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Trademark Counseling, Prosecution & Litigation

Contact

Callie A. Bjurstrom
Partner, San Diego
T: +1.858.847.4107
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Top-ranked by The Legal 500, U.S. News – Best Law Firms and World Trademark Review, Pillsbury’s Trademark team manages and enforces thousands of domestic and international trademarks.

Pillsbury’s Trademark Counseling, Prosecution and Litigation team provides comprehensive, personalized trademark service to large and small, emerging and established companies in the United States and abroad. Our clients come from diverse industries including the financial, retail, software, hospitality, higher education, telecommunications, food and beverage, health care, nonprofit, transportation, cosmetics and government contracts sectors. Leveraging the latest technology, we utilize an advanced docketing system to track deadlines affecting every mark we handle and provide client access to a customized online IP portfolio extranet. Our team files more than 2,600 trademark applications and obtains nearly 2,000 trademark registrations for clients annually.

Representing both trademark owners and alleged infringers, we have an impressive record of successful enforcement and defense actions before U.S. and international courts and administrative agencies, including the Trademark Trial and Appeal Board. We have litigated cases involving all types of trademarks and trade symbols, including word marks, logos, trade dress packaging and product design, and graphics, frequently with overlapping design patent, utility patent and copyright claims. Through our extensive network of handpicked, knowledgeable international agents, we have registered, optimized, asserted and defended trademarks in over 200 countries worldwide.

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Pillsbury provides clients with clear, concise and commercially practical trademark advice that meets their needs, and we resolve trademark problems promptly and cost-effectively. Our trademark-related services include:

  • Counseling
  • Prosecution
  • Clearance
  • Enforcement
  • Due Diligence
  • Customized Online IP Portfolio Extranets
  • Oppositions and Cancellations
  • Trademark and Domain Name Procurement, Monitoring and Transfers
  • Internet Issues, including UDRP Proceedings, Metatags, Keywords, Phishing, Spoofing and Cybersquatting
  • Anti-Counterfeiting
  • Infringement Defense
  • Licensing, Franchising and Merchandising

Representative Experience

  • Represented the San Diego Comic Convention in a trademark infringement and unfair competition case that gained national media coverage. A California federal jury unanimously decided in favor of the San Diego Comic Convention, ruling that the Defendants infringed all three of San Diego Comic Convention’s asserted “Comic-Con” trademarks.
  • Represented HM Electronics in a trademark infringement and unfair competition dispute with R.F. Technologies, winning a permanent injunction, a finding of contempt and obtaining court-ordered sanctions for the client.
  • Represented complainants, Hyundai Motor America and Hyundai Motor Company of Korea, in an ITC matter to stop the importation of illegal, gray-market service and repair parts using the Hyundai trademarks in which the ITC issued a Limited Exclusion Order, Cease and Desist Orders, and a Consent Order against four automotive parts dealers, including the U.S. dealer, the middleman, and the suppliers.  (Certain Replacement Automotive Service and Collision Parts and Components Thereof, No. 337-TA-1160).

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  • Advised a multinational bank in all IP matters worldwide, including patent, trademark, copyright, licensing, IP diligence, IP agreements, monetization, domain names, and handling patent and trademark litigation and opposition matters.
  • Represented a famous footwear brand in an infringement action against a major European retailer.
  • Represented a mobile app developer against a major food brand for copyright and trade dress infringement relating to mobile apps, leading to highly favorable confidential settlement.
  • Represented a leading comic book convention in a Ninth Circuit appeal on a case of first impression involving statutory interpretation of the Lanham Act (decision pending).
  • Represented an organic rum brand in oppositions in the TTAB and EU over marquis brand.
  • Represented a domain name buyer as an intervenor into an anti-cybersquatting action, leading to judgment in favor of the client.
  • Defended a space rocket manufacturer against infringement claims, leading to a favorable settlement.
  • Defeated Sony Ericsson’s request for a Preliminary Injunction seeking to prohibit Clearwire from nationwide use of its trademark in the United States.
  • Defended RetailMeNot, the world’s largest marketplace for digital offers, against allegations of trademark infringement, unfair competition and dilution.
  • Secured a preliminary injunction for Tecnimed Srl, requiring a competitor to stop infringing the trade dress of the client’s packaging and to recall the product containing the infringing packaging.

Practice Area Highlights

  • Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2023) and Texas (2022 – 2023).
  • Recognized nationally for IP Litigation, Patent Litigation, Patent Law, and Trademark Law by U.S. News – Best Lawyers (2024).
  • Ranked in California, Washington, DC and Texas as one of the top trademark practices by World Trademark Review’s “WTR 1000” and six lawyers named individually, including one lawyer receiving a national ranking for trademark prosecution (2023).

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  • Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property magazine, in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2023).
  • Managing Intellectual Property named Pillsbury “best in the West” for enforcement and litigation for the second consecutive year in the category Trademark Contentious (West) (2021 – 2022).

Resources

2024 MOST FEARED FIRMS

BTI Consulting recognizes Pillsbury as one of the most feared law firms in litigation.

Case Study

Defending Hyundai from Gray-Market Fraud

IP Courts & Entities At-a-Glance
Updates (COVID-19)

Factsheet

Customized Client Extranets for Intellectual Property

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