Risk Update

IP Conflicts — Soccer Trademark Spat + Whisky Glass Design Meets Bolkiah Principles Discussion

Quinn Emanuel Attorney Can Stay as Counsel In U.S. Soccer Spat”

  • “An attorney with Quinn Emanuel Urquhart & Sullivan can stay on as counsel for the U.S. Soccer Federation Foundation in its trademark dispute with U.S. soccer’s governing body, a federal judge ruled Sept. 25.”
  • “Robert Raskopf isn’t conflicted due to prior work on trademarks for the U.S. Soccer Federation because the matters aren’t the same, Judge Timothy J. Kelly wrote for the U.S. District Court for the District of Columbia.”
    Raskopf had worked for a law firm in the 1980s that registered two trademarks for the federation, ‘neither of which is at issue in this case,’ the court noted.”
  • “He later moved to White & Case, which maintained the trademarks at issue in this case for the foundation, it said. Raskopf and another attorney at White & Case who “mainly handled” those trademarks later joined Quinn Emanuel, taking the work with them. In 2011, however, the foundation transferred the trademark work to another firm. Raskopf and Quinn Emanuel are now representing the foundation in a trademark ownership dispute, the court said.”

And via Bill Freivogel, commentary on: Glencairn IP Holdings Ltd. v. Product Specialties Inc (Final Touch), 2019 EWHC 1733 (IPEC) (High Ct. Eng. & Wales May 7, 2019) —

  • “In this case Glencairn is suing Final Touch and others for infringement of its registered design and of an EU trade mark dealing with the shape of a whiskey [sic] glass. Final Touch hired the law firm, Virtuoso, for defense.”
  • “The problem is that Virtuoso just last year defended another defendant, Dartington, in a very similar case brought by Glencairn. Glencairn moved to disqualify Virtuoso in this case, claiming that Virtuoso would have learned confidences during a mediation of the earlier claim that would prejudice Glencairn in this case.”
  • “Bottom line: In this opinion the court denied the motion. The court decided that the possibility that Glencairn would be harmed was remote. Among other things, the opinion contains interesting discussions about whether a screen would work in a small firm and whether Bolkiah principles can be applied to confidences held by non-clients.”

(And now I’m reading up on this whisky glass…)

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