Intellectual Property Litigation

Gray Plant Mooty’s Intellectual Property Litigation team has expertise in a wide range of complex intellectual property issues. The team approaches IP litigation with a creative eye, focusing on efficient and effective ways of meeting clients’ needs. The strong reputation of GPM’s IP litigation attorneys gives clients a solid negotiating position throughout the entire litigation process—and whether a victory for the client means going to trial or negotiating an advantageous agreement, the team finds cost-effective solutions to resolve disputes and secure their clients’ business interests.

Gray Plant Mooty’s intellectual property litigators have ample experience in:

Trademark Litigation

The Trademark Litigation team is dedicated to protecting clients’ trademarks and minimizing the risk of infringement. The team has litigated trademark claims in federal and state courts across the U.S., as well as before the USPTO and the Trademark Trial and Appeals Board in opposition and cancellation proceedings. Whether the client is a small business or a Fortune 500 company, the trademark litigation team aims to win in a cost-effective manner.

Gray Plant Mooty’s Trademark Litigation team has experience in areas including:

  • Trademark and trade dress litigation
  • Deceptive trade practice litigation
  • False advertising litigation
  • Unfair competition litigation
  • Rights of publicity and defamation litigation
  • Trademark Trial and Appeal Board proceedings
  • Uniform Domain Name Dispute proceedings national and internationally 

Trade Secret Litigation

Gray Plant Mooty’s Trade Secret Litigation team is made up of both intellectual property and employment law attorneys, allowing them to speak to the many intersecting issues that arise from trade secret disputes. With access to this cross-disciplinary expertise, backed up by experienced and respected trial attorneys, GPM’s trade secret litigators ensure a comprehensive approach to protecting their clients’ competitive advantage.

Patent Litigation

Gray Plant Mooty’s Patent Litigation team has represented patent-holders and accused infringers across the United States. The team has litigated patents spanning a number of different industries and business sectors, and clients trust GPM patent litigators to navigate the complex legal and technical questions that can arise from patent disputes.

The Gray Plant Mooty Copyright Litigation team has represented clients in copyright litigation relating to both traditional works and new technologies. The team works zealously to enforce its clients’ copyrights, while also advising on strategies to minimize the risk of infringement. The team’s reputation in the courtroom gives it significant leverage to resolve copyright disputes before a case goes to trial, and the team’s extensive litigation experience ensures that clients are well positioned to prevail if and when a trial cannot be avoided.

Experience

Representative Matters

Trademark Litigation

  • HealthPartners v. Wal-Mart and Sam’s Club, Civ. No. 16-cv-02970 (represented health care provider and health insurance company in declaratory judgment action against world’s largest retailer seeking declaration that logo marks do not infringe trademarks; case successfully resolved prior to trial, and client continues to use its mark)
  • Mitzi International Handbags & Accessories, Ltd. v. Alliance Sales and Distribution, Inc., Case No. 2:11-CV-02875-CCC-JAD (D. N.J. 2017)(unpublished) (successfully defended Canadian company accused of trademark infringement; upon our contested motion, magistrate judge recommended dismissal for lack of jurisdiction; complaint dismissed with prejudice by plaintiff.)
  • ERBE Elektromedizin GmbH, et al v. Genii, Inc., Case File No. 13-CV-03190 (JNE/SER) (D. Minn. Filed Nov. 20, 2013) (successfully defended medical device maker, Genii, in dispute with trademark owner over alleged use mark in use on a surgical generator. The case was settled on favorable terms.)
  • KLN Enterprises, Inc., and Nut Heads Chocolate Factory, Inc., v. Ferrara Pan Candy Co., Inc., Case No. 0:12-cv-00365 (D. Minn. Filed Feb. 10, 2012) (successfully represented KLN and Nut Heads in opposition proceedings before the TTAB and brought a Declaratory Judgment action in federal court to protect the clients’ rights. The matters settled on favorable terms.)
  • American Dairy Queen Corp. v. McMurray, No. 11-00859-CV-W-GAF (W.D. Mo. 2011) (successfully represented franchisor in obtaining restraining order and preliminary injunction based on trademark law against franchisee whose restaurant was poorly maintained in violation of company standards.)
  • Southern Grouts & Mortars, Inc. v. 3M Company, 575 F.3d 1235 (11th Cir. 2009) (affirmed summary judgment granted in client’s favor in domain name dispute involving trademark infringement and cybersquatting claims.)
  • Saul Zaentz Co. v. Wozniak Travel, Inc., 627 F. Supp. 2d 1096 (N.D. Cal. 2008) (granted summary judgment in client’s favor, dismissing trademark infringement claims by producer of Lord of the Rings films, where client had used its mark HOBBITT TRAVEL for three decades.)
  • Clam Corp., Inc. v. Innovative Outdoor Solutions, Inc., 2008 WL 5244845, 89 U.S.P.Q.2d 1314 (D. Minn. 2008) (successfully represented client in opposing trade dress infringement claim based on the plaintiff’s registration of a color blue for ice fishing shelters.)
  • American Dairy Queen Corp. v. New Line Productions, Inc., 35 F. Supp. 2d 727 (D. Minn. 1998) (successfully obtained preliminary injunction in order to keep defendant from using “Dairy Queens” as a motion picture title; film ultimately released under the title Drop Dead Gorgeous.)

Trade Secret Litigation

  • Nu-Look Exteriors, Inc. v. 4-Corner Architectural Sheet Metal, Inc., No. 19HA-cv-15-432 (Dakota County, Minn. Dist. Ct. 2015) (obtained complete defense verdict—no liability—in jury trial for misappropriation of trade secret and confidential information case).
  • Higher Dimension Materials, Inc. v. Performance Fabrics, Inc., No. o:15-cv-00194 (D. Minn. 2015) (successfully obtained permanent injunction via arbitration, preventing the manufacture of material infringing upon client’s proprietary stain-resistant fabric).
  • Warp Speed Torque Drive, LLC v. M.A.C., Inc., Case No. 3:13-cv-00045 (D.N.D. 2014) (successfully represented client in a multi-claim suit against client, a flameless heater manufacturer and one of its suppliers, for patent infringement and trade secret misappropriation).
  • Relco, LLC v. Custom Fabricating & Repair, No. 19HA-cv-13-4809 (Dakota County, Minn. Dist. Ct. 2013) (obtained $22.7 million jury verdict in misappropriation of trade secret and confidential information case).
  • Brookins Hybrid Drive Sys. v. M.A.C., Inc., Case No. 3:12-cv-101 (D.N.D. 2013) (successfully acted to get claims for patent infringement and trade secret misappropriation against client, a flameless heater manufacturer and one of its suppliers, dismissed).
  • Analog Tech. Corp.v. Dimation, Inc. et al., No. 19-C1-07-007480 (Dakota County Dist. Ct, Minn. 2009) (obtained judgment for over $1.5 million dollars for client in trade secret misappropriation action).

Patent Litigation

  • Concaten, Inc. v. AmeriTrak Fleet Solutions, 131 F. Supp. 3d 1166 (D. Colo. 2015), aff’d, 669 Fed. Appx. 571 (Fed. Cir. Oct. 11, 2016) (Mem.), cert denied,  --- S. Ct. ----, 2017 WL 1001313 (U.S. Apr. 17, 2017) (No. 16-1109) (Obtained a Judgment on the Pleadings invalidating all five asserted patents as directed to ineligible subject matter.)
  • Beavertail Products, LLC, et al. v. YETI Coolers, LLC, Civil Action No.: 15-cv-1181 (D. Minn. filed Mar. 5, 2015); YETI Coolers, LLC v. Beavertail Products, LLC, et al. Civil Action  No.: 15-cv-3267 (W.D. Tex. filed May 15, 2015) (successfully defended outdoor equipment manufacturer against claims of design patent infringement, utility patent infringement, and trade dress infringement.)
  • Traffic Information, LLC v. Smoothie King Co., Inc., Civil Action No. 2-14-cv-717 (E.D. Tex. filed Jun. 25, 2014) (defended Smoothie King in a patent litigation brought by a non-practicing entity; case resolved early on favorable terms.)
  • Warp Speed Torque Drive, LLC v. M.A.C., Inc. et al., Case No. 3:13-cv-00045 (D.N.D. filed Jun. 26, 2013) (successfully represented client in a multi-claim suit against client, a flameless heater manufacturer and one of its suppliers, for patent infringement and trade secret misappropriation).
  • Brookins Hybrid Drive Sys. v. M.A.C., Inc., Case No. 3:12-cv-101, 2013 U.S. Dist. LEXIS 65419 (D.N.D. May 2, 2013) (successfully acted to get claims for patent infringement and trade secret misappropriation against client, a flameless heater manufacturer and one of its suppliers, dismissed).
  • Schlagel, Inc. v. S-M Enterprises, Inc., Civ. No. 13-cv-00446 (D. Minn. filed Feb. 25, 2013) (represented Schlagel in enforcing one of its patents related to grain handling equipment against Schlagel’s competitor, S-M Enterprises; following initial discovery, the case resolved on favorable terms in July of 2013; S-M Enterprises also redesigned its grain handling equipment.)
  • Birchwood Laboratories v. Battenfeld Technologies, Nos. 09-cv-3555 (MJD/JJK), 11-cv-883 (MJD/JJK) (D. Minn. 2012) (represented sporting goods manufacturer in declaratory judgment action to invalidate patent, and defending patent infringement claims, and in defending parallel patent false marking case; successfully resolved before trial.)

Copyright Litigation‚Äč

  • Energy Intelligence Group, Inc. v.  CHS McPherson Refinery, Inc., No. 6:16-cv-01015 (D. Kan. 2018) (served as lead counsel for defense of the Refinery in copyright infringement case through four-day jury trial; jury found in favor of statute of limitations defense and awarded plaintiff only two percent of amount requested; court denied plaintiff’s motion for attorneys’ fees as prevailing party, 2019 WL 367788)
  • BWP Media USA Inc. v. Leighton Enters., Inc., No. 3:13-cv-00620 (W.D. Wisc. dismissed Feb. 6, 2014) (resolved copyright infringement disputes regarding posting of photographs on commercial website)
  • Lucky Break v. Sterling et. al. (Civil Action No. 10-cv-4394-PAM (D. Minn.)) (defense of copyright claim on behalf of production company involved with production of a television ad)
  • Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958 (8th Cir. 2005) (affirming copyright infringement verdict regarding greeting card designs in client’s favor)

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