Case Studies

Defense of An Investment Management Firm in Complex Trademark Infringement Case

Tannenbaum Helpern defended an investment management client in complex trademark infringement litigation in federal court in Delaware. The plaintiff was an insurance company in runoff that invested premiums in fixed-income securities through many of the same broker-dealers as the defendant fund and investment manager. In contrast to the usual claim of consumer confusion, the plaintiff claimed that the defendant’s use of a name containing the same distinctive element as the plaintiff’s name caused confusion among the major broker-dealer financial institutions through which both parties traded securities.

The case also raised thorny issues of fact and law concerning which party was the senior user of the mark in issue in the investment management industry, whether plaintiff’s use of the mark for investment management services had been sufficient to establish trademark rights, and what damages could be sought.

After Tannenbaum Helpern successfully defeated the plaintiff’s preliminary injunction motion, and litigated an appeal to the Third Circuit in which the court decided that supplier confusion could support a federal trademark infringement action, the case preceded toward a trial. Shortly before trial commenced, the parties reached a settlement on a mutually satisfactory basis.

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