Dreitler and True have an excellent
track
record of trademark
case
success.
Dreitler and True have extensive experience in trademark, trade
dress,
unfair
competition, copyright and domain name litigation in the federal courts
and before the Trademark Trial and Appeal Board (“TTAB”). Dreitler and
True successfully defended Joel Hyatt and Al Gore against efforts to
enjoin
the launch of their cable channel, Current TV. Current Communications Group LLC v.
Current Media LLC, 76 USPQ2d 1686 (DC SD Ohio 2005), and
obtained a Temporary Restraining Order (TRO) and product recall order
in U.S. District Court on
behalf of Elizabeth Arden, ordering that a knock-off of "curious"
Britney Spears perfume be recalled from store shelves. They represented
Tiffany, Burberry, Kate Spade and Gucci in a
civil action for counterfeiting in U.S. District Court, Columbus,
Ohio.
They represented Coors Brewing Company against a trademark and
unfair
competition lawsuit brought by the NCAA in Indianapolis, Indiana, and
Clear Channel Communications in a trademark and unfair competition suit
in the U.S. District Court, Los Angeles. They obtained a judgment on
behalf of Dell Inc. against infamous cyberpirate John Zuccarini and
permanent injunctions on behalf of Dell Inc. and Nationwide Insurance
Company in trademark infringement cases in U.S. District Court,
Columbus and Chicago. Dreitler and True brought suit on
behalf of Online Computer Library Center against the
Library Hotel in U.S. District Court, Columbus, Ohio; and successfully
defended Kmart and Joe Boxer in a trademark infringement suit; Target
Corporation in a trade dress/copyright infringement case; and Quantum
Corporation in a copyright infringement suit, all in U.S. District
Court S.D. OH.
They have obtained favorable judgments in TTAB Oppositions on
behalf
of Georgia-Pacific Corporation, Cardinal Health, Wendy's International,
Inc., The Ohio State University, the Scotts Company, Starter, Inc. and
a recent Motion for Summary Judgment on behalf of George Speer. They
are
currently representing Cardinal Health, Harry Winston jewelers,
Elizabeth Arden, Inc. and others in TTAB
proceedings.
Dreitler and True have numerous favorable Uniform Domain
Name Dispute Resolution
Policy (UDRP) proceedings on behalf of Dell Inc., Dell Computer
Corporation (see below).
They obtained an Order in June 2000 from U.S. District Court S.D.
OH.
under the
Anti-Cybersquatting Consumer Protection Act (ACPA), ordering a
cyber-squatter
to turn over the domain name "StanleySteemer.cc".
In July 2000 they obtained a consent judgment and permanent
injunction
in U.S. District Court against a cyber-pirate of the domain
"voryssaterseymourandpease.com".
In December 1999 Dreitler's team obtained a temporary restraining
order (TRO) in
U.S. District
Court against a pornographic web-site that was using trademarks of The
Ohio State University. The case ended with the entry of a permanent
injunction
against the web-site operators.
In September 1999, Dreitler filed suit in Federal court on behalf of
Wendy's International, Inc. against a cyberpirate who had registered
variations
of Wendy's trademarks, including Wendys.org. The case was successfully
decided for Wendy's when the cyberpirate agreed to turn over all the
domain
names to Wendy's, and accepted a permanent injunction banning him from
ever again registering any variation of Wendy's trademarks as a domain
name.
Dreitler represented The Ohio State University in a case in August
1999
against a photographer who had taken pictures of female Ohio State
students
for a "pin-up" calendar. The young women were wearing clothing or posed
with items that suggested a connection or affiliation with Ohio State.
Dreitler was successful in persuading a judge in U.S. District Court to
grant an ex-parte Temporary Restraining Order (TRO), that barred the
distribution
of the calendars. The order was subsequently turned into a permanent
injunction,
banning distribution of the calendars and requiring them to be
destroyed.
In July 1999, Joe and his team represented a small Atlanta
businessman named
Rothschild who had been sued in U.S. District Court in Dayton, Ohio by
a larger Ohio company. The suit claimed that the mere fact the Atlanta
business had an interactive web site was sufficient grounds to allow
him
to be sued in an Ohio Federal court. Dreitler argued that mere internet
presence was not sufficient to provide "personal jurisdiction", and the
chief judge of the Southern District of Ohio agreed. The case was
transferred
to Atlanta. Rothschild Berry Farm v.
Serendipity Group LLC, 84 F. Supp.
2d 904 (S.D. Oh 1999).
Dreitler represented The Ohio State University in its case against
Ohio
University
regarding the issue of whether the term "Ohio" was a trademark that
could
be owned exclusively by Ohio University. The universities settled the
case
on amicable terms in June 1999.
Before going into private law practice, he was Associate General
Counsel
at Anheuser-Busch Companies, Inc., in St. Louis, Missouri. While at
Anheuser-Busch,
he conducted the world's longest running trademark litigation - the 90
year old dispute over ownership of the Budweiser trademark- between
Anheuser-Busch
and the Budweiser Budvar Brewery in the Czech Republic. In addition to
managing litigation in more than 25 countries, he conducted settlement
negotiations with the Czech government. He was also responsible for
international
intellectual property matters, including acquisitions, joint ventures,
licensed brewing agreements in numerous countries, trademark
development, clearance,
registration
and protection, including counterfeiting. He also drafted and
negotiated trademark and copyright licenses, including sponsorship of
the 1996 Atlanta Olympics and the Busch NASCAR racing series.
Prior to that, he worked at The Procter & Gamble
Company's
Trademark and Copyright Department in Cincinnati, Ohio. During nine
years
at P&G, he worked on U.S. and international trademark, copyright
and unfair competition matters in all product areas, including soap,
paper,
health care, cosmetics, pharmaceuticals, and food and beverages. His
responsibilities included both U.S. and international trademark
clearance and registration, false advertising and unfair competition,
copyright, and licensing matters in all product areas. In addition, he
was responsible for trademark and copyright aspects on all acquisition,
mergers and divestitures of P&G. He
performed
due diligence and drafted the trademark and copyright agreements on
acquisitions,
mergers and divestitures.
He worked closely with Brand Management on global new product
development,
and all aspects of trademark searching, clearance and registration,
including the
writing
of legal opinions and trademark application prosecution. He conducted
oppositions
and cancellations in the U.S. Patent & Trademark Office.
He began his career as trademark, copyright, advertising and
licensing attorney
for U.S. Shoe Corp. in Cincinnati.
Cases
we have handled
Allard Enterprises, Inc. v. Advanced
Programming Resources, 146 F.3d 350 (6th Cir. 1998) (Joe
was qualified as and testified as an expert witness on trademark law
for Allard).
Baughman Tile Company, Inc. v.
Plastic Tubing, Inc. and Plastic Tubing, Inc. of Florida,
CV-21-BO (E.D. NC). Joe and Mary represented Baughman
on its appeal.
Blacco Splicing and Rigging Loft,
Inc. v. Wallingford's, Inc., C.V 2:04-275 (S.D. Ohio
2004). Successfully sued to stop use of trademarked color blue on
competitive product.
In The Matter of an application by Anheuser-Busch
Companies, Inc. v. Budejovicky Budvar Narodni Podnik - The
National Office of Industrial Property (NOIP) - Vietnam. Joe
represented Anheuser-Busch, Inc. and argued its action to cancel the
Czech brewer, Budweiser Budvar’s trademark registration of Budweiser in
Vietnam before the NOIP, Hanoi. Registration ultimately canceled.
Broadcast Music, Inc. v. The United
States Shoe Corporation et al., 217 USPQ 224 (CA 9 1982). Joe
represented defendant U.S. Shoe Corporation in connection with the
first
case interpreting Section 110(5) exemption of the 1976 Copyright Act
with respect to “public performances”.
Crush International Inc. v. Red Bell,
Inc., So Dist of Florida 89-0112 (1989). Joe sued on
behalf of Orange Crush and obtained consent judgment and permanent
injunction against Red Bell's use of Orange Krush for degreaser.
Grange Guardian Insurance Company v.
The Guardian Life Insurance Company of America, (S. D.
Ohio 1999). Joe represented Grange Guardian in its Complaint
for Declaratory Judgment for use of “Guardian” on insurance. Case
settled.
Nationwide Mutual Insurance Co., et
al. v. Nationwide Insurance Group, Inc. et al. C2-01-785
U.S.D.C. (S.D. Ohio 2001). Filed suit on behalf of client, Nationwide
Mutual Insurance Company for trademark infringement over use of Team
Nationwide as a trademark for insurance and related services. Case
settled.
Netset Internet Services, Inc. v.
NetSetGo Inc., Case No. C2 01 0036, U.S.D.C. (S.D. Ohio 2001).
Joe and Mary Defended NetSetGo in a trademark infringement suit
in federal court regarding use of the trademark “NETSET” for internet
services. Case dismissed and NetSetGo, Inc. entitled to continue
use of trademark.
The Ohio State University v. Does 1
through 500 inclusive, (Common Pleas Court of Franklin County,
Ohio). Joe obtained ex parte Seizure Order in Franklin
County Common Pleas Court to permit Ohio State University to seize
counterfeit products during football season.
The Ohio State University And Reading
Recovery Council of North America v. Frank Martini, Case
No. C2-00-963, U.S.D.C. (S.D. Ohio 2000). Joe brought
suit on behalf of clients Reading Recovery Inc. and The Ohio State
University against Frank Martini for a web site that used reading
recovery trademark and offered products and services that were
compatible with client's services. Case settled with Defendant
changing name and agreeing not to use any similar domain name or
trademarks.
The Procter & Gamble Company v.
Revlon, Inc., U.S.D.C. SD NY 89-5112. Joe sued Revlon on
behalf of P & G to enjoin use of "Ivory Coast" for hair
shampoo. Case settled with Revlon agreeing to cease use of trademark.
Rubber-Seal Products A Division of
Teknol, Inc. v. Norman John Wallage and Ormantine U.S.A. Ltd., Inc.; C-3-03-104,
U.S.D.C. (S.D. Ohio) (2003). Joe obtained dismissal of trade
dress case on behalf of client Wallage.
Too, Inc., Too Brands Investments,
LLC, And Limco, Inc. v. American Marketing Enterprises, Inc., Kohl’s
Department Stores, Inc. and Target Corporation, Civil Action No.
C2 03 046, U.S.D.C. (S.D. Ohio 2001). Defended Kohl's and Target
Corporation in a trade dress/copyright infringement case in U.S.
District Court, Columbus. Case settled.
Selected
Trademark Trial and Appeal Board (TTAB) Cases
Big M. Inc. v. The United States Shoe
Corporation, 228 USPQ 614 (TTAB 1985). Joe represented
defendant U.S. Shoe Corporation, Concurrent Use Proceeding No. 556,
between Big M. Inc. and The United States Shoe Corporation. Big M
registrations refused.
Elekta Instrument AB v. Electa Health
Network, LLC, Opposition No. 91124898 (TTAB 2002). Represented
Elekta AB in trademark opposition which resulted in Applicant
withdrawing their application and agreeing not to use the mark.
Georgia-Pacific Corporation and Fort
James Operating Company v. Alwin Manufacturing Co., Inc.,
Opposition No.: 91125453 (TTAB 2002). Obtained judgment in a TTAB
Opposition on behalf of Georgia-Pacific Corporation over alleged
functional trade dress.
The Ohio State University v. Ohio
University, 51 USPQ. 1289 (TTAB 1999). Represented The Ohio
State University in its combined Opposition and Cancellation with Ohio
University before the Trademark Trial and Appeal Board, and negotiated
its settlement over shared rights to the trademark “Ohio”.
Pelikan Vertriebsgesellschaft mbH
& Co. KG v. Capitol Broadcasting Company, Inc., Opposition
No.:115,776 (TTAB 1999).
Successfully represented Pelikan Pen Company against efforts by Capitol
Broadcasting Company, Inc. to register “Pelican” in connection with
minor league baseball services.
The Scotts Company and OMS
Investments, Inc. v. Hayes Products, LLC, Opposition No.:
91114342 (TTAB 1999). Represented Scotts and opposed attempted
registration of “PULL ‘N’ SPRAY” by Hayes as a registered trademark for
a dispenser for fertilizers. Case settled.
Underberg A.G. v. Bundaberg
Distilling Company Pty Limited, Opposition No. 91112081 (TTAB
1998). Represented German beverage company Underberg in Opposition
against registration of Bundaberg for beverages. Case settled.
Cardinal Health 301, Inc. v. Pyxis
Genomics, Inc. f/k/a Anigenics, Inc., Opposition No. 91155874
(TTAB
2002). Brought Opposition on behalf of Cardinal Health 301, Inc.
against application to register “Pyxis Genomics” by Pyxis Genomics,
Inc. Case settled.
Markdel, Inc. v. Wendy M. Craig,
Opposition No. 123,740 (TTAB 1999). Obtained Judgment on behalf of
Wendy’s International, Inc. restaurants against application by Wendy
M. Craig to register “Wendy Made” for clothing.
Official Starter LLC. v. The Wisdom
Company, Inc. Opposition No.: 120,244 (TTAB 2000).
Represented Starter clothing
trademark against attempted registration of similar “S and star design”
for clothing. Case settled.
OMS Investments, Inc. and The Scotts
Company v. Pursell Industries, Inc. Opposition No.:
116,788 (TTAB 2000). Successfully
opposed Pursell Industries’ efforts to register “Better Lawns” for
fertilizers on the grounds that the mark was merely descriptive on
behalf of Scotts.
Nash-Finch Company v. Mettler-Toledo,
Inc., Opposition No. 91150271 (TTAB 2001). Defended
Mettler-Toledo, Inc. in Opposition action against application to
register “Express Check”. Case settled.
The Procter & Gamble Company v.
Lever Brothers Company, (TTAB 1986). Joe represented P&G and
obtained judgment refusing registration of Secure for deodorant against
client's Sure trademark.
The Procter & Gamble Company v.
Block Drug Company,
(TTAB 1985). Represented P&G and obtained refusala of
registration of Perx for toothpaste against client's Pert trademark.
U.S. Playing Card Company v. King
Card Spielkarten Und Accessoires GMBH, Opposition No. 113,211
(TTAB 1997). Joe represented U.S. Playing Card against
application to register Blackjack Royale for playing cards. Judgment
entered for client.
Harry Winston, Inc. and Harry Winston
Ultimate Timepiece S.A. v. Bruce Winston Gem Corp. Opposition
No. 91153147 (TTAB 2003). Represents Harry Winston, Inc. in opposition
to registration of “Bruce Winston” for jewelry.
Selected
Domain
Name - UDRP Cases
BWT Brands,
Inc. v.
Domains By Proxy, Inc. (kool.com); WIPO Case No. D2005-0105 -
domain
ordered transferred to RJ Reynolds
Dell
Computer
Corporation v. Parmi Phull; WIPO Case No. D2001-0285 - domain
ordered
transferred
Dell
Computer
Corporation v. Logo Excellence; WIPO Case No. D2001-0361 - domain
ordered
transferred
Dell
Computer
Corporation v. Clinical Evaluations; WIPO Case No. D2001-0423 -
domain
ordered transferred
Dell
Computer
Corporation v. Michael Bartlett; WIPO Case No. D2001-1334 - domain
ordered
transferred
Dell
Computer
Corporation v. MTO C.A.
and Diabetes Education Long Life; WIPO Case No. D2002-0363 - domain
ordered
transferred
Dell
Computer
Corporation v. 1st Easy Limited and Stephen Bell; WIPO Case No.
D2002-0422
- domain ordered transferred
Dell
Computer
Corporation v. Clinical Evaluations; WIPO Case No. D2002-0423 -
domain
ordered transferred
Dell
Computer
Corporation v. RaveClub Berlin;
WIPO Case No. D2002-0601 - domain ordered transferred
Dell
Computer
Corporation v. International Aggregate; WIPO Case No. D2002-1028 -
domain
ordered transferred
Dell
Computer
Corporation v. High Traffic Domains Inc., WIPO Case No. D2003-0282
- domain
ordered transferred
Dell Inc. v.
Asia
Ventures, Inc.; WIPO Case No. D2003-0853 - domain ordered
transferred
Dell Inc. v.
delldomains.com; WIPO Case No. D2003-0854 - domain ordered
transferred
Dell Inc. v.
Asia
Ventures, Inc.; WIPO Case No. D2004-0452 - domain ordered
transferred
Dell Inc. v.
None
(Mohammad Qurash, dellcomputersclone.com); WIPO Case No. D2004-0511
-
domain ordered transferred
Dell Inc. v.
George
Dell and Dell Net Solutions; WIPO Case No. D2004-0512 - domain
ordered
transferred
Dell Inc. v.
Pateh
Mbowe; WIPO Case No. D2004-0689 - domain ordered transferred
Dell Inc. v.
Horoshiy,
Inc; WIPO Case No. D2004-0721 - domain ordered transferred
Dell Inc. v.
Intercardnetwork / Jonathan Jairo Aguirre Huertas; WIPO Case No.
D2004-0788
- domain ordered transferred
Dell Inc. v.
Expired
Trafic (K Johar); WIPO Case No. D2004-0790 - domain ordered
transferred
Dell Inc. v.
Esprit7258; WIPO Case No. D2004-1026 - domain ordered transferred
FD
Management, Inc. v.
Teddie Kossof; WIPO Case No. D2004-0231 - Reddoor.com domain
transferred to
client Elizabeth Arden
GMB Inc. v. Caribbean Online International Ltd.
WIPO Case No.
D2007-1159 – Camelwides.com transferred to client R. J. Reynolds
Tobacco
company
KarstadtQuelle
AG v.
Tim Warren; WIPO Case No. D2003-0178 - domain ordered transferred
Nationwide Mutual Insurance Company v. DotaCom Corporation WIPO Case No. D2007-0157 – domain
ordered transferred to client Nationwide Insurance
Nationwide
Mutual
Insurance Company v. Domain Administration
Limited WIPO Case No.
D2006-1490 – domain ordered
transferred
Nationwide
Realty
Investors, Ltd. v. Chip Regis
WIPO Case No. D2006-1014 – domain
arenadistrict.com domain ordered transferred to client
The
Elizabeth Taylor
Cosmetics Company v. NOLDC, Inc. WIPO Case
No. D2006-0800 – domain ordered transferred to client Elizabeth Taylor
|