When it comes to trademark registration, there is such a thing as being too popular. Marks such as Aspirin, Fiberglass, Zipper and Flip Phone became so ubiquitous that they were found to be generic—a commonly used name or description of a kind of product. When a trademark becomes so widely used to identify the product itself, the mark is considered to be generic and owners can be stripped of their trademark rights. This is a fate the Google and Uggs® marks nearly faced recently.
You are here
Andrew O’Connor's practice focuses primarily on securing and protecting clients' intellectual property rights. With extensive experience in matters concerning patents, design patents, trademarks, trade dress, false advertising, product disparagement, trade secrets and copyrights, Andrew devotes extensive strategic planning and skilled advocating both in and out of the courtroom in order to assist clients with successfully navigating the constantly evolving intellectual property law landscape. Andrew also prosecutes and manages the trademark portfolios of clients before the U.S. Patent and Trademark Office.
Andrew focuses on the broader goals of each client’s business model and overall brand, negotiating intellectual property license agreements, corporate mergers and intellectual property asset management projects for a broad array of companies, ranging from entrepreneurs, start-ups and laboratories to Blue Chip multi-national corporations. Andrew’s extensive experience in the pharmaceutical, medical device, retail and video gaming industries has produced consistent and successful implementation of each individual client’s specific goals and interests in highly sophisticated industries.
- Representing a multi-national retail chain, successfully defeated claims of trademark infringement and unfair competition brought by a competitor and obtained award of attorneys’ fees, which was affirmed by the U.S. Court of Appeals for the Federal Circuit, and enabled client to continue marketing products under its valuable brand.
- Representing a world-renowned teaching hospital assert its patent covering a popular over-the-counter pharmaceutical against a generic pharmaceutical company, the jury found the patent was valid and willfully infringed, awarding client over $10 million.
- Representing patent attorneys against claims of misappropriation of trade secrets and inequitable conduct, was successful in having the federal court dismiss the plaintiff’s claims with prejudice.
- Representation of client against claims of patent infringement by a non-practicing entity brought against nearly fifty companies and successfully negotiated the dismissal of all claims without any payment or conditions.
- Representation of an international video game developer in Digital Millennium Copyright “takedown” enforcement and litigation concerning the scope of copyright and trade dress protections for online video game software, server code and website display, and successfully obtaining permanent injunctions and awards of damages and attorneys’ fees.
- Representing client against claims of design patent and trade dress infringement of office supply designs, successfully dismissed all claims, which was affirmed by the U.S. Court of Appeals for the Federal Circuit.
- Representation of client in protecting its patent covering life-saving therapeutic drugs from claims of invalidity in Hatch-Waxman/ANDA litigation and secured an award of client’s attorneys’ fees, which was affirmed by the U.S. Court of Appeals for the Federal Circuit.
- Representation of client in successfully enforcing the valuable trademark and trade dress rights associated with its medical devices.
- Representation of a multi-national corporation in a patent infringement litigation involving 29 patents and over 200 products relating to photocopier technology in a “rocket docket” jurisdiction.
- Representation of publishing company in enforcing its valuable trademark rights and brand recognition in litigation that resulted in successfully preventing the launch of a competing line of products from another publisher.
- Representation of E & A Northeast Limited Partnership, the owner of a large urban shopping center, in a dispute with the owner of an abutting grocery store over access rights. Defeated the abutter’s request for an injunction which led to a favorable resolution of the matter.
The retail industry closely guards customer and distribution lists. In many cases, these valuable assets are not protected by patent, trademark or copyright law.
The INTA 2018 Annual Meeting attracted an incredibly diverse group of brand owners, in-house counsel, outside counsel, government officials, academics and other intellectual property professionals from over 150 countries.