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Trademark Law

Trademarks are symbols or words that identify the source of – that is, person or company behind – goods or services. For example, Nike’s famous trademark, the Swoosh, allows consumers to see a pair of shoes or an article of clothing and know immediately what company produced the product. Trade dress is related. Trade dress is the non-functional design on a product, its packaging, or sometimes even a place of business that helps consumers to identify that product, packaging or business. For example, the distinctive shape of the glass Coca-Cola bottle is a famous example of trade dress.

Trademark and trade dress are designed to avoid consumer confusion. When a person or company uses a particular mark or trade dress to identify a business or its products, consumers come to associate the mark or the trade dress with that person or company. This allows consumers to quickly and easily distinguish between sources of goods and services and identify the particular source from which they want to buy.

There are two aspects of One LLP’s trademark law practice. First, One LLP helps its clients acquire develop and register trademarks and trade dress. Trademark and trade dress rights are gained through use of the mark or dress in commerce, but there are significant advantages to getting a federal registration on a trademark and trade dress, including the ability to extend your trademark rights into new geographical areas before you have actually started to offer goods or services in that location. One LLP helps its clients acquire federal registrations by handling matters before the United States Patent and Trademark Office.

One LLP also litigates trademark disputes, both for the owners of trademarks and trade dress, and for those accused of infringing on others’ trademarks and trade dress. Trademark disputes can be very complicated, requiring proof of a number of fact-specific factors set forth in the Sleekcraft case. Sometimes, proving or disproving a trademark-infringement claim requires consumer surveys or other highly technical methods of proof. It is not generally a good idea to leave a complex trademark or trade secret case in the hands of a general business litigator without substantial experience in the trademark law field.

One LLP has handled a series of complex and important trademark and trade dress disputes. One LLP represented Chuck DeVore, a United States Senate candidate, in a dispute under the federal trademark statute, the Lanham Act, with world-famous composer and musician Don Henley. One LLP was able to prove that Henley did not have a trademark interest in his well-known compositions, The Boys of Summer and All She Wants To Do Is Dance, and the United States District Judge granted summary judgment in favor of One LLP’s client on those claims.

One LLP also tried to a jury a trade dress case involving two of the largest companies in the vintage dress industry. The plaintiff sued One LLP’s client, claiming the trade dress it uses on its website and catalogues was being infringed and asking for a seven-figure recovery. At trial, One LLP was able to expose the flaws in the plaintiff’s damages theory, and the court concluded after trial that the plaintiff would not be permitted any monetary recovery.

One LLP has handled a large number of other trademark cases as well, including representing a client in suing Macy’s and Madonna over its “Material Girl” mark on clothing, and representing well-known yogis, artists, and publicly traded companies in the protection of their trademarks.

Some notable examples include:

  • Representing a local clothing company in a lawsuit with Madonna, her companies, and Macy’s over the “Material Girl” trademark.
  • Representing a U.S. Senate candidate in a false endorsement and unfair competition claim by the Eagles’ Don Henley.
  • Representing Bettie Page Clothing in trade dress and trademark claims involving vintage fashion designs.
  • Representing a celebrity designer in a trademark interference action against a rival brand.
  • Representing one of the largest club membership retailers in the nation in bet-the-company litigation involving federal Lanham Act trade dress and misappropriation claims.
  • Representing famous celebrity Yogini Shiva Rea in trademark disputes regarding instructional yoga videos and yoga methods.
  • Representing famed illustrator Shag, protecting his works from exploitation not only under the copyright laws but also by way of creative application of the trademark laws.
  • Representing Mesa Garage Doors, the largest garage door company in Southern California, in protecting its valuable trademarks from unfair exploitation.
  • Litigating domain name disputes for a variety of individuals and corporations – such as, Meade Instruments, Western Digital, and Avila’s El Ranchito – so as to protect their brands from unfair exploitation.

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