Paul Llewellyn, Co-Head of the firm’s Trademark, Copyright and False Advertising Group, has extensive experience in intellectual property related matters, including trademark infringement, trademark counterfeiting, licensing, copyright, design patent, false advertising and consumer fraud litigation. Paul also has substantial experience in trademark clearance and registration, transnational trademark enforcement and protection, intellectual property licensing, trade secret protection, defamation and right of publicity matters, as well as intellectual property due diligence arising from corporate transactions.
Paul’s practice covers a wide variety of industries, including pharmaceuticals, food and liquor products, luxury goods, consumer products, retail services, industrial products and scientific and engineering products. His trademark and brand protection experience includes traditional trademark infringement and dilution matters, licensing disputes, domain name cybersquatting and online infringement, counterfeit, diverted and repackaged goods disputes, and opposition and cancellation proceedings before the US Patent & Trademark Office’s Trademark Trial and Appeal Board, with subjects ranging from color marks and product configurations to retail store trade dress and intellectual property rights in entertainment characters. He also handles trademark prosecution matters and counsels on traditional and new media trademark and copyright issues.
Paul’s false advertising experience includes defense of preliminary injunctions alleging federal and state false advertising claims, review and clearance of proposed advertising, and false advertising counseling. He also has an extensive background defending companies in consumer fraud class actions in state and federal courts throughout the country.
Most recently, Paul was ranked in World Trademark Review 1000 2014, with clients citing his “superb familiarity with the relevant case law. Whether it is a quick bullet-point summary or a court filing, you will always get a top-notch work product from Paul. He has calm demeanour and an approachable, down-to-earth style, and provides practical recommendations.” Paul was also recognized as an “IP Star” by Managing IP Handbook 2014. One of his clients noted that Paul “has great analytical skills, is very strategic and knows the law and the cases. Even more, he never loses sight of the big picture for our brands and our company.”
Representative Trademark and Related Matters
- Counsel for The Hershey Company in numerous trademark litigations, disputes and registration matters involving the Kisses, Hershey’s, and Reese’s trademarks and related trade dresses, as well as other marks and designs. Among other matters, recently served as trial counsel in a case alleging dilution and infringement of the Kisses mark in federal court in the District of New Jersey, and recently obtained registration of the configuration of the Hershey’s chocolate bar design after appeal to the Trademark Trial and Appeal Board.
- Counsel for Pfizer in numerous trademark litigations and disputes involving infringement of the Viagra mark and blue diamond tablet trade dress, as well as other marks including Pfizer, Celebrex and Revolution.
- Served as lead trial counsel for US licensee of well-known children’s television entertainment property, obtaining favorable decision after three week trial in bankruptcy court that client’s license was wrongfully terminated.
- Represents a well-known luxury goods company in trademark infringement and counterfeiting matters. Recently obtained a temporary restraining order and preliminary injunction on behalf of this client against approximately 90 websites selling counterfeit watches, jewelry and handbags.
- Counsel for Pfizer in an action involving the distribution of counterfeit Lipitor tablets, obtaining preliminary injunction and assisting in the recovery of millions of dollars of victim’s compensation in related criminal proceedings.
- Represented liquor companies in disputes alleging infringement of design patents for bottle designs.
- Defended a trademark infringement action alleging that a wine store’s layout and design infringed the claimed trade dress of another wine store.
- Represented Marquis Jet Partners in numerous disputes involving infringement of the Marquis Jet mark and other trademarks.
- Counsel for Sunbeam in an appliance design patent infringement case, obtaining summary judgment dismissing plaintiff’s claims.
- Represented a bedding company in a case alleging copyright infringement of fabric patterns.
- Successfully defended Staples’ “That Was Easy” tagline at the time of its nationwide launch, conducting expedited discovery that resulted in the plaintiff voluntarily dismissing its complaint.
- Defeated a preliminary injunction action seeking to stop the launch of Hershey’s Smartzone nutrition bar.
- Defended ABC Television and Granada Entertainment against claims that the show I’m a Celebrity–Get Me Out of Here infringed copyright and trade dress rights for CBS’s Survivor.
- Represented Tumi in action involving diverted and gray goods luggage products.
- Represented Coach in lawsuit alleging infringement of trade dress of Coach handbags.
Representative False Advertising and Consumer Fraud Matters
- Represented Novartis Consumer Health in putative consumer fraud class actions in federal and state court alleging undisclosed risks of phenylpropanolamine (PPA) in over-the-counter cough and cold remedies, including successful class certification opposition on behalf of joint defense group.
- Defended Hershey in lawsuit by ZonePerfect asserting false advertising and other claims relating to Hershey’s SmartZone nutrition bar, resulting in denial of preliminary injunction motion and voluntary dismissal of case.
- Represented Pfizer in several consumer fraud class actions alleging false efficacy claims of RID and NIX over-the-counter lice treatment products.
- Defended Sidney Frank Importing Company in a false advertising case involving advertisements for Grey Goose vodka.
- Defended Glaxo Wellcome in a false advertising case involving direct-to-consumer advertising of a prescription drug product.
- Defended Staples in a preliminary injunction suit challenging client’s comparative advertising.
- Defended Purdue Pharma in a preliminary injunction case asserting unfair trade practices under Connecticut state law, as well as various other matters under state unfair and deceptive trade practices statutes.
- Represented Pfizer in both a Lanham Act case and a National Advertising Division arbitration involving promotion of animal health products.
- Represented Pfizer and Novartis Consumer Health in numerous putative consumer fraud class actions in state and federal courts regarding the sale of over-the-counter and prescription products.
- Represented a major pharmaceutical company in a putative class action suit alleging Internet privacy violations.