Intellectual Property Litigation
Stites & Harbison’s IPT Group has extensive experience litigating intellectual property matters before federal and state courts throughout the nation. This experience also extends to all levels of appeals, including the United States Supreme Court. Our firm's litigators aggressively protect the intellectual property assets of our clients, and defend those who have been wrongfully accused of infringing others’ intellectual property rights. The firm has handled a number of significant and well-known intellectual property disputes and has served as lead counsel in intellectual property litigation in more than 30 states. Below are examples of the firm's experience:
Patent Infringement Litigation
- Representing a manufacturer of coolant compounds in a patent infringement litigation against a competitor that resulted in a $40 million royalty payment to our client by the defendant
- Representing a patent holder in the lighting industry in a patent infringement trial that resulted in a multi-million-dollar jury verdict
- Defending a developer of financial software and systems in a patent infringement trial in the U.S. District Court for the Eastern District of Texas, which resulted in a judgment as a matter of law in favor of our client
- Defending a toner cartridge manufacturer in an action brought by one of the world's largest printer manufacturers
- Defending a supplier of accelerometers in suit brought by patent holding company against several large automotive manufacturers
- Defending a national manufacturer of athletic pads in an infringement action brought by a competitor. Litigation was heard by the U.S. Supreme Court and eventually resulted in an award of attorneys' fees to our client.
- Representing a manufacturer of nacho cheese dispensers in multiple actions against infringers of its patents
- Defending a manufacturer of cable reels in an infringement action brought by a competitor
Trademark Infringement/Unfair Competition Litigation
- Defending a local automobile service company against a national oil company's claim of infringement of the INSTANT OIL CHANGE mark
- Defending a financial company offering variable annuities under the MARQUEE mark that was accused of infringing a bank's MARQUIS mark used for mutual funds
- Defending a new pizza franchisor accused by a major national franchisor of trade dress infringement
- Representing a cabinet retailer who owned the SCHEIRICH mark in an infringement action against a homebuilder and its related cabinet company using the SCHIERICH mark with kitchen cabinets
- Defending a local, family-owned auto parts business using the ADVANCE AUTO mark in an action brought by a major regional chain using the same mark
Copyright Infringement Litigation
- Representing Microsoft Corporation in several infringement actions against companies who have loaded pirated software onto computers for resale, and against resellers distributing counterfeit software
- Representing a marketing company in several infringement actions throughout the nation against car dealerships and billboard advertisers who misappropriated a distinctive advertising campaign
- Defending a credit information agency accused of infringement by a former software provider
- Representing a dissolved partnership that created and marketed electronic data interface software
- Representing an architect who was dismissed from a project and whose plans were then misappropriated in creating the final plan for the project
- Representing an electronics training company whose advertising materials were copied by a competitor
- Representing a doctor whose scholarly work was infringed in the creation of a monograph for distribution to surgeons
Stites & Harbison Welcomes Abigail Clark
LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Abigail E. Clark to the firm’s Louisville, Ky., office.
Tech Transfer: Methods That Work, IIPCC Fall IP Experts Panel Series
Time: 12:00 p.m. - 1:00 p.m.
Join Mandy Wilson Decker in the third of this four-session webinar. Mandy will join a panel discussing tech transfer on October 6, 2020.
Protecting Your Business’s Intellectual Property
Time: 10:00 a.m. - 11:00 a.m.
WEBINAR
Intellectual Property attorney Nick Stewart leads an in-depth discussion on protecting your IP and business's assets through patents, trademarks, copyrights, and trade secrets in this online event on September 24, 2020.
Norton Children’s Hospital Foundation Appoints Mari-Elise Paul to its Board of Trustees
LOUISVILLE, Ky.—Norton Children’s Hospital Foundation recently appointed Stites & Harbison, PLLC attorney Mari-Elise Paul to its Board of Trustees. She will serve a three-year term.
Kentucky Engineering Law
Time: 8:00 a.m. - 4:00 p.m.
WEBINAR
Intellectual Property attorney Nick Stewart will present at this Webinar for Kentucky Engineering Law on August 31, 2020.
Supreme Court Rules That Generic Terms + .com May Be Capable of Federal Trademark Registration
On June 30, 2020, the Supreme Court decided United States Patent and Trademark Office v. Booking.com B.V., Case No. 19-46, 589 U.S. ____ (June 30, 2020) held, with only one dissent, that it is possible for a domain name comprised of a generic term appended by “.com” to qualify for federal trademark registration.
Lucky Brand Gets Lucky Before the Supreme Court
On Wednesday, May 14, 2020, the United States Supreme Court unanimously held that the doctrine of defense preclusion does not apply in a case between two parties when the earlier case between the parties involved different marks and different conduct occurring at different times.
Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2020 List
LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2020 “IP Stars” list. The publication recognizes the most highly regarded intellectual property attorneys in the U.S.
Chambers USA 2020 Honors 19 Stites & Harbison Attorneys
LOUISVILLE, Ky.—Chambers USA selected 19 Stites & Harbison, PLLC attorneys in Kentucky and Tennessee for inclusion in their 2020 guide.
Supreme Court Rules Proof of Willfulness Not a Precondition to Profits in Trademark Infringement Actions
On April 23, 2020, the United States Supreme Court resolved a circuit split and held that plaintiffs in Lanham Act trademark infringement cases do not need to show the defendant infringed willfully in order to recover the defendant’s profits.
Spring Cleaning for Your Intellectual Property
Time: 12:00 p.m. - 1:00 p.m.
WEBINAR
Attorneys John Scruton and Nick Stewart will discuss suggestions on how to make your business's IP portfolio even better in 2020.
More Relief for Trademark Owners from the PTO Deadlines During the Pandemic
The last Trademarkology post identified ways in which the United States Patent and Trademark Office (the “PTO”) is working to relieve brand owners from some of the burdens imposed by the current Coronavirus pandemic. Since then, the PTO has issued further means of granting relief.
Intellectual Property Offices Grant Relief to Applicants and Registrants During Coronavirus Pandemic
The United States Copyright Office (“Copyright Office”) and United States Patent and Trademark Office (“USPTO”) have taken steps to follow the CDC recommendations for slow the spread of COVID-19.
Shiver Me Timbers! States Can’t be Sued for Copyright Infringement
Ahoy, Mateys! Earlier this week, in Allen v. Cooper, Case No. 18-877, 589 U.S. ___ (Mar. 23, 2020), the United States Supreme Court held that the Copyright Remedy Clarification Act of 1990, a federal statute stripping states of their sovereign immunity from copyright infringement suits, lacked a valid constitutional basis. Thus, states cannot be sued for copyright infringement.
Coronavirus and Trademarks
As (hopefully) most of the country practices social distancing and extra conscientious hygiene techniques, somewhat less than most of the country may be curious about what this Coronavirus could possibly have to do with trademarks.
The PTO's Valentine: Rule Changes for Email Addresses and Specimens
On February 15, 2020, the PTO’s new examination guide will go into effect in accordance with new rule changes. In this post, we highlight two of the changes described in the guide that may have more of an impact on brand owners, namely, those pertaining to new email address and specimen requirements.
On Patents, Trademarks, and Descriptiveness
We have previously blogged about the intersection between patents and trademarks. In that post, we noted that if certain features are protected by a utility patent, that is strong evidence those features are functional and therefore ineligible for trade dress protection. But the content of patents can affect whether trademark protection is available in other ways as well.
Stites & Harbison Promotes Six Attorneys
LOUISVILLE, Ky.—Stites & Harbison, PLLC announced that six attorneys have been promoted within the law firm effective January 2020.
Are Attorneys' Fees Expenses?
Earlier this week, in Peter v. Nantkwest, Inc., Case No. 18-801 the Supreme Court of the United States unanimously held that the United States Patent and Trademark Office (the “PTO”) cannot recover the salaries of its legal personnel as expenses under Section 145 of the Patent Act.
Morgan Ward appointed to Landmarks and Preservation Districts Commission
LOUISVILLE, Ky.—Louisville Mayor Greg Fischer has appointed Stites & Harbison, PLLC attorney Morgan Ward to serve on Louisville Metro Government’s Historic Landmarks and Preservation Districts Commission.