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Trademark, Copyright & False Advertising Litigation

“The firm's IP group also specializes in technology transactions, data protection, social media, trademark and false advertising litigation. Kaye Scholer's industry groups contain experts in a variety of technical and scientific fields, offering a wealth of specialist knowledge to the firm's IP clients.”—Managing IP Handbook 2013 (New York)

Our trademark, copyright and false advertising group is unique in that we have both highly experienced IP counselors and trial attorneys. This experience is key to developing a strategy at the early stages that will protect your interests if the matter ends up in litigation. We develop a winning strategy from the outset of a dispute, focusing our efforts on preparing for the turning point of the case, avoiding costly side skirmishes along the way, and bringing maximum pressure at the key moment—whether it is in expert discovery, a motion for summary judgment or even a trial. Our experience allows us to effectively handle disputes on an expedited basis through TROs and preliminary injunction proceedings, efficiently manage targeted discovery, and often set the stage for early disposition of disputes by summary judgment or tactical settlement.

Our patent and copyright lawyers have the experience and skills to efficiently handle all types of trademark, copyright, false advertising cases and related issues including the demonstrated ability to:

  • Develop and use consumer survey evidence for the effective litigation—through trial—of trademark and false advertising claims
  • Understand and present complex scientific evidence relating to false advertising and other claims
  • Provide informed advice regarding the substantiation of proposed advertising claims, the clearance of proposed trademarks and copyright fair use
  • Counsel on potential libel issues and the defensibility of potential and actual intellectual property claims, and
  • Devise and conduct sophisticated, aggressive and novel defenses to putative consumer fraud class actions

In the Market

Protection and enforcement of Hershey’s trademarks

We’ve been advising The Hershey Company since 2004 on a wide variety of trademark, copyright, false advertising and related matters, including protecting and enforcing many of their valuable trademarks and related properties: the HERSHEY’S, REESE’S, KISSES, and TWIZZLERS marks, the distinctive orange color mark used on REESE’S packaging, the conical product configuration and conical foil wrapping of Hershey’s KISSES chocolates, the trade dress of the CADBURY Crème Egg (for which Hershey is the US licensee) and a variety of other marks.

Most recently, we represented the client in its bid to obtain a trademark registration for the design configuration of its iconic Hershey’s chocolate bar. On an appeal from the US Patent and Trademark Office examining attorney’s refusal to register Hershey’s product configuration mark, the Trademark Trial and Appeal Board reversed the examining attorney’s decision on both contested grounds. The Board held that the overall combination of elements of the Hershey’s bar configuration is nonfunctional, and that Hershey had clearly demonstrated the trademark had acquired distinctiveness based, among other things, on the results of a consumer survey as well as evidence of sale, advertising and successful enforcement of the mark (also with the assistance of Kaye Scholer) against third party copiers.

Viagra® trademark and trade dress

We play a significant role in Pfizer’s US trademark enforcement work, including and with respect to disputes involving Pfizer’s Viagra® trademark and related blue diamond tablet trade dress, as well as other valuable Pfizer marks. Pfizer relies on Kaye Scholer to help enforce its famous Viagra® mark and other valuable marks in federal court and at the Trademark Trial and Appeal Board.

Experian trademarks

We represent Experian on a wide range of trademark protection issues involving its marks®,® and Plus Score®, including recently securing a seven-figure jury verdict against two Experian competitor companies. We obtained a complete defense verdict on counterclaims that the mark is generic and was used by Experian to violate antitrust laws. We also advise and represent Experian in protecting its other intellectual property, including its wildly popular and “band” television commercials.

“First Sale” doctrine prevails in copyright suit

We are representing large independent record distributor Central South Distribution, Inc. in a copyright infringement and breach of contract dispute arising out of its distribution of American Idol runner-up Adam Lambert’s CD, Take One. A key defense to the copyright infringement claim is the relatively rarely litigated “first sale” doctrine, which states that subject to important conditions and exceptions, people who buy a legally produced copyrighted work may "sell or otherwise dispose" of the work as they see fit.

Defending Avery Dennison in a false advertising claim

We are defending Avery Dennison Corp. against a false advertising claim for use of an allegedly mis-descriptive trademark in connection with the sale of label products.

Food company files for declaratory judgment in trade infringement case

Prosecuted action for declaratory judgment of no trademark infringement for Hearthside Food Solutions, LLC, based on use of multiple trademarks acquired as part of the purchase of a food manufacturing and distribution company.