Trevor Little

New data from Lex Machina has highlighted a fall in trademark litigation filings in the US, with case numbers in the first quarter of this year at a seven-year low. If this trend continues, it will ring alarm bells in law firms that rely on contentious work for their revenue streams.

The research, which is available for download here, presents a detailed overview of key litigation benchmarks and trends. As noted, the headline finding is that overall trademark litigation filings in the US are on the decline. In the first quarter of 2016, 795 cases were filed – the lowest since the start of 2009 and down almost 10% on the same quarter last year. And while the Central District of California is the most popular district by cases filed from January 2009 through March 2016 (with 4,164 cases), the number of filings at the venue have declined each quarter since the beginning of 2015, roughly tracking the overall decline in filings of all trademark cases.

There are some exceptions – for instance the Northern District of Illinois has seen a small increase in each quarter over the same timeframe. Additionally, the overall drop likely feels more pronounced due to a 2014 high, due in large part to 466 cases in the third quarter that related to a series of matters between the National Football League (NFL) and former players over publicity rights to their identities and likenesses.

However, while not a dramatic decline, for the most part the trend is downward. This suggests that corporate teams are taking a more conservative (or strategic and budget-friendly) approach to the big ticket expense of litigation. Should this trend continue, then it will be of significant concern to law firms who place an emphasis on litigation work. The positive news is that there are still many companies that require technical legal expertise as they seek to clamp down on infringement. Therefore the challenge for firms is to position themselves as the ‘go to’ partner for litigation, offering high-level strategic advice and unique expertise.

So who are the most active companies in terms of trademark litigation filings?  Based on the long-term picture, the top ten plaintiffs list (for cases filed January 2009 through March 2016) is populated with names you would mostly expect to see, with Coach sitting on top of the pile. Speaking to World Trademark Review’s Jacob Schindler at this week’s INTA Annual Meeting, Lex Machina’s Michael Kramer observed: “You expect to see companies like Coach, Chanel and Microsoft there. That said, companies like Best Western and Chevron are also among the top litigants in terms of the number of cases.” That top ten is:

  1. Coach Services (730 cases)
  2. Coach (676)
  3. Chanel (330)
  4. Microsoft Corporation (203)
  5. American Automobile Association (195)
  6. Boost Worldwide (164)
  7. Deckers Outdoor Corporation (164)
  8. Slep-Tone Entertainment Corporation (162)
  9. Luscious Limo Service (109)
  10. Best Western International (107)

Looking at the shorter-term picture (January 2015-March 2016) and Coach falls out of the top ten, with five new entrants – including  Sream (the maker of RooR smoking paraphernalia) in top spot. Phoenix Entertainment, a theatrical production and management company that licenses karaoke, is hot on its heels. The top ten is:

  1. Sream (55)
  2. Phoenix Entertainment Partners (54)
  3. Chanel (47)
  4. Luxottica Group (38)
  5. Deckers Outdoor Corporation (34)
  6. American Automobile Association (27)
  7. Oakley (27)
  8. Sprint Solutions (25).
  9. Sprint Communications Company (23)
  10. Luscious Limo Service (21)
     Microsoft Corporation (21)

If litigation filings continue to fall – and this could, of course, be a temporary lull – then competition for litigation work will intensify. As to the current leaders in terms of litigation work, the Lex Machina report presents a list of the firms that have represented both plaintiffs and defendants in the most trademark litigation cases. The top ten for each are as follows: 

Law firms representing plaintiffs (January 2009-March 2016)

Law firms representing defendants (January 2009-March 2016)

Goldberg, Persky & White (542 cases)

Greenberg Traurig (161 cases)

Stephen M. Gaffigan (539)

Kilpatrick Townsend & Stockton (146)

Blakely Law Group (371)

Lewis Brisbois Bisgaard & Smith (110)

Kilpatrick Townsend & Stockton (366)

Wentovich Law Offices (107)

Johnson & Pham (336)

Fox Rothschild (106)

Greenberg Traurig (320)

Gordon & Rees (97)

Greer, Burns & Crain (296)

Sheppard Mullin Richter & Hampton (89)

Perkins Coie (287)

Tingley Law Group (87)

Bryan Cave (262)

Faegre Baker Daniels (86)

J Andrew Coombs Law Offices (197)

DLA Piper (85)

Time will tell whether the decline in trademark litigation case filings is over or not. Writing in issue 59 of World Trademark Review, Brian Howard, a legal data scientist at Lex Machina, noted that – when looking at figures up to the third quarter of 2015 – if you removed the spike caused by the NFL filings in 2014 – “a pattern of consistent business in trademark litigation remains”. Since then there have been two more quarters of decline, which suggests that there may be more to the picture. It will be one that counsel will keep a close eye on. 


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