Advocating for Brands

Our clients are often defined by their brand names, and we take aggressive action when those brands are misused in the marketplace. We represent the owners of famous marks such as HARVARD, BOSTON DUCK TOURS, KEN’S STEAK HOUSE, and US TRUST. Our trademark enforcement activities have included:

First Act Inc. v Brook Mays Music Company, Inc.

United States District Court for the District of Massachusetts

Sunstein won a $20.7 million jury verdict for First Act in this suit for false advertising in violation of the Lanham Act, commercial disparagement and interference with contractual relations. During the five-week trial, we presented extensive expert witness testimony including in-courtroom demonstrations as proof that defendant’s statements about our client’s musical instruments were false.

The global aspects of the parties’ manufacture and product distribution necessitated discovery throughout the United States and in China and Hong Kong. Because of the harm being caused to our client on an ongoing basis, we obtained expedited discovery and a preliminary injunction against the defendant.

The case is of general interest because we established jurisdiction in Massachusetts over the Texas-based defendant by proving (among other facts) the defendant’s contact with Massachusetts through email messages sent to residents of the forum state.

Shelby v Factory Five Racing, Inc.

United States District Court for the District of Massachusetts

For our client, racing legend Carroll Shelby, we obtained a consent judgment and comprehensive injunction against Factory Five Racing, Inc. on the first day of trial. Factory Five was the largest maker of “replicas” of Shelby’s famous COBRA® race cars of the 1960s.

In the lawsuit, Shelby claimed that the replicas are counterfeits of the Shelby-designed COBRAs and that Factory Five’s use of the famous COBRA, 427 S/C, and DAYTONA COUPE trademarks violated the Lanham Act and the Federal Trademark Dilution Act. Factory Five has been barred from selling cars or chassis for cars that make any use of the trademarks.

Factory Five is also required to make specific disclaimers and to inform customers at the time of sale that it is not authorized to use Shelby or Ford trademarks on Factory Five products.

i2 Technologies, Inc. v. Rhythms NetConnections, Inc.

United States District Court for the Northern District of Texas

We successfully defended Rhythms NetConnections, a national telecommunications company, and preserved its multi-million dollar marketing campaign against allegations of trademark infringement and trademark dilution. The case turned on expert analysis contrasting the market for high-end enterprise software with the market for DSL connectivity, and presented allegations of reverse confusion and trademark dilution based on “niche fame.”

Our attorneys worked closely with experts specializing in consumer surveys, the economics of the Internet, and market analysis in the fields of enterprise software and telecommunications.

Read more about our experience in patent litigation.