Intellectual Property & Technology

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
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Press Releases

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.

by Joel T. Beres, Mandy Wilson Decker, Alexandra MacKay, Richard S. Myers Jr., David W. Nagle Jr., Marvin Petry, and B. Aaron Schulman May 06, 2020
Press Releases

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.

by Stites & Harbison, PLLC May 05, 2020
Client Alerts

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.

by John W. Scruton and Mari-Elise Paul April 29, 2020
Events

Spring Cleaning for Your Intellectual Property

Date: 4/30/20
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.

John W. Scruton and Gary N. Stewart (Nick) April 27, 2020
Trademarkology

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.

by Alexandra MacKay April 09, 2020
Trademarkology

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.

by Mari-Elise Paul March 26, 2020
Client Alerts

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.

by Alexandra MacKay and Mari-Elise Paul March 25, 2020
Trademarkology

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.

by Alexandra MacKay March 17, 2020
Trademarkology

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.

by Alexandra MacKay February 13, 2020
Trademarkology

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.

by Alexandra MacKay January 14, 2020
Press Releases

Stites & Harbison Promotes Six Attorneys

LOUISVILLE, Ky.—Stites & Harbison, PLLC announced that six attorneys have been promoted within the law firm effective January 2020.

by Stites & Harbison, PLLC January 07, 2020
Trademarkology

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.

by Alexandra MacKay December 13, 2019
Press Releases

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.

by Stites & Harbison, PLLC November 11, 2019
Events

Global Executive Forum: Future of the China Relationship for Kentucky Business

Date: 10/10/19
Time: 8:00 a.m. - 10:00 a.m.

The Olmstead, 3701 Frankfort Avenue, Louisville, KY 40207

Alexandria office intellectual property attorney Jeffery Langer will be a presenter at this event hosted by the World Trade Center Kentucky on October 10, 2019.

Stites & Harbison, PLLC October 07, 2019
Trademarkology

Levi's Keeps Tabs on YSL's Pockets

Levi Strauss & Co. and Yves Saint Laurent have reached settlement in the Northern District of California lawsuit filed by Levi’s over YSL’s use of pocket tabs on jeans.

by Mari-Elise Paul September 24, 2019
Trademarkology

Federal Circuit Court of Appeals Leaves Open the Question of Whether ITC Determinations of Trademark Issues Have Preclusive Effect

On August 14, 2019, the U.S. Court of Appeals for the Federal Circuit issued a revised opinion in Swagway, LLC v. ITC, Case No. 18-1672 (Fed. Cir. Aug. 14, 2019) that left open the possibility that decisions by the International Trade Commission (the “ITC”) could have preclusive effect in federal district court cases involving trademarks.

by Alexandra MacKay September 20, 2019
Press Releases

Nick Stewart joins Stites & Harbison's Louisville office

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Nick Stewart to its Louisville, Ky., office.

by Stites & Harbison, PLLC September 13, 2019
Trademarkology

The Trouble with THE

You may have heard by now that a certain Midwestern university that gets a lot of attention in this blog has filed an application to register the word THE as a trademark.

by John W. Scruton September 05, 2019
Trademarkology

Federal Trademark Protection for Products Containing Hemp-Derived Cannabidiol (CBD)

As more states begin legalizing marijuana, there remains substantial tension with federal law, under which marijuana is illegal.

by Summer E. Young Ph.D. August 29, 2019
Press Releases

Best Lawyers Names Six Stites & Harbison Attorneys as "Lawyer of the Year" for 2020

LOUISVILLE, Ky.—The Best Lawyers in America©, one of the oldest and most respected peer-review publications in the legal profession, has named six attorneys from Stites & Harbison, PLLC as “Lawyer of the Year” for 2020.

by Stites & Harbison, PLLC August 26, 2019