Media Mentions
2008
Robert W. Zelnick was quoted in the February 2008 issue of Inside Counsel in an article regarding the use of trademark law to suppress online criticism. As a partner in McDermott's Intellectual Property, Media & Technology Department, Mr. Zelnick discussed the elements needed for a successful trademark infringement case including proof that the website is associated with the sale of goods or services and that use of the trademark confuses at least some of the plaintiff's potential customers. Mr. Zelnick noted, however, that, "people are afraid of losing their house in a legal proceeding, so the dominant response is to accede to the demands made of them. Very few of these cases hit a judge’s desk. The vast majority of law is being made outside judicial scrutiny."
Robert W. Zelnick, Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
2007
Raquel Rodriguez was mentioned in a July 31 article published by the Miami Herald regarding a trademark infringement case over the rights to use the phrase "Miami Fashion Week." Currently three companies refer to their fashion week as "Miami Fashion Week", however Fashion Week of the Americas, represented by Ms. Rodriguez, has brought a lawsuit regarding their rights to this phrase. Ms. Rodriguez stated that her client first used the phrase in 1999 and that the longevity strengthens her case.
Raquel Rodriguez, Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement, Trial
John J. Dabney was quoted in a July 20 article published by Intellectual Property Watch regarding a U.S. ruling that won the protection given to famous foreign trademarks. Mr. Dabney commented on the new International Trade Commission Ruling and it's effect on foreign companies operating within the U.S. "It creates an incentive for unscrupulous companies to find well-known foreign trademarks, use them in the US [thus obtaining US trademark rights], and try to shake down the marks' owners when they try to expand into the US market," Mr. Dabney said.
John J. Dabney, Intellectual Property, Media & Technology, International Trade Commission, Trademark/Brand Protection & Enforcement
Mark P. Wine was quoted in a May 15 article published by IDG News Service regarding Microsoft’s move to seek patent royalties from open source distributors and users in an attempt to use legal threats to deflect attention from company problems. Mr. Wine agreed that Microsoft is hoping companies will pay without a fight rather than engage them in a legal battle. He also said Microsoft may be trying to drive open source software users to migrate to its products. "I think it's as much a marketing move as anything else," he said. "If you're really serious, you sit down and have a discussion, and you tell [open-source users] which patents, or you sue them." This article appeared in MacWorld and Computer World.
, Intellectual Property, Media & Technology, Litigation - IP, Media & Tech, Trademark/Brand Protection & Enforcement
Paul Devinsky was quoted in the May issue of ABA Journal regarding the issues behind patenting tax strategies. Mr. Devinsky states, “If you think a patent claim is invalid, you have to get your patent attorney involved and get an opinion of counsel stating that the claim is invalid—which is one of the best ways to protect yourself...." “That’s a pretty big deal every time you want to file a tax return for a major client.”
Paul Devinsky, Intellectual Property, Media & Technology, Patent Prosecution, Trademark/Brand Protection & Enforcement
2005
McDermott Will & Emery's Intellectual Property, Media & Technology Department's trademark practice ranked 17th in Intellectual Property Today's latest "Top Trademark Firms" survey (May 2005). With 441 trademark registrations secured for clients in 2004, a 38 percent increase from 2003, the Firm ranked in the top five percent among 330 U.S. law firms.
Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
2004
Robert Zelnick was quoted in the August 30 issue of The New York Times in regard to Donald Trump's attempt to register the trademark "You're Fired!" with the U.S. Patent & Trademark Office. The USPTO has initially rejected Trump's application to register "You're Fired!," because it could cause confusion with "You're Hired!" -- an existing registered trademark for an educational board game designed to give middle-school students a taste for the job hunt. The article reported that legal experts say conflicts were common early in the registration process, as government lawyers scrutinize applications for similarities between the sight, sound and source of the marks. "It's not just a matter that consumers would overlook the difference between the F and the H," Mr. Zelnick commented.
Robert W. Zelnick, Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
Matthew Weil was quoted on Newsday.com January 9 regarding a trademark infringement case between KP Permanent Make-up Inc. and Lasting Impressions. The article explained that the two companies, who both sell bottled pigment to salons for the purpose of tattooing permanent makeup, are fighting over the use of "micro color" as a trademark. Mr. Weil commented that the Supreme Court will decide whether there can be infringement by one company's use of the word "micro color" when another company has that term as part of its trademark-protected logo.
Matthew F. Weil, Intellectual Property, Media & Technology, Litigation - IP, Media & Tech, Trademark/Brand Protection & Enforcement
2003
McDermott Will & Emery's Intellectual Property Department was recognized in Intellectual Property Today's Top Trademark Firm survey, published in its May 2003 issue. McDermott Will & Emery ranked 35th (the Top 10th percentile) of 358 U.S. law firms with trademark practices. The Firm's IP Department issued 371 trademark registrations in 2002, which is a 44% increase from 2001.
Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
In its May 2003 issue, Intellectual Property Today ranked McDermott Will & Emery 35 of top trademark firms.
Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
Toby Kusmer was quoted in the April 26 issue of The Boston Globe regarding a trademark dispute between a small cooperative art gallery and Intel Corp. "As a trademark owner you worry that your trademark may become generic, or diluted," commented Mr. Kusmer. He continued by commenting that the pursuit of 'Art Inside' is a "stretch…There is very little likelihood of confusion."
Toby H. Kusmer PC, Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
2002
McDermott Will & Emery was identified as trademark counsel for three of the Fortune Global 50 companies, as published by IP Worldwide in its November 2002 issue. McDermott Will & Emery's Trademark Practice tied for second-place for most prosecution mentions among the Global 50 companies.
Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
McDermott Will & Emery was listed in Intellectual Property Today’s Top Trademark Firms, published in the its May 2002 issue. McDermott was ranked among the top 50 firms, having issued 258 trademarks in 2001.
Intellectual Property, Media & Technology, Trademark/Brand Protection & Enforcement
