Handling trademark litigation cases throughout the U.S. 

Overview

Parsons Behle & Latimer offers the knowledge and experience of a national law firm while still maintaining a client-focused approach. Our Trademark Litigation team provides clients with investigation and research regarding potential infringers and can help you find cost-effective protection for your trademarks. We also assist our clients in responding to cease and desist letters and allegations of trademark infringement. Our attorneys have handled trademark and trade dress litigation matters for individuals, local, national, and international clients involved in a wide variety of industries including: 

  • Consumer products
  • Restoration
  • Electronics
  • Software
  • Restaurants
  • Quick-serve restaurants
  • Web-based commerce sites
  • Retail stores
  • Audio and video conferencing equipment
  • Call management centers

Our attorneys have represented clients in trademark matters in courts across the United States, including Utah, Idaho, Maryland, Michigan, Texas, Illinois, North Carolina, and New York.

Team

Key Contacts

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Experience

Parsons prevailed at trial for firm client MFGPC, Inc. against Mrs. Fields Franchising, LLC, for Mrs. Fields’ breach of a Trademark License Agreement.

Parsons Behle attorneys Brian M. Rothschild, Juliette P. White, and Alexandra Hodson prevailed at trial for firm client MFGPC, Inc. against Mrs. Fields Franchising, LLC, for Mrs. Fields’ breach of a Trademark License Agreement for the exclusive, worldwide right to use the Mrs. Fields trademark in association with the sale of prepackaged popcorn products. (Mrs. Fields Franchising, LLC v. MFGPC, Inc., Case No. 2:15-cv-00094, D. Utah). The dispute resolved six years of litigation, including two interlocutory appeals to the Tenth Circuit, that ensued when Mrs. Fields improperly terminated the Trademark License Agreement and then sued MFGPC for declaratory judgment that it had terminated properly. Mrs. Fields had purported to terminate MFGPC’s rights under the Trademark License Agreement for non-payment of guaranteed royalties. In a ruling dated August 20, 2018, the District Court ruled on summary judgment that (1) Mrs. Fields, not MFGPC, owed a net balance to MFGPC for the sale of popcorn products that more than offset any royalties owed, (2) Mrs. Fields had no contractual ability to terminate the Agreement during a contract period absent MFGPC’s breach, (3) MFGPC was not in breach because it was owed a net balance; and, therefore, (4) Mrs. Fields had breached the Trademark License Agreement by purporting to terminate the Agreement. The Court reserved the issue of damages for a later trial. After a three-day trial in September 2021 that included expert witnesses battling over complex economic damages, the District Court awarded MFGPC damages and attorneys’ fees and costs pursuant to the Agreement.

Real Property Management v. Randall Averitte

Helped Franchisor enforce post-termination obligations of Franchise Agreement against non-renewing franchisee by obtaining a Preliminary Injunction. Court ordered cessation of competing business, all associated trademarks, and any use of franchise client information.

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