Buchanan's trademark litigation team recognizes that, in today's world economy, a company's name, its brand, its trademarks and service marks, its trade dress and its Internet domain names are often the most valuable intellectual property assets owned by the company. These symbols represent the goodwill and reputation that the company has built up over decades or is in the process of building at great expense today. They provide the company's customers with assurance of the quality, consistency and high standards the customers expect and demand. The protection of these IP assets is critical to the success and growth of our clients' businesses. Our trademark litigators are committed to the protection of our clients' interests and the enforcement of our clients' IP rights, whether as plaintiffs or defendants, in this critically important field of IP law.

Buchanan's Trademark & Copyright Practice Group handles trademark searching, selection, clearance, registration, protection and licensing for a wide variety of domestic and international clients. Those clients include, among others, Dick's Sporting Goods, Michelin, Chevron Corporation, Deere & Company, Remy Martin and Waterford Wedgwood plc. Whether as a plaintiff or a defendant, our clients turn to Buchanan's trademark litigation team to provide cost-effective, client-oriented service when they are faced with disputes involving trademarks, service marks, trade dress, domain names and related subject matter.

The trademark litigation team is highly experienced in handling a wide range of trademark disputes, including all types of trademark and trade dress infringement and dilution claims, counterfeiting, gray-market goods, domain name claims and licensing disputes. We have handled these disputes in the federal and state courts at the trial and appellate levels. We have also represented clients in trademark disputes before non-judicial forums, including ex parte and inter partes registration and cancellation disputes before the Trademark Trial and Appeal Board of the USPTO, domain name disputes under the Uniform Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers (ICANN), anti-counterfeiting enforcement through the United States Customs & Border Protection Service, and infringement and gray-market goods claims before the United States International Trade Commission.

With knowledge that only years of experience can provide, Buchanan's trademark litigators have handled a large number of disputes involving the issues that typically arise in these cases, including likelihood of confusion, secondary meaning, defining trade areas, likelihood of dilution, fame, genericness, marketing methods, industry practices, proof of actual confusion and damages. The trademark litigation team is also experienced in the use of expert witnesses and the development and use of survey evidence to establish or disprove claims asserted in trademark litigation.

The team always seeks to resolve trademark disputes as quickly and efficiently as possible, starting with negotiations and alternative dispute resolution (ADR). However, when settlement negotiations and ADR do not produce satisfactory results, our trademark litigation team is prepared to litigate the dispute in whatever forum and in whatever way is necessary to protect our clients' interests, including proceedings before government agencies, applications for temporary restraining orders and seizures, motions for preliminary injunctions, declaratory judgment actions, summary judgment motions, trials and, if necessary, appeals. Throughout this process, Buchanan's trademark litigators seek to obtain the best possible outcome and achieve our client's business objectives in the most cost-efficient way in each case. The team's experience is shown in the following examples.

Representative Experience

• Advance Stores Co. v. Refinishing Specialties, U.S. Court of Appeals for the Sixth Circuit. [Preserved on appeal a permanent injunction restricting a prior trademark user's use of a conflicting mark to a single county in a single state.]
• In the Matter of Certain Agricultural Machines and Components Thereof, U.S. International Trade Commission. [Represented Deere & Company in a complex case involving "gray market" and other imported goods infringing Deere's famous yellow and green trade dress and "JOHN DEERE" trademark resulting in issuance of an exclusion order and cease and desist orders.]
• Technology Advancement Group v. Transformation Advisors Group, United States District Court for the Eastern District of Virginia. [Represented defendant in action alleging infringement of common law trademark rights and U.S. registrations for the "TAG" mark. Settled on favorable terms.]
• Chevron U.S.A., Inc. v. J&P Lube, Inc. et al., United States District Court for the Eastern District of Virginia. [Represented trademark holder in action against former licensee for infringement of various marks, resulting in entry of a consent order requiring the former licensee to amend its trademarks and trade names.]
• Alitalia-Linee Aeree Italiane v. Casinoalitalia.com and Technologia JPR, Inc., United States District Court for the Eastern District of Virginia. [Handled first domain name case to hold that in rem and in personam actions may not be brought simultaneously under the Lanham Act.]
• Clear Channel Communications, Inc. v. CBS Radio, Inc., United States District Court for the Eastern District of Virginia. [Handled domain name dispute concerning ownership and use of "Q102.com" domain name.]
• Hanson Concrete v. Hanson Concrete, United States District Court for the Northern District of California. [Successfully represented the defendant and limited relief to a disclaimer in a trademark dispute involving identical marks among competitors and avoided a preliminary injunction that sought to have a multibillion-dollar international conglomerate change all of its domestic trade names and numerous trademarks.]
• Deere & Co. v. MTD Products, Inc., United States District Court for the Southern District of New York. [Represented Deere & Co. in a matter protecting Deere's famous green and yellow trade dress on outdoor power equipment.]
• Mueller Sports Medicine, Inc. v. Beveridge Marketing LLC, United States District Court for the Western District of Wisconsin. [Represented defendant accused of infringing trademarks and patent covering under-eye light-absorbing devices worn by athletes and obtained summary judgment of noninfringement.]
• Bush Brothers & Co., Inc. v. Nash Finch Co., United States District Court for the District of Delaware. [Forced defendant to cease use of labels infringing Bush Brothers' famous trade dress for Bush's beans.]
• Tandem Healthcare, Inc. v. Tandem Management Co, LLC, United States District Court for the District of New Jersey. [Represented trademark owner in trademark infringement action, which resulted in settlement on favorable terms.]
• RP Technical Services, Inc. v. Severe Paintball, L.C., United States District Court for the Southern District of Florida. [Represented defendant and defeated plaintiff's motion for injunction against client's trade dress.]
• Haynes International, Inc. v. Specialty Metals Corp., United States District Court for the Western District of Pennsylvania. [Represented trademark owner in trademark infringement action in which defendant voluntarily ceased use of infringing mark.]
• Michelin North America, Inc. v. Pirelli, Trademark Trial and Appeal Board. [Successfully enforced Michelin's trademark rights in its "X" mark.]
•  Waterford Wedgewood plc v. Forma-Kutzscher Gmbh, Trademark Trial and Appeal Board. [Successfully represented Waterford against infringement of its industry leading "LISMORE" mark for crystal.]
• Remy Martin v. Calif. Furniture Collections, Trademark Trial and Appeal Board. [Represented Remy Martin in opposition proceeding resulting in settlement on favorable terms.]
• Remy Martin v. Industria Adriatica, Trademark Trial and Appeal Board. [Represented Remy Martin in opposition proceeding resulting in settlement on favorable terms.]
• Gus Sclafani Corp. v. Violet Packing Co., Trademark Trial and Appeal Board. [Obtained favorable ruling from the TTAB concerning client's priority of use, which was affirmed by the Court of Appeals for the Federal Circuit.]
• Institute of Chartered Financial Analysts of India v. CFA Institute, Trademark Trial and Appeal Board.  [Obtained summary judgment for registrant CFA Institute in cancellation proceeding based upon the petitioner's lack of standing, forcing withdrawal of the petitioner's pending trademark applications.]
• Resort Management Group, LLC, et al. v. Silver Creek Holding Co., Trademark Trial and Appeal Board. [Secured negation of proprietary rights in a geographic term once owned by a ski area and enabled other businesses to use the term freely.]
• Choice Hotels Int'l, Inc. v. Sutelan, Trademark Trial and Appeal Board. [Secured finding that "SLEEP INN" marks are famous and prevented registration of "SLEEPERS" mark.]