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Kenyon Successfully Represents Toyota in Years-Long Patent Litigation

Kenyon & Kenyon LLP successfully represented Toyota Motor Corp. in a long term patent litigation against American Vehicular Sciences (AVS). Originally brought by AVS in the Eastern District of Texas, the matter asserted 24 patents across seven separate cases – accusing essentially every major Toyota vehicular safety system. In the three years since the original filing, the Kenyon team filed 12 separate petitions for inter partes review (IPR) and won a stay in the E.D. Tex. pending resolution of the IPRs. The Patent Trial and Appeal Board granted each of the IPRs, and significant claims were cancelled or dropped. Additionally, the Kenyon team successfully petitioned the Federal Circuit for a writ of mandamus and the case was transferred from the E.D. Tex. to the Eastern District of Michigan, and filed various invalidity summary judgment papers, causing the plaintiff to drop a number of other asserted patents. In May of 2015, the E.D. Mich. granted the plaintiff’s unopposed motions to dismiss with prejudice all of the remaining cases against Toyota. (2015)

Michelle Mancino Marsh Partner
New York, NY 1.212.908.6180

Overview

Michelle Mancino Marsh has built an impressive track-record practicing in the areas of trademark and copyright law, unfair competition, anti-counterfeiting/anti-piracy, internet law, fashion law, design patent, trade secrets and mask work protection. She is the chair of the firm‘s Fashion, Apparel and Footwear law practice, representing some of the best known brands and retailers in the fashion and footwear industries in all aspects of intellectual property protection and defense.

Ms. Marsh has received recognition for excellence in practice from a number of external organizations. Notably, she won “Best in Copyright” at the 2015 Euromoney Legal Media Group’s Americas Women in Business Law Awards; awards which recognize women lawyers who are influential and leading professionals in a practice area. She has also received recognition from a number of legal publications, including the 2015 edition of World Trademark Review 1000 which notes that she is an “outstanding” trademark litigator whose “role in securing crucial federal court victories has attracted much admiration.” She has also been recognized by The Legal 500 United States (2014), The International Who’s Who of Trademark Lawyers (2014), and the 2014 edition of Benchmark Plaintiff which named her one of the “Top 150 Women in Litigation.” Benchmark Plaintiff also named Ms. Marsh as a “Local Litigation Star (2014) – New York, Plaintiff.” Additionally, Ms. Marsh has been recognized as a New York “IP Star” by Managing Intellectual Property (2014). Her previous recognitions include being named to Benchmark Plaintiff’s “Top 30 IP Litigation Stars” in the United States and “Top Local Litigation Stars” in New York (2012), as well as being recognized by IP Law and Business Magazine as one of the “Top 50 IP Attorneys” under the age of 45. In 2011, she was selected as an “Attorney of the Year” for growing businesses by The New York Enterprise Report.

Her clients span a broad range of industries from fashion, consumer goods and services to computer software and hardware, financial and insurance services, and life sciences to media and interactive entertainment. Ms. Marsh is distinguished not only by the victories she has achieved for her clients but also for the wider influence and interest her cases have generated. She represents clients in state and federal courts and at the U.S. Patent and Trademark Office. She has also successfully obtained preliminary injunctions and ex parte seizure orders on behalf of her clients, and works closely with U.S. Customs and Border Protection and law enforcement in coordinated anti-counterfeiting efforts. She has argued and won numerous federal and state court appeals, including the Second Circuit's seminal famous marks case of ITC Ltd v. Punchgini, Inc., 373 F.Supp. 2d 275 (S.D.N.Y. 2007). Ms. Marsh has also successfully represented numerous companies in connection with design patent disputes in industries ranging from consumer products to industrial products.

Complementing her litigation work, Ms. Marsh’s practice also includes counseling and opinions, devising cost-effective brand protection programs, negotiating licenses, IP acquisitions, and co-branding agreements on behalf of clients.Ms. Marsh has presented numerous speeches to industry professionals on a wide variety of topics, including the impact of the gTLD expansion, famous marks protection in the United States, avoiding litigation in the footwear industry, legal trends in social media, and non-traditional trademark protection.

Ms. Marsh has presented numerous speeches to industry professionals on a wide variety of topics, including the impact of the gTLD expansion, famous marks protection in the United States, avoiding litigation in the footwear industry, legal trends in social media, and non-traditional trademark protection.

Representative Experience

  • Successfully represented Jim Beam Brands, the maker of OLD CROW straight bourbon whiskey, against the maker of Jose Cuervo tequila for Cuervo’s improper use of a crow design on tequila products, web sites, and in other advertising materials in violation of a settlement agreement.  
  • Successfully obtained a judgment in favor of client CAR‑FRESHNER Corporation against Getty Images in a lawsuit over Getty’s licensing of images of the Little Trees air fresheners.
  • Successfully represented GFI Group, Inc., a leading provider of wholesale brokerage services, in trademark infringement suits to secure, protect, and enforce their brands.
  • Successfully represented clients in a broad-range of industries including footwear manufacturers, building materials suppliers, and mobile device manufacturers, and, among others, in design patent and trade dress litigations.
  • Argued for the registration of the first ever taste trademark for a well-known pharmaceutical company.

Select Publications

  • "Using Numbers to Win Your Case," World Trademark Review, November 12, 2014.
  • “Fabric Designs: A Bouquet of Thorny Legal Issues,” Intellectual Property Magazine, April 2014.
  • “Increase in Cybersquatting with the New gTLDs,” March 27, 2014.
  • “The Federal Circuit Extends the Doctrine of Prosecution History Estoppel to Design Patents,” January 14, 2014.
  • “A Primer on IP Protection for Crowdfunding Projects,” Today’s General Counsel, December/January 2014.
  • Contributing Author and Editor for “Trademarks in 50 Jurisdictions Worldwide,” Getting the Deal Through, 2011 - 2014.
  • “Sunrise Period Opens this Week on New gTLDs,” November 26, 2013.
  • “New gTLD Trademark Clearinghouse Opening, March 26, 2013,” March 8, 2013.
  • “IP Issues to Watch in 2013,” 2013.

Experience

  • GFI Group, Inc. v. Forex Capital Markets LLC and Super Derivatives, Inc. Read More
  • SIC Media, Inc. v. Time Inc., et al. Read More
  • Jim Beam Brands Co. v. Tequila Cuervo La Rojeña S.A. de C.V. Read More
  • Tequila Cuervo La Rojeña S.A. de C.V. v. Jim Beam Brands Co. Read More
  • GFI Group, Inc. v. GFI Finance Ltd. Read More
  • Summit Entertainment, LLC v. EPV Enterprises LLC Read More
  • In re SPORTO Read More
  • GFI Brokers LLC v. SCB & Associates, et al. Read More
  • ITC Ltd. and ITC Hotels Ltd. v. Punchgini Inc. et al. Read More
  • View All

Insights and News

Events

Credentials

Education

  • Fordham University School of Law, J.D., 1996, Moot Court Board, Editor in ChiefDean's ListFordham Urban Law Journal
  • Boston University, Political Science, B.A., cum laude, 1993

Bar and Court Admissions

  • New Jersey
  • New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Supreme Court

Professional Organizations

  • Ms. Marsh is a member of the International Trademark Association where she serves on the organization’s Internet Committee and has been an editor and contributing author to the association’s publications, the Trademark Reporter and the INTA Bulletin