Attorneys > Trademark Practice Group

“Efficient, focused and technically sound,” Sunstein’s trademark group offers its clients probing analysis and comprehensive advice which takes into account both legal and commercial perspectives on brand selection and protection.

Our Trademark Thinking

  1. Trademark Infringement Remedies Just Got Snappier? United States Supreme Court Says Proving Willfulness Is Not Required For Recovering an Infringer’s Profits
  2. Activision Wins the (Trademark) War: First Amendment Protects Depiction of Humvees in Realistic Video Games
  3. Virus-Related Legislation Extends Patent and Trademark Deadlines
  4. Big Changes to Canada’s Trademark Laws
  5. Humvee Goes Into Battle: Will Its Trademarks Leave Tread Marks on Video Game Makers?
  6. Brewing Up a Controversy: Super Bowl Ad Provokes Clash Between Two Beer Industry Juggernauts
  7. IP Considerations For Distinctive Moves and Other Content in Video Games

Trademark Results

Sage Therapeutics, Inc. v. Sage Naturals, Inc.

United States District Court for the District of Massachusetts

Sunstein brought suit in federal district court in Massachusetts against a medical marijuana dispensary using the name Sage Naturals (formerly Sage Biotech) on behalf of Sage Therapeutics, a biopharmaceutical company based in Cambridge, Massachusetts, with global activities committed to developing novel medicines to treat patients suffering from CNS disorders. Sage Naturals promoted use of its medical marijuana products to treat the same types of CNS disorders that Sage Therapeutics’ investigational medicines were intended to treat. Sage Naturals subsequently changed its name to Sira Naturals.

’47 Brand, LLC v. Contrast Imports, Inc.

USPTO, Trademark Trial and Appeal Board

Sunstein successfully represented ’47 in trademark litigation before the USPTO Trademark Trial and Appeal Board. ’47 opposed Contrast Imports’ application to register a 47 in a circle based on likelihood of confusion with its 47-formative marks. After TTAB trial proceedings, the Board agreed that there was a likelihood of confusion between ’47’s strong 47 marks used for apparel and headwear and Contrast Imports’ 47 mark used for silver jewelry, and held that consumers would likely mistakenly believe that Contrast Imports’ originated from or were associated with or sponsored by ’47. Accordingly, the TTAB sustained ‘47’s opposition.

Vertex Pharmaceuticals Inc. v. Hercules Brand Corp.

USPTO, Trademark Trial and Appeal Board

Sunstein successfully represented Vertex in its opposition to the mark VERTOX in trial proceedings before the USPTO Trademark Trial and Appeal Board. After the submission of trial briefs, the Board agreed with Vertex that there was a likelihood of confusion between Vertex’s VERTEX marks registered for pharmaceutical preparations and pharmaceutical research services, and Hercules Brand’s VERTOX mark for vitamin and multivitamins. Among other factors, the Board considered the issue of public safety in cases involving confusingly similar trademarks for pharmaceuticals and closely related products like vitamins or nutritional supplements.

Hambrecht Wine Group, L.P. d/b/a Belvedere Winery, L.P. v. Millennium Import LLC

United States District Court for the Northern District of California

Sunstein obtained a summary judgment ruling in favor of its client, a Sonoma winery, holding that the winery’s trademark licensee, an importer of luxury vodka, breached its license to use the BELVEDERE® trademark, that the winery properly terminated the vodka importer’s license, and, accordingly, that the importer’s continued sales of BELVEDERE® vodka infringed the winery’s trademark rights. The case, which was litigated in the federal court in San Jose, settled shortly after the summary judgment ruling.

Harvard and Harvard Business School Publishing v. Oezyurt Harvard and Harvard Business School Publishing v. LeEL


Sunstein represents Harvard University with respect to numerous trademark matters, and recently achieved victories in contested cybersquatting disputes through the Uniform Domain-name Dispute Resolution Process (UDRP). In two independent cases filed and decided on the same day, Harvard and its subsidiary Harvard Business School Publishing (publisher of, among other things, the famed Harvard Business Review magazine) sought transfer of the domains and Harvard argued that both sites were registered and used in bad faith, as evidenced by the fame of the Harvard mark. In both cases, the respondents argued that their use and registration of the sites were made in good faith, for legitimate purposes. The WIPO panelist, siding with Harvard, emphasized the fame of the Harvard name in concluding that registration of the sites could only have been in bad faith.

M&M Label Company, Inc. v. Lone Peak Labeling Systems, Inc.

United States District Court for the District of Massachusetts

Sunstein brought suit in federal district court in Massachusetts against Lone Peak Labeling System on behalf of its client M&M Label Company in an action for breach of contract, trademark infringement, false designation of origin and unfair competition. M&M Label is a leader in the label, decal and nameplate production and printing industry in the United States and the creator of the proprietary label-printing system sold under the trademark THE MERCHANDISER. After seeking a preliminary injunction, we obtained an agreement from Lone Peak to, among other things, immediately cease use of the mark THE MERCHANDISER and to abandon its application with the USPTO.

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