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Trademark and Domain Name Litigation

The Intellectual Property Group enforces our clients’ valuable trademarks and domain names in court, World Intellectual Property Organization (“WIPO”) arbitrations, and U.S. Patent and Trademark Office (“PTO”) proceedings.  For example, the group recently obtained a preliminary injunction for Weight Watchers regarding the unauthorized use of its POINTS® service mark on frozen food products, and is now pursuing other similar actions.  The group also represents the Apollo Theater Foundation in a trademark suit regarding its popular television series, “It’s Showtime at the Apollo”® and is prosecuting multiple domain name “cybersquatters” on behalf of Planned Parenthood.

The group’s trademark work has been groundbreaking. The group helped shape the law of Internet jurisdiction by persuading a federal court to dismiss a trademark action filed by the “Blue Note” jazz club in Manhattan against the “Blue Note” music club in Missouri.  The group represented the Hard Rock Hotel in an early Internet licensing dispute with the Hard Rock Café concerning the HRH website.  It also represented Planned Parenthood in a landmark infringement action against the operator of an anti-abortion website. 

The group has won numerous WIPO arbitrations to recover infringing domain names for clients such as Chinatrust.com and Doctors Without Borders; has successfully resolved Trademark Trial and Appeals Board proceedings for clients including Accenture, Vestar Capital Partners and Virgin Mobile; and has helped clients overcome oppositions and office actions in the PTO to register hundreds of trademarks.

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