Practice

Trademark, Copyright & Unfair Competition Litigation

Safeguarding your most valuable assets

In many cases, a company’s brand, business creations, and confidential information can be its most valuable and important assets. At Foley Hoag, our Trademark, Copyright & Unfair Competition attorneys understand the importance of these assets, which is why clients turn to us to take swift action when those assets are being challenged or must be asserted against others. 

Our lawyers have a depth of subject matter and trial experience to prosecute and defend against all types of trademark, copyright, trade secret, Internet, and domain name enforcement and litigation issues for our clients. We successfully represent clients on both sides of the issues, from smaller companies accused of infringement to large corporations policing and protecting their famous brands.

Whether your trademarks are registered or are safeguarded under common law, our lawyers provide creative strategies for policing, enforcing, and defending them. We have conducted investigations into improper use of trademarks, assisted clients when trouble occurs at the border by working with U.S. Customs to prevent the importation of counterfeit and gray market goods, and represented clients in federal district courts across the nation in cases involving the Lanham Act and the Anti-Cybersquatting Consumer Protection Act.

Our lawyers have significant experience litigating trademark registration issues in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, where we employ creative and innovative strategies to secure our clients’ trademark registration rights. When the issue is domain names, our clients can rely on our unparalleled understanding of the various trademark rights protection procedures provided by ICANN, the Internet Corporation for Assigned Names and Numbers, including the Uniform Domain Name Dispute Resolution Policy (UDRP).

Foley Hoag handles the full scope of copyright matters for our clients, including enforcing copyrights against infringers on the Internet through the Digital Millennium Copyright Act (DMCA), and engaging in large-scale litigation to protect and defend our clients’ valuable copyrights.

Our attorneys also have extensive experience handling claims of misappropriation of trade secrets.  We literally wrote the book on “Trade Secrets: A Guidebook for Technical and Business Professionals."

Experience

TRADEMARK ENFORCEMENT AND DISPUTES

  • Represented a motorcycle manufacturer in its efforts to register a trademark that was threatened by a third party’s claimed trademark rights. We developed a legal strategy that included filing proceedings with the Trademark Trial and Appeal Board to challenge the third party’s alleged rights. As a result of our successful efforts, our client was able to register and use its desired mark.
  • Assisted a well-known manufacturer of CAD design software in a multinational trademark dispute with a competing software provider with respect to use of certain terms commonly used in the industry. We handled a large number of trademark opposition and cancellation proceedings filed by our client worldwide.
  • Represented a major shoe manufacturer in number of trademark infringement matters, including actions against competing shoe companies for infringement of our client’s famous marks. We resolved these disputes on terms favorable to our client.

 

TRADE DRESS ENFORCEMENT AND DISPUTES

  • Litigated trade dress issues in connection with designs on footwear, in one case mounting a challenge to the plaintiff’s incontestable trade dress registration based on functionality.
  • Enforced our client’s trade dress in the appearance of a design extending over the surface of our client’s product.
  • Assisted clients in the food and consumer products industries enforce their trade dress rights in product packaging through cease-and-desist letters and, where necessary, litigation.

 

COPYRIGHT ENFORCEMENT AND DISPUTES

  • Represented a major entertainment conglomerate in defense of copyright litigation by the author of certain works of fiction. The plaintiff claimed that a popular television show copied elements of her works. We successfully moved to dismiss the plaintiff’s claims. 
  • Represented a major motion picture studio and its affiliated companies in defense of copyright infringement litigation brought by the owners of certain rights in a song, arising from use of an excerpt from the song in the motion picture. We were able to resolve the dispute quickly and favorably to our client. 
  • Helped a large number of clients faced with the publication of infringing websites and content through the successful issuance of “take-down” notices under the Digital Millennium Copyright Act. In one instance, our client’s entire website had been copied and re-published on the Internet with just the names of our client and its personnel changed. We quickly issued DMCA take-down notices and succeeded in having the offending content removed in fewer than 24 hours.

 

INTERNET ENFORCEMENT ISSUES

  • Assisted a leading medical device manufacturer in stopping leaks of secret clinical trial information on Internet message boards. Through use of various litigation strategies, we determined the identity of the persons leaking the information. This allowed us to resolve the matter and prevent further postings by the offenders.
  • Represented a famous, multinational manufacturer to obtain domain names that had been used to infringe the client’s trademark rights. Chinese manufacturers had registered domain names that were variations of our client’s famous mark. Using UDRP (Uniform Domain Name Dispute Resolution Policy) proceedings, we obtained the transfer to our client of the domain names.
  • Advised the operator of an Internet business whose business model relied on the aggregation of publicly available data on compliance with the laws that may affect the automated gathering of data, such as the laws relating to copyright, trespass to chattels, and the Computer Fraud and Abuse Act. Our advice helped the client develop its business while avoiding the violation of any third party rights.

 

CUSTOMS ENFORCEMENT ISSUES

  • Represented a famous European automobile company in matters involving counterfeit luxury goods and have served as the company's designated contact with U.S. Customs for their luxury goods trademark registrations recorded with U.S. Customs. Our collaboration with Customs officials and use of various strategies has resulted in successful identification, seizure and destruction of counterfeit goods.
  • Advised a well-known brand owner on global trademark protection and enforcement matters, including, among other things, coordinating investigations and enforcement actions in the U.S. and overseas. For example, investigations we coordinated in China and Taiwan identified entities engaged in large-scale trademark infringement and counterfeiting activities and allowed the brand owner to target those sources of supply to the U.S.
  • Filed and successfully prosecuted a Lever Rule application with U.S. Customs, which allowed our client to block the importation of gray market goods that were materially different from their authorized U.S. counterparts.

 

TRADE SECRET ENFORCEMENT ISSUES

  • Helped a leading biotechnology company prevent a key executive from defecting to a competitor in a situation that entailed a high risk of leakage of trade secrets. The executive had access to confidential information that related to business strategies for dealing with a particular competitor; shortly afterwards, the executive resigned and began working for that competitor. We showed that the executive had been involved in improper downloading of our client’s trade secret material. We formulated a legal strategy that caused the competitor company to terminate our client’s former executive immediately.
  • Represented an investment management company that faced a theft of trade secrets by former employees trying to start a rival firm. We recovered computer technology from the departed employees and conducted forensic analysis on it. This allowed us to obtain significant evidence of theft of trade secrets, breach of employee agreements, and other wrongs, and to reach a quick and highly advantageous resolution of the dispute on behalf of our client.
  • Represented a manufacturer of rubber pressure seals in an action for misappropriation of trade secrets and breach of contract against a departed employee who was using the client’s confidential information to establish competing business operations. Due to evidence suggesting that the employee had destroyed evidence relating to the case, we obtained a sanctions order against the departed employee that led to a highly favorable resolution of the dispute.

 

COMMERCIAL DISPARAGEMENT, DEFAMATION AND FALSE ADVERTISING ENFORCEMENT ISSUES

  • Assisted a medical device manufacturer in stopping public postings of company trade secrets relating to the results and progress of its clinical trials. By filing a John Doe action, issuing a number of subpoenas to Internet service providers and message board providers, and conducting additional investigative work, we determined the identity of the persons leaking the information. This allowed us to resolve the dispute quickly and prevent further postings by the offenders.
  • Defended a non-profit organization against defamation and related claims brought by a plaintiff who sought to stop the non-profit’s community organizing activities.We successfully defeated plaintiff’s motions for a temporary restraining order and a preliminary injunction, leading to dismissal of the case.