TRADEMARK AND ADVERTISING
Irwin IP’s lawyers recognize that your brand and your trademarks —and the goodwill they represent— are among your company’s most valuable assets. We are experienced and adept at handling the litigation of trademark and false advertising disputes arising under the Lanham Act and related state unfair competition laws. We understand that trademark and unfair competition matters frequently require urgent attention in the form of a preliminary injunction or a TRO proceeding. We are willing and able to work around the clock to pursue or defend expeditious matters relating to your company’s goodwill. Irwin IP is proud to have been retained for, and to have been successful in, numerous trademark and advertising matters. For example, Irwin IP was (or is):
- Lead counsel for a small, disruptive media streaming company against a large, multi-national company that settled after the court indicated its intention to grant Irwin IP’s summary judgment motion on the plaintiff’s false advertising and unfair competition claims;
- Lead counsel for a Fortune 500 company seeking a declaration that its client’s sale of aftermarket repair vehicle grilles allegedly embodying trademarks of large original equipment manufacturers did not constitute trademark infringement under the doctrines of functionality and the right to repair, and that such claims are barred by laches, acquiescence, and estoppel. The case settled in an early preliminary verdict with the magistrate judge recommending denying the OEM’s motion to dismiss on all grounds;
- Lead counsel for the nation’s largest provider of legal funding services in trademark infringement matter wherein Irwin IP’s motion for summary judgment that trademark rights were transferred to our client was granted and Irwin IP’s motion for summary judgment that defendants were liable on ten of the eleven counts of the complaint was later granted; and
- Lead counsel for a large Pizza Hut franchisee in a defensive trademark infringement matter asserted by Little Ceasars wherein a settlement and co-existence agreement was negotiated based on the client’s prior use of the asserted trademarks.
Representative matters for Irwin IP, or its lawyers, include:
Adobe v. Wowza Media Systems. Lead counsel for Wowza Media Systems in two multi-patent infringement, false advertising, and unfair competition defensive matters involving video streaming formats (RTMP, RTMPe, HTTP Dynamic Streaming) which were settled on confidential terms after Irwin IP obtained summary judgment of no patent infringement and the court announced its intention to grant Irwin IP’s summary judgment motion on the non-patent claims.
Annette Granat v. Readerlink Distribution Services, LLC. Lead counsel for translator asserting claims against a major book publisher based on misattribution, resulting in: 1) a discontinuation of further distribution of the misattributed book, 2) near total recovery of all previously distributed copies, and 3) a favorable monetary settlement.
Apple’s Bakery v. Big Apple Bagels. First-chair at preliminary injunction evidentiary hearing for Big Apple Bagels in defense of trademark infringement claim. Case resolved on favorable terms prior to ruling.
Better Government Association v. Better Government Association. Lead counsel negotiating consent judgment against accused trademark infringer.
East Egg Style Blog, LLC v. Kelsey Mastaller. Counsel for entrepreneur working with Notre Dame IP Clinic. Assisted Notre Dame IP Clinic on filing a trademark opposition against an infringer that resulted in cancellation of the infringer’s mark.
GCA Industries v. C&L Performance. Lead counsel for GCA in a trademark infringement suit involving concurrent use dispute in connection with the mark “True Flow” for automotive parts, which was resolved with client retaining exclusive rights to the mark.
The GEO Group, Inc. and GEO Transport, Inc. v. Netflix, Inc. Represented plaintiffs The GEO Group, Inc. and GEO Transport, Inc. against defendant Netflix, Inc. in a case alleging defamation and Lanham Act violations based on defendant’s unauthorized use of plaintiffs’ logos in its television series Messiah depicting plaintiffs in a false and defamatory light. Defendant filed a motion to dismiss, which plaintiffs opposed. At oral argument, Judge expressed skepticism as to plaintiffs’ motion, noting it was frankly “unclear” why the streaming giant had to use GEO’s mark. Before a ruling could issue on the motion to dismiss, the parties reached a confidential settlement agreement.
In re Exide Technologies et al. Counsel for debtor in its effort to reject as “executory” under the Bankruptcy Code a trademark license for a competitor to use a key trademark in connection with industrial products. (Represented by different counsel, the decision was later reversed by the court of appeals.)
Little Caesar Enterprises, Inc. et al. v. Rage Administrative and Marketing Services, Inc. Lead counsel for RAGE in trademark infringement matter, successfully negotiating a settlement and co-existence agreement based on the client (a large Pizza Hut franchisee)’s prior use of the asserted trademarks.
LKQ Corporation v. FCA US LLC. Lead counsel for supplier of aftermarket automotive parts in a trademark infringement, breach of contract, RICO, and antitrust matter. Successfully defended a motion to dismiss LKQ’s declaratory judgment trademark claims and LKQ’s offensive claims relating to antitrust and RICO counts, resulting in a report and recommendation by the Delaware Magistrate Judge assigned to the case that recommended denying FCA’s motion to dismiss in its entirety. Settlement resulted shortly thereafter.
LKQ Corporation v. LKQ OEM Parts, Inc. et. al. Lead counsel for supplier of aftermarket automotive parts in a trademark infringement matter. Successfully obtained default judgment and an award of attorneys’ fees against infringing automotive parts supplier.
Massarelli v. Pace. Lead counsel for Massarelli in successful arbitration action requiring the defendant to transfer infringing domain name.
MicroStrategy Inc. v. Motorola, Inc. Counsel for Motorola in expedited trademark infringement and unfair competition suit permitting client to continue use of the phrase “Intelligence Everywhere.”
The NOCO Company v. Everything Aftermarket; The NOCO Company v. RV Parts Pro. Lead counsel for two online, aftermarket parts suppliers in separate pending actions. Plaintiff alleged the defendants were selling unauthorized NOCO power supply products, violating its trademarks, copyrights, and authorized reseller agreements. Favorably settled on behalf of clients and their affiliate, Keystone Automotive.
Oasis Legal Finance Operating Company, LLC v. Gary Chodes et al. Lead counsel for nation’s largest provider of legal funding services in trademark infringement matter wherein client achieved favorable summary judgment that an agreement unambiguously transferred ownership of intellectual property to our client and a second grant of summary judgment that defendants were liable on ten of the eleven counts of the complaint.
Rand McNally. Lead counsel for Rand McNally in trademark and copyright dispute with former distributor.
Ricoh Co., Ltd. v. Katun Corp. Counsel for printer supply company in trademark infringement and unfair competition matter wherein client achieved favorable summary judgment on fair use defense.
Schwan’s v. Kraft Pizza Company. Counsel for Kraft in trademark infringement dispute wherein client achieved favorable summary judgment in dispute over use of generic term “Brick Oven” in connection with pizza.
Shuffle Master v. Gaming Entertainment, Inc. Lead counsel for Shuffle Master, obtaining preliminary injunction, summary judgment and permanent injunction on Shuffle Master’s trade dress claims, dismissal of several of Defendants’ counterclaims for failure to state a claim, and summary judgment on Defendants’ remaining claims, including antitrust, unfair competition and trade libel.
Sportcraft v. Wilson Sporting Goods. Lead counsel for Sportcraft in matter involving alleged violation of a trademark license agreement.
Top Tobacco v. North Atlantic Operating Co. Counsel for defendant in trademark infringement and dilution case wherein client achieved favorable summary judgment and filed successful motion to recover client’s attorney’s fees upon proving plaintiff’s conduct “exceptional.”
UL v. Swagway. Lead counsel for Swagway in a trademark infringement and unfair competition matter, culminating in an amicable resolution and resumption of business relations.
World Kitchen Inc. et. al. v. American Culinary Corporation. Counsel for kitchenware company in which client successfully obtained dismissal of counterclaims for patent infringement and breach of contract and reached favorable settlement as to Lanham Act claims.