Jenner & Block

Trademark and Unfair Competition

Susan J. Kohlmann, Chair, Trademark and Unfair Competition Practice

Jenner & Block’s Trademark and Unfair Competition practice helps brand owners confront the full spectrum of trademark issues they encounter in the marketplace, including trademark and trade dress infringement, false advertising, dilution, and cybersquatting cases.  We litigate cases in federal courts and before the Trademark Trial and Appeal Board.  We also counsel clients in disputes involving the protection of their internet domain names, keyword advertising, meta-tags, linking, and online branding issues.  The practice has a particular focus on the convergence of trademark law, technology and the internet.

Representative matters handled by our Trademark and Unfair Competition team include:

  • AOL v.  Jenner & Block currently represents 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 involves cutting-edge issues regarding the scope of trademark protection for domain names.
  • Louis Vuitton Mallatier v. Warner Bros. Entertainment:  Jenner & Block won the dismissal of a trademark infringement suit by Louis Vuitton Mallatier against Firm client Warner Brothers Entertainment.  The luxury handbag manufacturer had sued Warner Bros. 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.”  In granting the Firm’s motion to dismiss the suit, the Court held that the use of the bag in the film was noncommercial speech protected by the First Amendment, that the likelihood of public confusion over the accessory’s origin was, at best, minimal, and that the use of the trademark was “artistically relevant.”
  • v. Huffington Post Union of Bloggers:  Jenner & Block prevailed in a hotly contested arbitration proceeding under ICANN’s “Uniform Domain-Name Dispute-Resolution Policy,” 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 and rejected the defendant’s primary argument that it was a labor organization devoted to the criticism of Plaintiff.  The panel ordered the transfer of the domain name to The Huffington Post.
  • Friendly Family Productions v. Little House on the Prairie:   Jenner & Block attorneys successfully represented the owner of trademark and merchandising rights in connection with the television series “Little House on the Prairie” (and the books on which it was based) in a trademark infringement action against a museum engaged in unauthorized merchandise sales on the internet.
  • NY Times Co. v. AOL and  Jenner & Block is representing AOL and the Huffington Post in a high profile trademark infringement lawsuit filed by the NY Times in the Southern District of New York arising from the use of the mark PARENTLODE by the Huffington Post in connection with a new parenting blog by well known author Lisa Belkin.
  • Fleshwound Films v. Rush Sports & Events International:  Jenner & Block attorneys represented one of Australia’s largest live-action sports promoters in an international arbitration and state court proceedings concerning trademark licensing rights.  We successfully opposed a preliminary injunction motion and secured a favorable settlement for our client.
  • Sly Magazine v. Weider:  Jenner & Block attorneys prevailed in a trademark infringement case on behalf of our clients, Weider Publications and American Media, successfully arguing that their trademark, “SLY Magazine,” for a Sylvester Stallone-themed magazine, did not infringe the trademark of a women’s online magazine with a similar name.
  • Mansef v. Ventura Content:  Jenner & Block attorneys defended an adult entertainment company in a lawsuit alleging claims for trademark infringement and unfair competition arising from the alleged use of a competitor’s trademarks in internet search engine advertising.
  • Current Communications v. Current Television:  Jenner & Block attorneys successfully represented a television station in defending against a preliminary injunction action brought by an internet service provider.  The case addressed cutting-edge issues relating to the convergence of television media and the internet.
  • Jaguar Land Rover North America v. Premier Automotive Imports of CA:  Successfully represented Jaguar Land Rover North America, Jaguar Cars Limited and Land Rover, in a Lanham Act trademark infringement and unfair competition lawsuit against a dealership and its purported assignee.  On behalf of our clients, we secured a preliminary injunction that effectively ended the dispute and prompted a favorable settlement.
  • Momentum Luggage v. JanSport:  Jenner & Block attorneys obtained summary judgment dismissing a suit filed in the United States District Court for the Southern District of New York that sought to enjoin our client’s launch of a luggage line under the name MOMENTUM.  The Second Circuit Court of Appeals affirmed the dismissal.
  • Prime Healthcare Anaheim v. AHMC Anaheim Regional Medical Center:  Jenner & Block defended a hospital owner 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.”