Intellectual Property Disputes

Print-to-PDF

We take a business-first approach to intellectual property disputes — pursuing strong litigation results while advancing our clients’ broader business goals.

Intellectual property disputes strike at the heart of a company’s value. A trademark conflict can jeopardize brand identity, while a patent infringement claim can threaten a business’s ability to deliver its products or services. We understand the high stakes involved and have successfully represented both plaintiffs and defendants in:

  • Trademark and copyright litigation
  • Trade secret and unfair competition actions
  • Patent disputes and other complex IP enforcement matters

Our team works to protect and enhance competitive positions in the marketplace through practical, strategic solutions tailored to each client’s needs.

Representing clients in high-stakes patent litigation on both the plaintiff and defense sides, we bring deep technical knowledge and courtroom experience to every matter. Our work spans a range of industries, including:

  • Computer and software
  • Internet and digital technology
  • Product design and manufacturing

Experienced in some of the nation’s most active patent venues, our attorneys have litigated cases in courts including:

  • Northern District of California
  • Eastern District of Texas
  • District of Delaware
  • Eastern District of Virginia
  • U.S. International Trade Commission (ITC)

We represent clients in trademark and service mark litigation nationwide, including cases involving infringement and dilution in federal courts across the country. Our team also handles matters related to trademarks in other forums, including:

  • Opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board (TTAB)
  • Appeals of TTAB decisions and related trademark registration matters
  • Domain name disputes, including Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings

We can also assist clients in enforcing their trademarks outside the United States through our network of trusted attorneys and trademark agents in other jurisdictions around the world.

We represent authors, artists and software developers in all aspects of copyright protection and enforcement. Our team routinely helps companies and individuals secure and defend their rights in original works of authorship, including multimedia content and web-based properties, in the following ways:

  • Filing and defending copyright infringement actions in federal courts across the country
  • Prosecuting and defending disputes under the Digital Millennium Copyright Act (DMCA) and other laws governing online copyright infringement
  • Providing practical and strategic solutions for clients to protect their creative assets in the digital marketplace
  • Responding to demand letters from copyright “trolls” in an effective and efficient manner

We have extensive experience in representing both plaintiff and defendant companies in trade secret misappropriation and unfair competition cases against former officers, business associates and competitors. In addition, we regularly counsel clients about their rights in the event of employee defections and about how best to protect their trade secrets and other proprietary information. In addition, we represent separating employees in establishing their own businesses without violating their duties to their prior employers.

We assist clients will all types of disputes relating to the marketing and advertising of their goods and services. We have considerable experience with the following:

  • Bringing and defending against claims in courts and arbitration that an advertising statement is false or misleading
  • Assisting clients in the often-complicated process of identifying and stopping the sale of counterfeit, black market and gray market goods
  • Working with clients on requests to e-commerce platforms like Amazon, eBay and Alibaba to take down infringing or improper listings on those platforms

Experience

  • Successfully represented the defendant in a multimillion-dollar patent infringement dispute related to employee activity monitoring software. The plaintiffs originally asserted infringement of three patents. Two of the patents were found not infringed on summary judgment. The infringement and validity of the third patent were successfully tried to a jury in Delaware district court, the jury returning a verdict of both non-infringement of the patent and invalidity of several of the asserted claims.
  • Helped a public, construction-product company in a challenging patent infringement dispute with a direct competitor that spanned six years and encompassed multiple federal court cases in the U.S. and Canada, as well as proceedings before the Patent Trial and Appeal Board.
  • Secured a favorable settlement for a patent owner in an infringement action in the Middle District of Florida.
  • Acted as local counsel in high stakes patent litigation involving consumer electronics and smartphones in the Northern District of California.

  • Represented a Napa Valley wine producer in a trademark and trade dress infringement case against a photographer and a Sonoma wine producer attempting to introduce wine products using the image and likeness of Marilyn Monroe in violation of the client’s trade dress rights in such images. We successfully obtained preliminary injunctive relief on behalf of the client in a case-of-first-impression decision by the federal district court holding that images of celebrities may constitute valid and protectable trademarks and trade dress.
  • Represented a construction company in a trade secrets misappropriation and patent infringement case concerning inventions related to the disposal of concrete washout waste. We obtained summary judgment in favor of the client, defeating the plaintiff’s claims.
  • Successfully defended manufacturers of high-end denim jeans against claims of trademark infringement asserted by a well-known denim jeans manufacturer.
  • Successfully defended a well-known, San Francisco-based bakery against claims of trademark and trade dress infringement and breach of contract by one of its investors concerning the bakery’s naming and ownership rights. We successfully negotiated a settlement that allowed the client’s business to continue undisturbed.
  • Represented a small, Bay Area-based business in an action in the Northern District of California between two competing manufacturers of signage products involving utility patents, design patents and trade dress. We achieved a preliminary injunction based on trade dress infringement that led to a favorable settlement of the entire matter.
  • Prosecuted and defended a variety of trademark opposition and cancellation proceedings in front of the USPTO’s Trademark Trial and Appeal Board for clients that included a winemaker, a local restaurant chain, a developer of a popular smartphone app, a medical device manufacturer, a large computer network company, and a small foreign manufacturer of gluten-free food products.

  • Represented a distributor in copyright case in United States District Court in the Southern District of New York.
  • Represented an international auction house in a case that forced a blogger and various web sites to remove infringing photographs owned by the auction house.
  • Regularly advise companies that own news and content aggregator apps with respect to copyright issues and claims asserted by content providers.
  • Litigated complicated copyright infringement claims involving product catalogs past summary judgment and through a bench trial in the Northern District of California.
  • Advised small and large companies on proper use of copyrighted images and how to respond to demands from copyright owners claiming infringement

  • Represented a large healthcare company in litigation in state court and private arbitration against a former executive. We used multiple restraining orders and injunctions to stop the executive from breaching his fiduciary duties and using company trade secrets and assets to establish a competing company.
  • Defended a public healthcare company in arbitrations and a state court action against competitors alleging various claims related to misappropriation of confidential information and unfair competition.

  • Negotiated a favorable settlement for a beverage company accused of falsely advertising the contents of its products.
  • Litigated a difficult false advertising claim against a well-funded competitor, surviving a motion to dismiss and motion for summary judgment, through a bench trial, in the Northern District of California.
  • Helped a small EU-based supplements company stop a competitor from falsely advertising its relationship with the client and the source of its goods.
  • Helped a public company to identify and stop infringing and fraudulent listings on multiple e-commerce platforms by multiple U.S.-based and foreign companies, working closely with trusted foreign associates in China and Europe.

FAQ

The cost of litigating an infringement varies significantly based on the nature of the dispute, the parties in question, and other important factors. If you are interested in considering bringing a claim, we can provide a detailed estimate.

We assist clients with DMCA takedowns, cease-and-desist letters and litigation, when necessary. Acting quickly and documenting infringement are key steps in preserving your rights.

Yes. In the United States, and some other countries, you can have enforceable trademark rights even without a trademark registration. Depending on the circumstances, you may be able to stop the other company, even if that company does have a registered trademark.

Yes. We regularly help clients with takedown requests on many different e-commerce platforms. If the listing in question is infringing on a trademark, copyright or patent, we can help the client get the listing taken down promptly.

Related Attorneys

Davenport

Lydia Davenport

Associate
Degen

W. Brookes S. Degen

Associate
Draper

Felicia A. Draper

Counsel
Flores

Diego B. Flores

Counsel
Howard

Erick C. Howard

Partner
Martin

James P. Martin

Partner
Mauch

Joseph V. Mauch

Partner
Morrow

Alexander Morrow

Associate