Intellectual Property

Trademark Litigation

Mintz Levin attorneys regularly represent our clients in litigation critical to the protection of brand identity and market share, including cases involving trademarks, trade dress, advertising practices, and claims of unfair competition and/or false advertising. We have substantial experience in both enforcing and defending these claims, and a track record of success before United States District Courts, the Trademark Trials and Appeal Board, and United States Courts of Appeal.

We have a reputation for aggressively—and efficiently—pursuing our clients’ core business interests in discovery, at trial, and on appeal—experience that we often leverage to settle cases to our clients’ benefit. Our clients appreciate that it does not always take a trial to get their desired results.

Quick Facts

  • 50+ attorneys, Technology Specialists, and other professionals focused on IP litigation for the majority of their practice
  • Mintz Levin's trademark litigators have extensive trial and appellate experience
  • The firm's offices in Boston; New York; Washington, DC; Stamford; Los Angeles; San Diego; and San Francisco provide a broad geographic range and allow the firm to be efficient in litigating cases throughout the United States
  • We have litigated trademark cases in the Southern, Central, and Northern Districts of California, District of Massachusetts, District of Arizona, Northern District of Illinois, and Eastern and Southern Districts of New York, among others

Areas of Focus

  • Trademark Enforcement
  • Infringement Defense
  • Unfair Competition
  • False Advertising
  • Oppositions / Cancellations
  • Trade Dress
  • Federal District Courts
  • US Courts of Appeal
  • Trademark Trial and Appeal Board
  • Arbitration Panels
  • Serve as counsel to a global sportswear manufacturer, including managing their global trademark portfolio and distributor licensing disputes. Represented the company in an arbitration seeking termination and accelerated royalties (just under $1 million) from its exclusive French licensee, which was one of two such successful arbitrations handled recently for this client.
  • Representing one of the fastest growing sports & fitness programs in the country in a trademark dispute. A preliminary injunction was secured, requiring a nutritional supplement company to remove certain content and videos related to exercise instruction from its website, YouTube, and social media based on a finding that the nutritional supplement company's mark was likely to cause confusion with our clients' trademark.
  • S.D.Cal. – Represented former NFL athlete and his company against a major retailer for trademark infringement and claims of false endorsement. The case settled on terms favorable to our client after closure of fact and expert discovery and while summary judgment motions were pending.
  • E.D.N.Y. – Plaintiff clients are licensor and licensee of a famous celebrity's men’s and women’s fragrances, and sued various sellers of infringing fragrance. Clients achieved settlements and/or judgments against several defendants very early on in the case without costly discovery, and the offending products were removed from the marketplace.
  • S.D.Cal. – After filing trademark infringement claims against a beauty salon and other defendants, our client was targeted with counter claims of infringement and other marks. At trial, the opposing party chose not to put on its case after we presented our case to the jury, electing instead to settle the case on terms favorable to our client.
  • C.D.Cal. – Lead counsel for plaintiff, the largest television network in Southeast Asia, in an action involving both trademark and copyright claims against defendants repackaging for sale as DVDs or re-broadcast our client’s protected content and using our client’s design mark. Obtained a jury verdict and pecuniary reward in favor of Plaintiff.
  • S.D.N.Y. – Represented both a wholesaler and a national chain retailer as defendants accused of selling counterfeit hair care products. A favorable settlement was reached after only one deposition occurred, and client’s suppliers (who were brought into the suit via our third party complaint) contributed to the settlement.
  • S.D. Texas – Represented retailer and its supplier as defendants in a Lanham Act repackaging case that made new law. The case was won on summary judgment, and upheld through appeal.
  • C.D. Ca. and Fed. Cir. – Represented a major retailer in a patent and trademark infringement suit at trial and on appeal to the Federal Circuit. Won a summary judgment on trademark infringement and unfair competition claims and obtained affirmance on appeal.
  • E.D.N.Y. – Represented wholesaler which was one of approximately 75 defendants accused of selling counterfeit energy drinks. The case was settled favorably for our client prior to summary judgement. Some of the client’s suppliers contributed to the settlement as a result of cross-claims asserted against them. Motions for summary judgment remain outstanding as to others.
  • S.D.Cal. – Defended an electronics retailer against multiple claims, including trademark dilution, infringement, and misappropriation. We favorably settled the case before discovery through based upon our client's intention to wind down the product line that was of concern for the plaintiff.
  • D.N.J. – Represented a regional chain retailers in a case that was settled early, on terms favorable to our client, and in which we were successful in having the client’s suppliers of alleged counterfeit products contribute a significant portion of the settlement.
  • D. Mass. – Took over as lead counsel in the defense of supplier of optics and small arms accessories to the United States Military against claims of patent, trademark and trade dress infringement. Executing an aggressive strategy through the conclusion of fact discovery and summary judgment motion practice drove the case to settlement.

We handle a full range of trademark-related disputes, including on behalf of:

  • National chain stores and major retailers
  • Wholesalers and suppliers
  • Electronics manufacturers and distributors
  • Health and fitness companies
  • Beauty products, including cosmetics and fragrances
  • Sporting goods manufacturers