Jenner & Block

Trademark, Advertising and Unfair Competition Practice

Practice Concentrations

Jenner & Block’s Trademark, Advertising and Unfair Competition Practice is an inter-disciplinary team comprised of members of the Firm’s Litigation, Intellectual Property and Labor Practices.  This unique approach results in a team able to counsel clients to avoid litigation through proactive client counseling and to successfully and efficiently resolve litigation if it does arise.

Our Trademark, Advertising and Unfair Competition Practice work includes:

  • Fortres Grand Corp. v. Warner Bros. Entertainment:  Secured a victory for Warner Bros. Entertainment when the court granted a motion to dismiss a trademark infringement complaint related to the blockbuster movie The Dark Knight Rises.  At issue was Fortres Grand Corp.’s allegation that the movie’s references to a fictional software program called “Clean Slate” infringed Fortres Grand’s real computer security software of the same name.  The dismissal was affirmed by the Seventh Circuit.
  • Arista Records v. Vita Tkach et, al.:  Obtained ex parte domain name seizure order, TRO and preliminary injunction against counterfeit online music service.  In an ancillary proceeding, the firm secured a significant ruling from the Court holding that the preliminary injunction order applied to a third party Internet intermediary that provided DNS and web optimization services to the enjoined counterfeit service.
  • Mechanical Plastics Corp. v. W.W. Grainger, Inc.:  Successfully defended W.W. Grainger against trademark, trade dress, false advertising and copyright infringement claims filed by Mechanical Plastics Corp (MPC), which had accused Grainger of infringing its rights by incorporating certain trademarks, text and copyrighted images in Grainger’s well-known hardware catalog in order to compare MPC’s products to a line of in-house products manufactured and sold by Grainger.
  • The S. Hekemian Group v. The Related Companies, L.P.:  Represented defendant, a real estate developer, in a suit over use of the phrase “The Next Great Neighborhood,” defeating a motion for preliminary injunction on the grounds of fair use and failure to show likelihood of confusion resulting in voluntary dismissal of the lawsuit.
  • Louis Vuitton Mallatier v. Warner Bros. Entertainment:  Won the dismissal of a trademark infringement suit by luxury handbag manufacturer Louis Vuitton, which had sued Warner Bros. Entertainment over the moviemaker’s use of an alleged knockoff of a Louis Vuitton travel bag in a scene in the movie The Hangover Part II, in which a character identifies the bag as a “Lew-is Vuitton.” 
  • Warner Bros. Entertainment v. The Global Asylum:  Prevented a low-budget movie originally called Age of the Hobbits from being distributed under that name, arguing that the title, title design and packaging unlawfully tried to cash in on the goodwill and popularity of Warner Bros. Entertainment’s blockbuster film The Hobbit: An Unexpected Journey. The court issued a preliminary injunction, barring the advertising, selling or distributing of any film titled Age of the Hobbits or using any mark that is similar to The Hobbit or any of the titles in The Hobbit trilogy.  The Ninth Circuit affirmed the injunction.
  • Sears Brands, LLC v. Sears Hometown and Outlet Stores, Inc.:  Defended Sears Hometown and Outlet Stores, Inc. in a series of TTAB Opposition Proceedings concerning the filing of applications for various house marks for retail store services.
  • Comedy Playground, LLC v. NBCUniversal Media, LLC:  Represented broadcast network in a trademark infringement claim based on use of the name “NBC Playground” for an online contest involving the creation of a scripted television program.
  • Monster Energy Company v. West Coast Chill, Inc.:  Represented a producer and distributor of energy drinks against trademark and trade dress infringement claims.
  • Hansen Beverage Co. v. KO Beverages LLC:  Defended KO Beverages in a lawsuit based on allegations that the defendant’s “Knockout” energy drink infringed the trademarks and trade dress of “Monster” energy drinks.
  • Universal City Studios v. Global Asylum:  Represented Universal Studios in prosecuting trademark, unfair competition, and copyright claims against a film studio that produced and distributed, in the United States and internationally, a "mockbuster" DVD that copied the title, title design and key art for Universal's 2012 motion picture Battleship.  Following litigation in the United Kingdom and in California, the defendant agreed to change the title, title design and artwork to a non-infringing format for all distribution of the DVD worldwide.
  • Fifty Shades Limited v. Smash Pictures:  Represented NBCUniversal and author E L James in prosecuting claims for  trademark and copyright infringement and obtaining a permanent injunction against an adult film company based on its distribution, before the release of Universal’s film, of an unauthorized adaptation of the bestselling Fifty Shades of Grey novels.
  • Fleshwound Films v. Rush Sports & Events International:  Represented one of Australia’s largest live-action sports promoters in an international arbitration and state court proceedings concerning trademark licensing rights, successfully opposing a preliminary injunction motion and ultimately securing a favorable settlement.
  • Bally Shoe of Switzerland v. Bally Manufacturing Corporation:  Defended Bally Manufacturing Corporation against allegations of trademark infringement filed by Bally Shoe of Switzerland.
  • St. Charles Manufacturing Co. v. St. Charles Furniture Corp.:  Represented defendant in action involving trademark rights to the term "St. Charles."
  • Simmons Browder Gianaris Angelides and Barnerd, LLC v. The Simmons Firm, ALC:  Prevailed  in a trademark opposition that was tried to decision before the TTAB regarding the name of a professional services firm.
  • MGM Pictures, Inc. v. Mark Brown, Beauty Shop LLC et al.:  Represented producer Mark Brown and related companies in trademark, copyright and unfair competition claims relating to a motion picture release.  Successfully settled after preliminary injunction and appeal to the Ninth Circuit.
  • Represented American Association of Electrodiagnostic Medicine in successful defense of litigation brought by medical device manufacturer charging that AAEM's publication of review of literature on the manufacturer's product disparaged the product in violation of the Lanham Act and state injurious falsehood laws.  The federal district court granted AAEM's motion for summary judgment.
  • Prime Healthcare Anaheim v. AHMC Anaheim Regional Medical Center:  Defended hospital owner and prevailed in a bench trial in a trade name lawsuit filed by a rival hospital owner concerning priority of use and state law rights in the business name “Anaheim Regional Medical Center.”
  • AOL v.  Represented AOL in a case involving claims for trademark infringement and unfair competition regarding use of AOL’s ADVERTISING.COM and AD.COM marks for an online display advertising network.  The case involved cutting-edge issues regarding the scope of trademark protection for domain names.
  • v. Huffington Post Union of Bloggers:  Prevailed in UDRP proceeding to recover the domain name  The three-member panel ruled that the defendant’s use of the domain name was intended to capitalize on the popularity of the Huffington Post, rejected the defendant’s primary argument that it was a labor organization devoted to the criticism of Plaintiff and ordered the transfer of the domain name to the Huffington Post.