Barack Ferrazzano’s Intellectual Property Group has extensive experience in the protection, management, and enforcement of our clients’ intellectual property assets. Our IP Group understands the value of trademarks, copyrights, design patents, and trade secrets, and how best to select, use, and protect these valuable assets. We have extensive experience in all facets of IP practice, including counseling, licensing, prosecution, business transactions involving intellectual property, registration, enforcement, and litigation. We represent clients in a broad range of industries, including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.
Trademarks & Trade Dress
We understand that our clients’ trademarks, logos, and trade dress are the cornerstone of their brands. We have extensive experience in all aspects relating to the development and protection of our clients’ trademarks and trade dress, and we count among our clients some of the world’s most well-known brands. Our trademark practice includes:
- Trademark Clearance. We conduct trademark clearance on a thorough and cost-effective basis for trademarks and trade dress, both domestically and worldwide.
- Prosecution and Maintenance. We regularly handle the registration and maintenance of large worldwide trademark portfolios, as well as opposition and cancellation proceedings. We have a network of skilled foreign associates with whom we have worked extensively.
- Counseling. We counsel our clients on how to strengthen the protection of their trademarks, on proper trademark usage, and on the most cost-effective way to build their brands.
- Policing. We routinely advise clients on the importance of policing their marks to prevent third-party use, and handle these activities in a cost-sensitive manner, including the implementation of watch services and counseling regarding potentially infringing marks. We also consider the impact of social media when advising clients on how to protect their brands.
- Complex Transactions. We handle corporate transactions for famous brands, both domestically and internationally, in the context of acquisitions and sales. Not only are the attorneys in our group skilled at structuring transactions to enhance the protection of all aspects of IP rights, our strong litigation background enables us to identify and provide advice to minimize transactional risks.
- Licensing. We negotiate and draft a wide variety of trademark licenses. We also routinely handle assignments, security interests, and other agreements relating to trademark rights.
- Litigation. Our attorneys have nationwide experience in all aspects of trademark and trade dress litigation, including infringement, counterfeiting, false advertising, false endorsement, and dilution.
- ADR. We are highly experienced in using alternative dispute resolutions to achieve solutions to legal problems without litigation.
Right of Publicity
Our practice group is experienced in evaluating and litigating right of publicity claims and negotiating endorsement agreements.
Our IP practice group has a strong background in counseling and in protecting our clients’ copyrights, including:
- Copyright prosecution;
- Counseling clients on how to develop and protect ownership of copyrighted works;
- Counseling clients to minimize the risk of infringement claims;
- Drafting license and assignment agreements;
- Advising clients in complex transactions; and
- Litigating copyright infringement lawsuits.
We have extensive experience in the protection of our clients’ trade secrets and sensitive business information. We counsel our clients on how to protect their valuable trade secrets by developing trade secret protection programs. We draft, negotiate, and enforce confidentiality and non-compete agreements, and we litigate trade secret and non-compete disputes across the country.
Our IP practice includes Design Patent counseling, prosecution, and litigation.
Our intellectual property attorneys counsel entities and individuals engaged in the development, distribution, licensing, and other commercialization of software. Our work in this area includes:
- Drafting and negotiating software development agreements, distribution agreements, reseller agreements, and traditional and custom licensing agreements;
- Assisting our clients with the preparation of enforceable invention assignments and confidentiality agreements for use with employees and independent contractors;
- Counseling clients on how to protect the proprietary elements of developed and licensed software, including source code, documentation, websites, content, trademarks, copyrights, trade secrets, algorithms, and enhancements;
- Identifying and addressing software-specific issues in mergers and acquisitions, including addressing ownership issues, transition matters, and “open source” licensing concerns; and
- Developing software development policies designed to prevent unauthorized use of “open source” software.
We recognize that the legal issues relating to the Internet – including domain name protection, e-commerce, social media, and the hidden use of trademarks in metatags and key words – constitute a dynamic and increasingly important area of the law. Our IP Group is well-versed on these issues, and our practice includes:
- Internet domain name acquisition and registration;
- Social media counseling;
- Internet domain name infringement and cybersquatting disputes;
- Metatag and key word disputes; and
- Copyright infringement and trade dress claims regarding website copying.
Having practiced extensively in large firm and boutique environments, our intellectual property attorneys bring years of experience and a creative approach to their work. Our intellectual property group includes attorneys with experience in complex contract negotiation, strategic transactions, ongoing business counseling, litigation, and dispute resolution. As a result, we maintain an impressive record of crafting favorable outcomes to a wide array of challenges in both transactional and litigation scenarios. Some of our attorneys focus on IP counseling, licensing, business transition, and portfolio management matters, while others focus on IP litigation. Our practice is supported by highly skilled paralegals and a state-of-the-art intellectual property asset management database system.
Represented the receiver of a failed investment advisor in all litigation to recover assets and insurance proceeds; we recovered significant assets, including the proceeds of directors and officers liability policies and the advisor’s fidelity bond.
Defended America West Airlines in a case alleging misappropriation of trade secrets; we settled the lawsuit on favorable, but confidential, terms.
Defending De Beers Diamond Jewellers Ltd. in a trademark infringement action; we settled the lawsuit on favorable, but confidential, terms.
Represented GoSmile, Inc in a trademark and trade dress infringement action; we settled the lawsuit on favorable, but confidential, terms.
Represented Louis Vuitton in a trademark infringement action; we obtained not only a consent injunction but also the defendant’s agreement to pay the legal fees our client incurred by our client in the action.
Defended Kmart on a breach of contract claim seeking approximately $20 million; we obtained dismissal of the claimant’s damage claim in full, resulting in a favorable resolution of the case.
Serve as counsel to L Catterton, the largest consumer-focused private equity group in the world, in connection with its growth investments in leading consumer brands, including recent investments in NotCo, Hydrow, FlashParking, ThirdLove, ClassPass, and Il Makiage.
Represented Louis Vuitton Malletier in successful appeal to U.S. Court of Appeals for the Second Circuit; we obtained a reversal of the District Court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.
Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.
- Smith as Plan Trustee for and on behalf of the Estates of Boston Chicken v. Arthur Andersen LLP; Beck v. Bank of America (D. Ariz.)
Represented Bank of America in third-party actions seeking recovery of more than $1 billion in damages allegedly arising out of national restaurant chain's insolvency; we were successful in obtaining summary judgment dismissing the third party complaints.
Defending Moët Hennessy in a trademark infringement action; we settled the lawsuit on favorable, but confidential, terms.
Representation of Givenchy – a Louis Vuitton Moët Hennessy luxury brand known for its haute couture clothing, accessories, and perfume – in the negotiation of a relationship deal with prominent actress and singer Ariana Grande as the new face of Givenchy. Ariana will be featured in Givenchy’s Fall-Winter 2019 campaign, to be unveiled in July (Announced: May 2019).
Represented an author in successfully resolving a copyright infringement claim, without the need for litigation.
Represented a quilt manufacturer in successfully defending a copyright infringement claim concerning the fabric patterns used for quilts, without the need for litigation.
Member of the defense team who obtained a reversal of a preliminary injunction in a high-profile competitor false advertising dispute arising out of the 2019 Super Bowl. Miller Coors Beverage Co. USA, LLC v. Anheuser-Busch Companies, LLC, 957 F.3d 837 (7th Cir. 2020). Law360 named the appellate court’s decision the #3 most significant Lanham Act decision of midyear 2020.
Represented Louis Vuitton in a trademark dilution action against Hyundai Motors America, obtaining summary judgment in our client's favor on its dilution claim.
Scott represented a local entrepreneur in a heated trademark dispute that had raged for nearly a decade before his involvement. Scott suggested and conducted court-aided mediation in an effort to finally resolve the matter. The court found in favor of Scott's client, awarding damages and injunctive relief, rejecting the defendant's trademark application and transferring its domain name to Scott's client.
Represented a division of LVMH in the intellectual property aspects of its acquisition of Millennium Imports, LLC, which held the worldwide rights to Belvedere and Chopin brand vodkas, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.
Represented various divisions of LVMH Moët Hennessy Louis Vuitton, S.A. in the intellectual property aspects of their acquisitions of Bliss, Fresh, Benefit, Urban Decay, Hard Candy, Donna Karan, Belvedere Vodka, including overseeing the intellectual property-related due diligence activity and negotiating the intellectual property-related provisions of the transaction documents.
Represented Accor S.A. in the intellectual property aspects of its sale of an interest in Carlson Wagonlit Travel, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.
Scott has conducted intellectual property audits for more than 25 corporate clients. In the process, he has created social networking policies, web site terms and conditions, and bring-your-own-device policies; conducted on-site inspections leading to the discovery of a number of trade secrets and copyrights; and drafted restrictive covenants and non-disclosure agreements. Scott's tireless attention to detail during these audits has uncovered and protected millions of dollars in corporate assets.
Representation of Kendo Holdings, Inc., a cosmetics and beauty incubator company owned by LVMH Moët Hennessy Louis Vuitton and affiliated with Sephora, in strategic transactions related to the formation and launch of the brand Fenty Beauty by Rihanna.
Litigated claims under the Defend Trade Secrets Act involving former employees recruited to join a directly competing company. DF Institute, LLC d/b/a Kaplan Professional v. Dalton Education, LLC et al., Case No. 3:19-CV-00452 (W.D. Wisc.).
Representation of LVMH Moët Hennessy Louis Vuitton (LVMH) in strategic corporate and intellectual property transactions related to the formation and launch of Fenty by Rihanna, a new luxury fashion maison of ready-to-wear clothing, shoes, and accessories. The historic collaboration will make Rihanna the first woman to create an original LVMH brand, and Fenty the first LVMH-established fashion house in more than 30 years (Announced: May 2019).
Manages global anti-counterfeiting and trademark enforcement matters for a leading manufacturer of welding, cutting, and joining equipment.
Manages global trademark portfolio for a leading metals and materials distributor.
Obtained a federal trademark and service mark registration covering an iconic 3-dimensional character mark used by one of the nation’s leading insurance providers.
Obtained a permanent injunction in trademark and trade dress infringement and dilution action involving a famous advertising spokesperson used by one of the nation’s largest insurance providers.
Obtained a permanent injunction and $2 million statutory damages award in a trademark counterfeiting civil action involving financial services fraud.
Obtained a temporary restraining order barring defendants from using, promoting, or displaying infringing trademark during industry’s largest trade show.
Obtained a summary judgment and permanent injunction for a plaintiff challenging a defendant’s unauthorized use of the plaintiff’s famous trademarks on merchandise bags sold to the plaintiff’s independent motorcycle dealerships.
Obtained a permanent injunction against a competitor’s use of infringing and dilutive color trademark used in connection with medical products.
Obtained a permanent injunction against a competitor’s infringing and dilutive product configuration trade dress for game puzzles.
Successfully opposed a competitor’s application to register similar hair care products trademark after a full trial on the merits in T.T.A.B.
Obtained a reversal of U.S.P.T.O. genericness and descriptiveness refusal in ex parte appeal of “1-800”-formative trademark in the T.T.A.B.
Represented an applicant in inter partes opposition in the T.T.A.B. involving audible sound marks used in connection with telecommunications goods and services.
Represented GIBC, Inc., a well-known micro-brewery (Goose Island Beer), in a trademark infringement action, successfully enjoining a competitor’s use of a beer tap handle that infringed upon GIBC’s trademarked “Goose Head” beer tap handle.
Represented GoSmile, Inc., in a trademark infringement action filed against CVS, alleging that CVS's USMILE product infringed GoSmile's trademark rights. This case was successfully settled on terms that are confidential.
Represented Louis Vuitton Malletier, a division of LVMH, in successful appeal to U.S. Court of Appeals for the Second Circuit, obtaining a reversal of the district court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.
Represented Fendi in a trademark infringement action against a major discount retailer, arising out of the defendant retailer’s sale of allegedly counterfeit Fendi handbags, wallets, and other accessories in its warehouse stores; the lawsuit was settled on favorable, but confidential terms.
Defended a professional hockey franchise in consolidated trademark opposition proceedings involving full trial on the merits. Monster Energy Co. v. Cavaliers Hockey Holdings, LLC, T.T.A.B. Opp. No. 91/220,680 (T.T.A.B.).
Defended a financial services company in trademark cancellation action. Primerica, Inc. v. How Money Works, LLC, T.T.A.B. Cancellation No. 92/071,945 (T.T.A.B.).
Ongoing representation of several cosmetic companies in connection with the prosecution, maintenance, and licensing of their worldwide trademark portfolios, which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.
Ongoing representation of a prominent wine and spirits manufacturer and distributor in connection with the prosecution, maintenance, and licensing of its worldwide trademark portfolio, which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.
In a coordinated effort with over 70 foreign associates, Scott cleared and applied to register a multi-national corporate client's new trademark in over 75 countries on the same day. Scott devised the difficult international filing strategy to stave off potential infringers from around the world.
Representation of global private equity firm L Catterton and its fund strategies (including L Catterton North American Growth and L Catterton Real Estate) in connection with its growth investments in leading consumer brands, luxury retail-driven real estate developments, and other transactions.
- Moët Hennessy USA
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- September 2020 – Speaker, IP Hot Issue (YouTube)
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- August 11, 2020 – Speaker, IP Clinician's Workshop (Virtual)
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- July 23, 2020 – Speaker, Lurie Children's Hospital (Virtual)
- May 2020 – Speaker, IP Hot Issue (YouTube)
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- October 31, 2019 – Speaker (Chicago, IL)
- May 20, 2019 – Recipient, 2019 Law360 Distinguished Legal Writing Award Winner
- November 14, 2018 – Co-Sponsor (New York, NY)
- September 19, 2015
- April 11, 2014
- 2013 Annual Meeting of the International Trademark Association: "The Benefits and Limitations of Advertising Injury Insurance"
- March 5, 2013
- September 14, 2011
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- Client Alert: U.S. Supreme Court Rules Copyright Registration Required to File Copyright Infringement LawsuitMarch 12, 2019 – Barack Ferrazzano Client Alert
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- October 2016 – ABA Entertainment and Sports Lawyer, Fall 2016 Volume 33 Issue 1
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- March 2016 – Entertainment Law & Finance Newsletter, Law Journal Newsletters
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