Overview

Owners of industry-leading brands look to Schiff Hardin for counsel on trademark matters. 

Our trademark team has the deep knowledge and decades of experience that allow lean staffing and fair, competitive pricing. Whether the client is an entrepreneur, a nonprofit institution, a private business, or a public company with worldwide reach, our trademark lawyers leverage experience and insight to deliver creative and efficient results.

Trademark Disputes and Litigation

Schiff Hardin has an enviable track record of preventing and resolving brand disputes through negotiated settlements and coexistence agreements, without litigation.  But where litigation is required our trademark team vigorously and successfully pursues and defends cases in court and in both U.S. and foreign trademark offices.

Trademark litigation matters have involved a wide range of marks, including nontraditional marks such as trade dress, for such clients as Warner Bros., Kraft Foods, US Foods, and Newell Rubbermaid. We have solved trademark challenges for some of the best-known names in the fashion and jewelry industries, and have also protected the rights of celebrity clients like sports superstar Michael Jordan in trademark and publicity rights matters.

Trademark Management, Prosecution and Brand Strategy

Schiff Hardin trademark lawyers are active advisors. We manage domestic and worldwide brand portfolios for more than 100 clients, providing creative and cost-effective solutions in all phases of brand development, clearance, and registration. The team utilizes its experience in trademark litigation and transactions to help clients build and strategically position strong brands.

Trademark Transactions

Our trademark group routinely handles transactions involving key brands, working directly with our corporate attorneys from the diligence phase to the negotiation of asset purchase and other agreements. The trademark team also handles complex licensing matters for many of our brand-owner clients and for clients who use marks under license.

This includes overseeing the brand licensing program of Dorel Juvenile Group and negotiating domestic and international licensing agreements for its Safety1st brand across a wide range of products and licensees. We also recently represented Kraft Foods in connection with its licensing and distribution agreement with Keurig Green Mountain, Inc., under which Kraft Foods’ coffee brands are sold in licensed portion pack formats compatible with Keurig® commercial brewing systems. 

  • Experience

    Our team’s illustrative trademark litigation matters include:

    • Jordan v. Dominick’s Finer Foods LLC and Jordan v. Jewel Food Stores, Inc. and Supervalu Inc. (N.D. Ill. 2014). We currently represent Michael Jordan in two cases involving unauthorized uses of his right of publicity and trademarks. In one of the cases, we obtained summary judgment on the publicity rights claim, and the matter is proceeding toward trial on damages. In the other case, the Seventh Circuit Court of Appeals ruled in Jordan’s favor on whether the defendants’ actions were actionable commercial speech.
    • Warner Bros. Entertainment Inc. v. Dave Grossman Creations, Inc. (E.D. Mo. 2014) We currently represent Warner Bros. Entertainment, Inc. in litigation involving the unauthorized use, in novelty products, of images from the movies The Wizard of Oz and Gone With The Wind and the Tom & Jerry cartoons. We won summary judgment on the trademark and copyright claims, and the court has awarded injunctive relief and damages to Warner Bros.
    • US Foods, Inc. v. Scripps Networks Interactive, Inc. (N.D. Ill. 2013).   We represented US Foods in an action to prevent the defendant from using the Food Fanatics® trademark in the title of a television show. After we filed and argued a motion for a temporary restraining order, the case settled with the defendant agreeing to rename the show.
    • Saputo Cheese USA Inc. v. Kraft Foods Group, Inc. (N.D. Ill. 2013).  We defended Kraft Foods against claims that its use of “Toppers” with its Velveeta® products violated trademark rights claimed by the plaintiff. The case was resolved through settlement.
    • U.S. Foodservice, Inc., v. M.V. Trading, Inc. (N.D. Cal. 2011).  We successfully prosecuted trademark infringement and unfair competition claims against a California company that was using our client's trademarks without authorization to advertise and sell its own products online. The case was favorably resolved through a consent judgment granting a permanent injunction.
    • Kraft Foods Global Brands, LLC v. Interamerican Foods Corporation (N.D. Ill. 2010). Kraft Foods asserted claims for trade dress infringement and dilution arising from the defendant’s distribution of cookie products with packaging similar to the well-known packaging of Kraft Foods’ Chips Ahoy!® products. The case was resolved through a favorable settlement.
    • Sharpie Marker Litigation (International Trade Commission 2005). The U.S. International Trade Commission issued a general exclusion order on behalf of our client Sanford L.P., barring the import of markers with trade dress confusingly similar to that of well-known Sharpie® markers.