Editorial: Trademarks in California
01 August 2007
California’s lawyers have achieved national and international renown in trademark law, a field which is experiencing continuing growth as enterprises come to rely increasingly on their marks in overpopulated markets.
Boutique and independent firms thrive in this area, as exemplified by the firm with the most representatives on our list – IP firm Knobbe Martens Olson & Bear LLP. Eight of the firm’s lawyers make the grade. The firm has a strong statewide presence and an impressive national and international list of clients at different stages of growth. This strong trademark practice includes litigation and advisory work on trade dress, logos and designs, and internet domain names. The firm represents clothing, computer, medical device, sports and entertainment companies such as Bob Hope Enterprises, Paris Blues and Yamaha Motor. The first of seven of the firm’s Orange County practitioners to be listed, and the chair of the litigation committee, Darrell Olson, works on trademark cases in the US and internationally. He recently represented Vision Sports in a sportswear infringement suit. He also acted for Carl Karcher Enterprises, owners of Carl’s Jr restaurant chain, in an opposition against Stars Restaurant. Lynda Zadra-Symes “is a fantastic litigator”, who provides advice to companies on trademark matters. Contributors noted her expertise in domain names (she is a domain name dispute panellist arbitrator for the World Intellectual Property Organization). She represented Ultra Coachbuilders, defeating Ford Motor in a matter concerning Ford’s emblems.
Co-founder Louis Knobbe started his IP career as a technical staff member and later a patent engineer at American institutions such as Bell Telephone Laboratories before the creation of the firm in 1962. His practice is “very strong on the alternative dispute resolution side” and he is also well known on the IP law lecture circuit. Catherine Holland’s practice is entirely devoted to trademark protection, licensing, selection and enforcement within the hardware, software, publishing, automotive and food and beverage industries, among others. Susan Natland has built up excellent international contacts in addition to her domestic trademark practice. As well as being praised for her clearance and prosecution practice, she also was mentioned for domain name and counterfeit goods work. She is also “highly active” as a speaker and writer on the subject. William Bunker works within the mechanical, medical device and aerospace industries on the prosecution side. Respondents called him “very knowledgeable” and noted that he “contributes a lot as a teacher and author”, with special mention being made of his international trademarks expertise. Jeff Van Hoosear’s trademark practice concentrates on international matters in the clothing, sporting goods, e-commerce and entertainment areas. San Diego partner John Carson rounds off the firm’s representation. He focuses his activity on software development work, with some entertainment law crossover, and is known for his links with Europe and Asia. Carson represents a large amount of software clients, for whom he is involved in various trademark oppositions.
Fenwick & West LLP “is a well-known technology and life sciences powerhouse” and is perfectly placed to serve these sectors from offices in Silicon Valley and San Francisco. Respondents highlighted the firm’s clientele of “large and prestigious multinational clients”: representative matters include the firm’s filing of an amicus brief in MGM v Grokster and securing a $400 million settlement for Compuware against IBM. Its lawyers have “exceptional knowledge of global technology and the IP issues that arise”, with expertise in the internet. Litigation work is balanced with client training and enforcement measures to prevent disputes arising. The “informed, intelligent” Sally Abel leads the practice group and is “very well known and respected in the international trademark community”. “A clear leader in the field”, she was particularly recommended for her “exceptionally well-informed” expertise in trademark-related issues on the internet. Connie Ellerbach is a “highly valued counsellor” in the trademark and trade name sectors at every stage of development, managing national and international portfolios and engaging in trademark conflict resolution. Like Abel, her internet practice is “ranked among the best”. David Hayes’s practice spans litigation, counselling and audits, with “a great reputation for complex technology work”. Companies he represents include Apple and Sun Microsystems.
Morrison & Foerster LLP’s trademark contingent covers a wide spectrum of industries, from entertainment to investment management. Landmark cases such as the firm’s innovative representation of Lasting Impressions against KP Permanent Make-Up reflect the quality of the firm’s lawyers. The “outstanding expert” Thomas McCarthy, author of McCarthy on Trademarks and Unfair Competition, was part of the brief-writing team on the case. He is a senior professor of law at the University of San Francisco and founding director of the McCarthy Institute for Intellectual Property and Technology Law. Michael Jacobs completes the duo representing MoFo’s San Francisco office. He is “highly respected for trademark litigation” and arbitration, especially in matters concerning life sciences and high technology. He has worked on cases that have influenced the development of laws governing new technologies.
Seyfarth Shaw LLP is home to “the formidable” Joan Larkin and Christopher Larkin. Joan Kupersmith Larkin has over 25 years’ experience in all areas of trademark law, representing clients such as sports teams, restaurant chains and entertainment companies. She has often implemented highly effective worldwide enforcement plans for entertainment clients. In addition, her internet practice was often noted. The “very reputable” Christopher Larkin co-chairs the firm’s intellectual property group, with “a real flair for trademark litigation” in areas such as restaurants, aerospace and defence, cosmetics and apparel. He was the main author of an amicus curiae brief for the International Trademark Association to the Supreme Court in Qualitex Co v Jacobson Products Co.
Noted for its representation of clients from across the technology and entertainment spectrum, native Californian firm Irell & Manella LLP’s international scope has led to its representation of industry leaders such as Hewlett-Packard and Dastar, whom the firm represented when Fox Broadcasting claimed a Lanham Act violation for failing to include its name on public domain film of the memoirs of President Eisenhower. The two lead counsel on the case, David Nimmer and Jane Shay Wald, were commended in our survey. Wald is the “wonderful” chair of the firm’s trademark practice group, offering counselling, prosecution and litigation services. “Eminent practitioner” Nimmer drew plaudits for his work in the high-tech, publishing and entertainment sectors.
Christie Parker & Hale LLP has a 50-year history of IP specialisation, rooted in California, with offices in Pasadena and Newport Beach. All of the firm’s lawyers have a science or engineering degree, allowing the firm to offer particular technological expertise in every field. “Experienced and senior” Richard Wallen joins Michael McDermott, a “seasoned and highly reliable trademark attorney”.
Greenberg Traurig LLP has created a substantial presence in the US and Europe through expansion and strategic alliances. It is well placed to deal with the counterfeiting that has followed in the wake of globalisation. The “very experienced” Elise Tenen-Aoki in Orange County is “great for trademark registration”, according to one contributor, and others agreed that her portfolio work is “exemplary”. One appointment highlighted by her counterparts is her work for LA Gear, and she also maintains a strong practice in the entertainment, consumer product and pharmaceuticals industries. Susan Heller is based in Los Angeles and works with entertainment personalities to help them add value and visibility to their personal ‘brand’ as well as working with companies such as Starbucks, The Gap and Barclays to manage their marks. One significant client was the Saul Zaentz Film Company and New Line Cinema in protecting and enforcing the The Lord of the Rings trademark portfolio worldwide.
At Townsend and Townsend and Crew LLP, IP law is the sole focus. The firm’s diverse clientele includes Altera, Dolby Laboratories and Bechtel. Mark Steiner leads the trademark and copyright practice group there, offering expertise in all matters relating to trademark law. He has worked in industries ranging from computer hardware and software to sporting goods. He represents PayPal in issues such as domain name enforcement. Paul Vapnek is a “vastly experienced and widely published” practitioner who focuses on trademark litigation.
Howard Rice Nemerovski Canady Falk & Rabkin PC provides counsel and litigation expertise for clients hailing from industries such as education, life sciences, technology, sports and entertainment. The firm has represented clients such as The Saul Zaentz Company d/b/a Tolkein Enterprises, managing the portfolio relating to JRR Tolkein’s novels The Hobbit and The Lord of the Rings. It is also long-term counsel to Longs Drug Stores California and manages CMP’s international and domestic trademark portfolio. Carole Barrett chairs the firm’s trademark counselling and transactions group. Her “inventive and intelligent” approach is used to good effect counselling movie producers, software developers and financial services such as the United States Olympic Committee, Cisco Systems and Mary Green Enterprises. Karen Frank’s counselling and transactional work was favourably commented upon. Her high-profile clients have included Broadcast Music, Sega of America and Jordan Vineyard & Winery. She represented Bad Girl Swirl in a trademark infringement action.
Winston & Strawn LLP is another international firm with a great presence in California. Showing “real strength on both the counselling and litigation side”, its lawyers boast clients such as The Guardian Life Insurance Firm of America whom it represents in trademarks and all aspects of IP. The very highly nominated Andrew Bridges is “a great litigator and a wise counsellor”, with expertise in media and internet law. He represented MasterCard in a defence relating to allegedly infringing merchants.
Kirkland & Ellis LLP’s trademark practice is “highly established and well respected”, with a record for high-profile cases, defending famous brands such as Jay’s Foods, Hermès International, GM and Motorola in issues concerning trade dress, use of slogans and anti-counterfeiting actions. In the California community, interviewees highlighted the firm’s work for technology companies such as Apple. Co-chair of the intellectual property group Robert Krupka is at the centre of a “sparkling team”, offering “litigation experience that is second to none”. He represented General Foods in an infringement proceeding against Borden.
For San Francisco’s Harvey Siskind LLP, intellectual property constitutes a major focus. The firm provides across-the-board trademark advice in various areas ranging from financial and real estate services to microprocessors, clothing and beverages worldwide. Its work also involves protecting the intellectual property rights of individual clients. Name partner, the “outstanding” and “very experienced” Peter Harvey’s representative record spans industries including wine, motorcycles, paper products, music and video and West Coast high-tech companies. Past engagements include acting for Piaggio in an infringement case and defending an infringement action brought by Jacques Cousteau and the Cousteau Society against Cousteau’s son.
The “eminent” Lynn Perry is of counsel to Harvey Siskind and also maintains her own firm, Perry IP Group. “A great technical lawyer”, Perry’s practice ranges from analyses of trademark infringement and availability to licensing and litigation work. She has a multinational practice and clients from a variety of industries. Examples of her firm’s representative matters include Barbara’s Bakery, Allianz Life Insurance Co and Fireman’s Fund Inc Co.
Santa Monica’s Dreier Stein & Kahan LLP was founded on 1 January 2007 and is already making waves thanks to the quality and skill of its practitioners. “Seasoned lawyer” William Finkelstein is a former vice president and intellectual property counsel of PepsiCo and has also served as president of INTA. He was involved in the drafting of the Trademark Law Revision Act 1988 and co-edited The Intellectual Property Handbook in 2005.
Business, technology and entertainment firm Greenberg Glusker Fields Claman & Machtinger LLP is based in Los Angeles, where it represents entertainment companies and well-known individuals, and is well reputed for its work in the music industry involving recordings, samples and artist rights. Clients include Roland Corporation, Boeing, the trademark portfolio for Muhammad Ali and the creative team behind the film The Full Monty. Steven Weinberg “belongs on any list of trademark practitioners”, asserted one respondent. His global practice involves the representation of clients at different stages of development and in many industries, especially art and entertainment, internet, direct marketing, architecture and resorts, publishing and software and he was one of the pioneers in specialising in internet and e-commerce branding and business.
IP-boutique Owen Wickersham & Erickson PC is headquartered in San Francisco where it has flourished since 1933. The firm represents clients from all areas and was noted especially for its involvement in protecting the portfolios of clients in the wine industry. Many regard the “excellent” Melville Owen to be one of the “senior statesmen of trademark law”. He has worked on the CPR/INTA trademark and unfair competition panel of neutrals.
Howrey LLP’s intellectual property department benefits from a global network of offices and great depth and breadth of experience. This “powerhouse” has a strong litigation emphasis which means that its practitioners are often called upon to act in high stakes matters, as well as enforcement, advisory and strategic services. Like many of the practitioners listed, Palo Alto partner Katherine Basile has amassed valuable experience as an in-house counsel (Intel, Levi Strauss & Co) before entering private practice. Basil manages Intel’s trademark portfolio, as well as working with clients from fields such as computer and high-technology, pharmaceuticals, restaurant, clothing and consumer goods.
Neil Smith represents Sheppard Mullin Richter & Hampton LLP, a firm with of- fices all over California. It is well known for technological expertise and “is often called upon for cases involving the internet”. Smith is a “very active and prominent practitioner”, representing clients in fields ranging from multimedia, video games, consumer products and publishing. Respondents also picked up on his ‘grey’ market and counterfeiting knowledge.
Cobalt LLP specialises in advertising, promotions and IP, where, in addition to traditional trademark advice and litigation, they assist clients in areas of internet law such as music and video streaming, document protection and data collection when preparing for litigation. The “well-known” Katherine Spelman is “renowned for high-profile portfolio work” as well as prosecuting marks and advising start-up companies. Interviewees also commented upon her proficiency in matters regarding the beverage industry.
Large national firm Thelen Reid Brown Raysman & Steiner LLP is “well respected and established” in California and represented by “experienced all-rounder” Veronica Colby Devitt, who, in addition to her advisory and litigation work, is a frequent lecturer and has served as an expert on trademark law and practice before the Trademark Trial and Appeal Board.
Lawyers At Large LLC specialises in providing part-time support to small and mid-sized businesses. Amanda Nye was complemented on her “thorough counselling work” for national and international matters and her portfolio advice in M&A transactions.
Fish & Richardson PC counts brands such as Jack In The Box, Porsche, Steinway and Bose among its clients. The firm’s team was noted as “highly proficient” both in developing trademarks and in prosecuting infringement cases for the likes of Nokia, Marlboro and Playboy, as well as defending presidential candidate Ralph Nader in an infringement lawsuit brought by MasterCard International. “Fantastic lawyer” Lisa Martens’s practice focuses on prosecution and litigation for health care, biotech, internet and clothing companies. One noted specialty is her advice to entities conducting online promotions and sweepstakes.
Pillsbury Winthrop Shaw Pitman LLP’s West Coast presence is “substantial” and the firm’s breadth of practice means that trademark issues can be addressed alongside any other overlapping IP issues. Head of the firm’s international trademark team Richard Kirkpatrick has 27 years of trademark experience behind him when he takes on cases, which cover the full range of protection and practice, from litigation to due diligence.
Loeb & Loeb LLP’s trademark team is “highly recommended for complex work” for companies and individuals in the entertainment, music, publishing, financial and manufacturing areas. David Grace provides “excellent litigation and advisory” services, especially on internet and advertising matters.
San Francisco’s Thomas Smegal practises at his own firm, where he concentrates on providing expert witness testimony as well as serving as a mediator, special master and arbitrator in disputes.
The “very knowledgeable” Thomas Small represents Birch Stewart Kolasch & Birch LLP, an “extremely well-regarded IP law group”, which specialises in representing chemistry, medical device, health care, computer science and electrical technology bodies. Contributors complimented Small’s proficiency in licensing matters.
Morgan Lewis & Bockius LLP offers a large specialist trademarks group with a “solid representation” in US and international trademark matters, including branding issues, European Community Trademarks and internet matters such as domain names for clients such as Altera. Rochelle Alpert gained plaudits for her “fine” litigation and strategy work for clients across the board in the clothing, technology and retail areas.
Keats McFarland & Wilson LLP is based in Beverly Hills and offers specialist IP advice to creative and business clients, consumer product and luxury goods manufacturers and internet clients. The firm has represented Castle Rock Entertainment, Idealab, Major League Baseball Properties and Polo Ralph Lauren to name but a few. Co-founder Anthony Keats’s practice ranges from the representation of political candidates and actors to consumer product and entertainment companies. He is also a respected mediator.
IP boutique Blakely Sokoloff Taylor & Zafman counsels technology companies and entertainment figures. Lori Boatright is “a valued lecturer for businesses and the US Patent and Trademark office as well as a great practitioner”, providing counsel as well as acting in domain name disputes and aiding sports and entertainment personalities in protecting their publicity rights.
Heller Ehrman LLP “is able to mobilise a massive capability” when faced with a trademark issue and the group’s litigation experience as well as in portfolio work. Representing clients in the high-tech industries such as the fields of semiconductors, software, pharmaceuticals, cryptography and telecommunications is a particular strength; the firm has acted for Qualcomm, Yahoo!, Merck and Genentech. Beth Goldman’s practice operates domestically and internationally, ranging from clearance to litigation proceedings. She handles matters concerning the Aleve trademark.
Perry Viscounty is based at the Orange County office of Los Angeles-origin firm Latham & Watkins LLP. A “phenomenal transactional lawyer”, he is co-chair of the firm’s global intellectual property and technology practice group. He is also recommended for complex litigation and has acted for companies and individuals such as Paula Abdul, Allergan, Frank Gehry, Gap and Veritas.
Wilson Sonsini Goodrich & Rosati is a greatly respected litigation firm with an expanding intellectual property practice group. John Slafsky has represented Pony, Autodesk, Expedia, Sequoia Capital and the San Francisco Museum of Modern Art in matters such as the selection and enforcement of marks, advice regarding advertising and marketing, and handling domain name disputes. Additionally, he has taken matters to trial in federal and state courts.
Ropes & Gray LLP’s two California offices are located in Palo Alto and San Francisco. Its trademark practice has represented major brands such as Coca-Cola and Dow Jones. The firm acted for Motorola in litigation against the National Basketball Association over the transmission of basketball scores. Part of the Fish & Neave IP Group of the firm and resident in the Palo Alto office, Robert Goldman’s practice focuses on pharmaceuticals, information technology and medical devices. His catalogue of work includes the representation of AstraZeneca Pharmaceuticals, Purdue Pharma LP and Hewlett-Packard Company/Compaq Computer.
Cooley Godward Kronish LLP completes this rundown of leading trademark law firms. The firm operates within the fields of finance, litigation and technology. The firm’s trademark practice operates at the intersection between litigation and technology, and it tackles high-stakes disputes for every size of company. The firm has managed the Napster copyright MDL as well as building Wired magazine’s trademark portfolio. John Crittenden, the final practitioner to be listed in the trademarks chapter, was described as a “very good, clear thinking practitioner”. He has tried cases for a stellar client list including Petsmart, NC Soft and Ebay.