Haynes and Boone
Firm overview:
Strong across contentious and non-contentious trademark matters, Haynes Boone is favoured by some of the world’s biggest brands. Attorneys in the firm’s Trademark and Advertising group collaborate frequently with colleagues from the Copyright and IP litigation departments, allowing the team to address complex trademark disputes and brand protection issues from multiple angles. Advertising specialists ensure that clients’ brand messaging aligns with legal requirements, preventing potential conflicts and enhancing compliance.
Haynes Boone brings this multidisciplinary approach to its non-contentious trademark services. As well as developing domestic and international trademark clearance and enforcement strategies, the firm ensures brand protection in the context of social media platforms, and provides holistic counselling to encompass trademark concerns in promotional messaging.
An all-rounder in brand matters, the firm handles claims of trademark infringement, unfair competition, trade dress infringement and more in forums including state and federal courts. The team has significant expertise in prosecuting and defending proceedings before the Trademark Trial and Appeal Board (TTAB) and corresponding governmental units abroad.
Team overview:
The firm’s Trademark and Advertising practice has a national footprint that spans coast-to-coast. The Dallas team is particularly strong in trademark matters.
Based between that office and New York, Tiffany Ferris chairs the Trademark and Advertising group and “deserves her place” in the rankings, says a peer. Clients go to Ferris for advice on all stages of a brand’s lifecycle, from analysing potential risks to defending promotional programmes. Her notable representations include advising a multinational telecoms company in advertising disputes, and counselling a leading technology company regarding global advertising campaigns for major international sporting events. Already a “great lawyer”, Ferris “will gain traction in the coming years”, a peer comments.
Described as “extraordinary” by a peer, Purvi Patel Albers is recognised for her insightful, top-quality work on portfolio management and trademark enforcement for Fortune 500 companies and high-growth enterprises. Albers previously served on the board of directors of the International Trademark Association, and is lauded by a peer as “an amazing lawyer, hugely commercial and sharp on detail”.
Also in Dallas, Jeffrey Becker served as chair of the Trademark Practice Group for over a decade and is a former head of the IP and Technology Transaction Section. Credited with helping to build the firm’s trademark practice, Becker is known for his expertise across the full spectrum of brand management legal issues, from trademark clearance to TTAB oppositions/cancellations.
In New York, Erin Hennessy—chair of the International Trademark Association Political Action Committee—is a renowned thought leader on trademark matters and supports clients with the multitude of branding issues facing their businesses.
Key matters:
- Dallas Cowboys: Trademark portfolio management
The team continues to act as primary trademark counsel to the Dallas Cowboy football team and its parent company, Blue Star Operations Services. Haynes Boone handles trademark prosecution and clearance, advertising review, and social media counselling, as well as brand protection through enforcement.
Over the past year, the team’s services included taking action against the USA Powerlifting national organisation for allegedly infringing on the Dallas Cowboy’s trademark rights in ‘America’s Team’, and working with the NFL in combatting third parties improperly using the team’s Blue Star logo.
Jeffrey Becker and Tiffany Ferris are the lead partners involved.
- BuzzBallz: Global IP rights protection
Haynes Boone advises BuzzBallz, which makes ready-to-drink mixed alcoholic drinks. The team protects the client’s IP rights globally, with unique opportunities and challenges presented by BuzzBallz’ name brand and product configuration.
Showcasing the team’s multidisciplinary offering, Haynes Boone uses trademark, trade dress, and patent law to holistically build protection on the company’s non-traditional products.
Highlights from the past year include David Bell overseeing the prosecution of trademarks (including a 3D trademark), trade dress and copyright applications for BuzzBallz’ brands.
Jason Bloom oversees nationwide IP litigation, including securing victories in two recent trademark infringement matters.
- Technip Energies: Creative trademark work
Haynes Boone represents multinational engineering and technology company Technip Energies, which was spun off from TechnipFMC in 2021. The companies share the ‘Technip’ mark as part of their names, which complicates trademark protection and enforcement.
Another challenge in handling the client’s trademark work is that it is on the forefront of unique types of technology, such as blue hydrogen plants and brine recycling, which are not contemplated by the international classification systems used to file trademark applications.
The team, which is led by Becker and Preston Mason, says that working on Technip’s trademark matters has required more creativity than other client work.
Clients:
BuzzBallz, Dallas Cowboys, DIRECTV Entertainment, Goosehead Insurance Agency, Hailey Paige Gitman, Mattress Firm, San Antonio Shoe, Technip Energies, TXSE Group, The Vice Wines
