Negotiating Licensing Strategies
Representing Serta, the Quarles & Brady trademark team helped create and develop the Vera Wang and Trump mattress brands by negotiating licenses for the fashion designer’s and real estate tycoon’s names and trademarks. The brands helped launch Serta’s return to key high-end retailers, one of their targeted markets. We continue to work with Serta and Trump to help grow and enhance the brands, to position them in the marketplace, and to police advertising of the brands by Serta retailers. Serta’s licensing strategy has helped propel the company to number-one mattress manufacturer in America.
Leveraging Brand Strength
On behalf of a leading hardware manufacturer, the Quarles & Brady trademark team negotiated an exclusive sales agreement with a major big box retailer. The deal leveraged our client’s significant brand strength in its product category into numerous brand extensions that multiplied its business at a time when the rest of its industry struggled.
Positioning Clients for Success
For a major food manufacturer, the Quarles & Brady trademark team helped to promote their C-Store and retail brands through successful sweepstakes, contests, and loyalty programs, and have worked with this client to structure a wide range of other coupons, rebates, and promotional offers.
Trademark Victory on Appeal – Kos Pharmaceuticals v. Andrx Corp., 369 F.3d 700 (3d Cir. 2004)
Representing Kos Pharmaceuticals, a publicly traded drug company, Rick successfully enforced Kos's well-known trademark ADVICOR against infringement by Andrx's ALTOCOR mark. Rick won a landmark victory on appeal, with the U.S. Court of Appeals directing the trial court to issue a preliminary injunction on an expedited basis. Andrx was forced to settle, to change the name of its drug, and to pay Kos $6 million.
Injunction Against Trademark Infringement – Centiv Inc. v. Incentiv Systems, Inc., 02 C 7316 (N.D. Ill.)
Representing marketing services company Centiv Inc., Rick brought a preliminary injunction action against Boston-based Incentiv Systems for trademark infringement. The case settled prior to the hearing on preliminary injunction with the defendant agreeing to change its name.
Getting a Good Grip – Estwing Manufacturing Co. v. V. Vaughan & Bushnell Manufacturing Co., 02 C 4406 (N.D. Ill.)
Rick brought an action for infringement of our client's registered blue grip trademark by Vaughan & Bushnell, a competing manufacturer of hammers. The case settled with Vaughan & Bushnell agreeing to modify its product to obliterate the offending trademark.
A Lawsuit for Sears – GNB v. Sears, 97 C 2428 (N.D. Ill.)
Representing GNB, one of the nation's largest manufacturers of automotive batteries, Rick sued Sears for infringement of GNB's well known NATIONAL trademark. The case settled very favorably to GNB.
A Win Against Trademark and Copyright Infringement – Hanley-Wood v. American Registry, 1:03 CV 00646/RMC (D.D.C.)
Rick won a temporary restraining order, permanent injunction and monetary relief for trademark and copyright infringement and unfair competition on behalf of Hanley-Wood, a publisher of trade and construction publications against vanity plaque manufacturer American Registry.
Injunction Against L.L. Bean – Horween Leather Company v. LL Bean, 92 C 1237 (N.D. Ill.)
Rick won a permanent injunction, contempt sanctions and monetary relief against L.L. Bean for trademark infringement on behalf of Chicago tanner Horween Leather Company.
To Infinity and Beyond – Nuveen Investments, Inc. v. CDC IXIS Asset Management North America, 03 C 3988 (N.D. Ill.)
In this preliminary injunction action for infringement of our client's registered infinity symbol trademark, Rick negotiated a settlement with the defendant agreeing to restrict its use of the infringing mark.
Protecting Client Against Unfair Competition – Peter Mangone, Inc. v. Jayco Ventures, 02-B-1105 (D. Colo.)
On behalf of industrial products manufacturer Peter Mangone, Inc., Rick brought a preliminary injunction action for trademark infringement, trade dress (product configuration) infringement and unfair competition. Following a hearing on the Motion for Preliminary Injunction, the case settled with the defendant agreeing to discontinue use of the distinctive features of Peter Mangone's industrial products.
Representing Serta, the leading mattress manufacturer in the United States, Rick brought an action for patent and trademark infringement against one of its biggest competitors. The action was settled when the defendant agreed to stop infringing and to pay Serta $4.25 million.
A Big Win Over Infringing Use of Trademark – The Big Ten Conference v. Gold Star Chili, C-1-94-523 (S.D. OH)
Rick won a consent judgment and monetary recovery (including attorneys fees) against fast food restaurant chain Gold Star Chili's infringing use of the BIG TEN trademark.
Infringing Madness – Illinois High School Association v. GTE Vantage, 99 F.3D 244 (7th Cir.)
Rick argued a preliminary injunction motion and Seventh Circuit Appeal in the precedent-setting MARCH MADNESS infringement action against NCAA licensee GTE Vantage.
Lake Point Tower
Rick won a temporary restraining order and permanent injunction against infringement of Lake Point Tower's CASTLES IN THE SKY trademark.
Rick won preliminary injunctions against use of the STIR CRAZY trademark by two yet-to-open restaurants in Chicago.
Voluntary Hospitals of America
Rick successfully challenged Dr. Art Ulene's "Feeling Fine" program for infringement of VHA'S "COUNTDOWN USA" trademark.
Rick won a permanent injunction on consent against infringement of Nippon Granulator's trademark and a contempt judgment for violating that injunction.
International Data Group
Rick won a Temporary Restraining Order on behalf of IDG against infringement of IDG's COMNET trademark by a competing trade show in Sweden. The action was settled based on discontinuance of use of the mark, monetary recovery, and future business relationships.
Making a Mark – Watermark Management Corporation v. Watermark Capital Management, Inc., 94-2486 (D.N.J.)
Representing a leading hedge fund, Rick brought a preliminary injunction action for infringement of the WATERMARK trademark. The action settled by entry of consent judgment and defendant's discontinuance of its use of WATERMARK.
Rick represented the manufacturer of BEANIE BABIES in numerous trademark infringement actions, including in oral argument before the Seventh Circuit Court of Appeals.
Copyright Infringement Actions
Rick has successfully litigated numerous copyright infringement actions relating to healthcare data systems, computer software, video games, motion picture properties, music, photographs, architectural drawings and mapping software. Rick has also represented a presidential candidate and national political party in the protection and enforcement of their intellectual property rights and the defense of allegations of copyright infringement.