get into the trenches with our clients and vigorously represent their interests regardless of the forum or jurisdiction.

We are one of the most active trademark firms in the United States with many thousands of marks under management, and we are vigilant about monitoring and protecting our clients’ brands. We adapt our services to the needs, budget, and strategy of any business.

Representative Trademark Protection and Enforcement Matters

  • Developed and executed a global trademark protection and enforcement strategy, in addition to “scrubbing” the Internet of websites and individuals selling knock-off goods, on behalf of a high-end jewelry company.
  • Developed a worldwide brand management and protection strategy on behalf of one of the most famous golf courses in the world and successfully concluded over 20 enforcement matters against unauthorized users of its marks – including actions in the United States, European Union, Australia, Japan, South Korea, and before the World Intellectual Property Office.
  • Represent a legendary U.S. golf resort in a variety of trademark matters and developed and executed a strategy to protect the design configuration of one of the resort’s famous golf holes.
  • Manage the registration and protection of global marks for a large national restaurant franchise.
  • Manage an ongoing enforcement campaign to protect the trademarks of a well-known communications and marketing company.
  • Handle UDRP proceedings on behalf of a large real estate investment and advisory firm at the World Intellectual Property Organization related to the transfer of domain names incorporating our client’s trademark.

Representative Trademark Litigation Matters

  • Shamballa Jewels ApS v. MallRat Junkie and Marc Mortman (S.D. Fla.) Resolved a trademark infringement action on behalf of Shamballa resulting in a stipulated permanent injunction.
  • Fashion Institute of Technology v. FIT Market Corp. (S.D.N.Y.) Obtained favorable settlement in trademark infringement matter on behalf of our client, Fashion Institute of Technology.
  • Ford Motor Company v. O’Brien Parts, Inc., d/b/a Shamrock Parts, and Richard P. O’Brien, Jr. (D. Mass.) Obtained an ex parte seizure order of counterfeit goods resulting in an entry of a stipulated permanent injunction on behalf of plaintiff.
  • EazyPower Corporation v. The M.K. Morse Company (N.D. Ill.) Acted as lead trial counsel for M.K. Morse Company in a trademark infringement action. Case settled.
  • Brown v. It’s Entertainment, Inc. (E.D.N.Y.) Represented Marc Brown, creator of the “Arthur” literary and television character, in a trademark infringement action. Obtained injunction against infringer.
  • Carefirst of Maryland, Inc. v. First Care, P.C. (E.D. Va.) Obtained summary judgment of non-infringement on behalf of First Care.  Successfully represented First Care on appeal affirming district court’s summary judgment decision.
  • Ciphertrust, Inc. v. Trusecure (Cybertrust) (E.D. Va.) Represented Cybertrust, one of the world’s largest IT security companies, in trademark action brought by CipherTrust. Obtained judgment of non-infringement following trial.
  • CSC Brands, LP and Campbell Soup Company v. National Harvest Food Group LLC (D. Del.) Represented defendants after plaintiffs filed a declaratory judgment action seeking a ruling of non-infringement with respect to their line of FULLY LOADED Campbell Soup products. In response, we filed a counterclaim for trademark infringement and unfair competition. Case settled favorably for our client.

Thought Leadership/Alerts

President Obama signs bill clarifying applicability of federal registration defense in dilution actions
Intellectual Property Alert | October 11, 2012

Fashion designer Christian Louboutin "wins" and "loses" after the Second Circuit partially reverses trademark ruling
Intellectual Property Alert | September 6, 2012

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Webinar Recording: Marketing Your Products and Services Without Losing Your IP
Originally recorded June 14, 2012 | June 19, 2012

Ninth Circuit clarifies jurisdiction rules in intellectual property cases brought against out-of-state companies operating on the Internet
Intellectual Property Alert | August 16, 2011

Seeing red: NY court refuses to enforce single color trademark for shoe design
Intellectual Property Alert | August 15, 2011

Winning in the Court of Public Opinion: Brand Protection in High Exposure Litigation
August 12, 2011

First Induced Pluripotent Stem Cell (iPSC) Patent Approved by the EPO
Intellectual Property Alert | August 2, 2011

Federal Circuit issues opinion in ACLU v. Myriad
Intellectual Property Alert | July 29, 2011

Patent reform primer
Changes to the grace period

Intellectual Property Alert | July 14, 2011

New .XXX domain name tentatively scheduled to launch September 7, 2011 — clients are advised they may be able to block certain domains to prevent future use
Intellectual Property Alert | June 21, 2011

U.S. PTO Restriction Practice: Personalized medicine claims with SNPs
Intellectual Property Alert | June 13, 2011

Employers (particularly universities): check your invention assignment agreements!
Intellectual Property Alert | June 7, 2011

Therasense decision highlights specific intent requirement for inequitable conduct determinations
Intellectual Property Alert | June 1, 2011

Follow-on Biologics legislation has immediate impact on patent holders
Intellectual Property Alert | May 25, 2011

Protecting personalized medicine innovation in China and India: Are diagnostic methods patentable?
Intellectual Property Alert | May 17, 2011

A patent in 12 months? But it will cost you!
Intellectual Property Alert | April 6, 2011

Federal Circuit hears oral argument on Myriad ”gene patents”
Intellectual Property Alert | April 4, 2011

The Federal Circuit holds that the heightened pleading standards of Rule 9(b) apply to false patent marking claims, finding general allegations of “sophistication” and “knowledge” to be insufficient to state a claim under Section 292
Intellectual Property Alert | March 15, 2011

Webinar Recording: Brand Protection 2.0: Guarding Against False or Misleading Advertising Claims
February 14, 2011

Avoiding Threats to Your Brand in the Age of New Media
January 28, 2011

Webinar Recording: Trademark Enforcement 2.0: Policing Your Marks in the Digital Age
November 24, 2010

Restrictions on the beneficial use of software
Intellectual Property Alert | November 16, 2010

Webinar Recording: Social Media Part II: Best Practices in Protecting Your Brand in the New Media
September 20, 2010

In Stauffer decision, Federal Circuit finds that qui tam relator has standing to pursue false marking claims under Patent Act
Intellectual Property Alert | August 31, 2010

According to the Patent Office, the machine-or-transformation test is alive and well
Intellectual Property Alert | July 2, 2010

Supreme Court affirms Federal Circuit’s judgment that risk hedging claims not patent eligible; rejects “machine-or-transformation” test as sole test of patent eligibility of process claims
Intellectual Property Alert | June 28, 2010

In Solo Cup decision, Federal Circuit affirms district court’s ruling on burden of proof for intent to deceive and false marking with expired patents, and confirms the definition of “offenses”
Intellectual Property Alert | June 11, 2010

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Press

Media Clips

  • Former Kodak Trademark Counsel Stimson Joins Nixon Peabody
    Rochester Business Journal | January 16, 2013

    This article highlights the arrival of Rochester Brands & Creations counsel David Stimson, former chief trademark counsel of the Eastman Kodak Company.

  • On the Move
    Daily Record | January 15, 2013

    This coverage notes that Rochester Brands & Creations attorney Kristen Mollnow Walsh has been elected to the firm’s partnership.

  • Sobering Times in IP Law
    Boston Business Journal | September 28, 2012

    Boston partner and leader of the firm’s Brands & Creations practice Jason Kravitz provides third-party commentary in this article discussing Massachusetts’ food and beverage industry’s efforts to manage the complexities of intellectual property law.

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  • Lake Tahoe May Prepare Winter Olympic Bid for 2026
    San Francisco Business Times | August 6, 2012

    This article focuses on Lake Tahoe’s potential bid for the 2026 Winter Olympic Games. San Francisco brands and creations partner Rob Weikert is mentioned as a board member of the Lake Tahoe Winter Games Exploratory Committee.

  • Guest Article: Good Brands Die Hard
    Mergers & Acquisitions | April 13, 2012

    San Francisco Brands & Creations partner Rob Weikert authored this column on how and why companies must be vigilant and deliberative when they decide to discontinue use of trademarks.

  • Spotlight: Expanding Nixon Peabody’s Chicago office
    Crain’s Chicago Business | March 26, 2012

    This column profiles Chicago office managing partner Janet Garetto. Ms. Garetto’s and the firm’s plans for the office are highlighted.

  • Area Lawyers Gear Up For Fight Against Counterfeiters
    Boston Business Journal | January 27, 2012

    This feature article highlights Boston partner and leader of the firm’s Brands & Creations practice Jason Kravitz for the work he is doing protecting luxury brands, such as Shamballa Jewels, against counterfeiters and knockoffs.

  • Garetto Plans to Lead Nixon Peabody’s Chicago Office
    Chicago Daily Law Bulletin | January 27, 2012

    This feature story profiles new Chicago office managing partner Janet Garetto and highlights her vision for the office and outlook on the industry.

  • Could Violators of Internet Agreements be Criminally Liable?
    Daily Record | December 7, 2011

    The feature story discusses the Department of Justice’s interpretation of the Computer Fraud and Abuse Act. Rochester brands & creations partner Peter Durant provides third-party commentary in the piece.

  • Main Street Companies Cautioned to Protect Against Triple-X Threat
    Boston Business Journal | October 14, 2011

    This article discusses the new dot-xxx top-level domain. Boston brands & creations partner Mark Robins provides third-party commentary.

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Events

Brands,Brand Development,Brand Management,Brand Protection,IP Litigation,Brand Enforcement,Gloabl Enforcement Programs,Trademark