Pattishall IP Blog

October 10, 2012

Pattishall Client Prevails On Counterfeiting and Infringement Claims Over Marks for Vehicle Braking Systems; Court Awards Over $13 Million in Damages, Attorneys’ Fees, Costs and Sanctions

Pattishall client Robert Bosch LLC (“Bosch”) was awarded judgment of over $13 Million by default on its claims of counterfeiting, infringement, unfair competition, and false advertising after nearly three years of litigation and “extensive and cumbersome discovery” in Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. August 2, 2012).  Pattishall attorneys Belinda Scrimenti, Bradley Cohn, Thad Chaloemtiarana, and Jeffrey Wakolbinger represented Bosch in this litigation in the United States District Court for the Eastern District of Michigan before the Honorable Patrick J. Duggan.

Specifically, Judge Duggan:

  • awarded Bosch $12,875,997.96; consisting of $3,931,220 in defendant’s profits (which the court trebled to $11,793,660), $993,309.00 in reasonable attorneys’ fees, and $89,028.96 in costs;
  • awarded Bosch $142,082.52 as a judgment for previously entered sanctions;
  • enjoined defendants from future use of Bosch’s HYDRO-BOOST and HYDRO-MAX marks in connection with hydraulic vehicle braking systems or remanufactured, reconditioned or rebuilt Bosch products; and
  • ordered the defendants to destroy all infringing products and promotional materials.

The Court’s opinion highlighted the difficulty of assessing actual damages given the actions of the defendants in discovery and found the Pattishall team’s method for estimating damages to be reasonable.  Relying on survey evidence of law firms nationwide, Judge Duggan also found Pattishall’s Chicago-based attorneys’ fees request reasonable and consistent with rates of comparably-situated firms in Detroit with large intellectual property practices under the traditional lodestar analysis.

The defendants’ alleged violations covered a range of activities, including manufacturing of counterfeit products sold under Bosch’s trademarks, use of identical and similar infringing marks on generic products, sale of refurbished Bosch products that failed to meet genuine Bosch specifications, and false advertising of refurbished hydraulic brake products as new, genuine Bosch products.

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September 29, 2011

On behalf of the ABA Section of Intellectual Property Law, Pattishall Attorneys Thad Chaloemtiarana and Phillip Barengolts Met With a Delegation from the People’s Republic of China to Discuss U.S. Trademark Law

Filed under: International, Pattishall — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:24 pm

Categories: Pattishall, International
Tags: ABA, Chinese Trademark Law, Thad Chaloemtiarana, Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

On September 2, 2011, the Legislative Affairs Office of the State Council of the People’s Republic of China (PRC) issued the most recent version of proposed amendments to the Chinese Trademark Law.[1]  A delegation from the PRC is meeting this week with several U.S. intellectual property law groups to discuss aspects of U.S. trademark law as part of their efforts to gather comments on the new Chinese trademark law and to better understand the U.S. approach to trademark enforcement and protection.

On September 26, 2011, Pattishall attorneys Thad Chaloemtiarana[2] and Phillip Barengolts,[3] Bruce Longbottom, Associate General Counsel – Trademarks, Copyrights & Information Technology, Eli Lilly and Company, and Jonathan Hudis[4] of Oblon Spivak McClelland Maier and Neustadt, LLP, met with the PRC delegation on behalf of the American Bar Association Section of Intellectual Property Law.  On behalf of the PRC delegation, from the Economic Law Department, Commission of Legislative Affairs, Standing Committee of the National People’s Congress were:

  • Yang Yong Ming, Director;
  • Wang Qing, Deputy Director – General;
  • Chen Yanguye;
  • Li Jiangua, Researcher; and
  • Wang Xiang.

Also in attendance was Zhou Yan, Deputy Division Director, Law Department, State Administration for Industry and Commerce.  Attending on behalf of the International Trade Administration of the U.S. Department of Commerce were Nicole Melcher, the Director of the Office of China and Mongolia, and Ning Lu, International Trade Specialist for the Office of China and Mongolia.

During the four hour discussion, the PRC delegation and ABA IPL Section representatives discussed a wide variety of U.S. trademark issues, including:

  • conflicts between registered and unregistered marks;
  • damages for trademark infringement and counterfeiting;
  • dilution; and
  • “landlord” or contributory liability for trademark infringement.

The discussion included a detailed review of the separation between common law trademark rights developed through use and the federal registration system administered by the United States Patent and Trademark Office, and their impact on enforcement of trademark rights; the trademark rights enforcement implications of recently enacted dilution legislation in the U.S.; and the implications of recent decisions concerning potential liability under trademark law for Internet companies that host third-party content that contains infringing material or offers infringing or counterfeit products for sale.

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Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, recently published by Oxford University Press.


[1] The full text of the proposed revised Chinese Trademark Law is available for comment here (but only if you read Mandarin – no official translation was available as of the date of this blog post):  The comment period ends on October 8, 2011.

[2] Thad currently is the Vice Chair of the Trademark Division of the ABA Section of Intellectual Property Law.

[3] Phil currently is the Chair of the Defining Counterfeiting Sub-Committee of the Trademark Legislation Committee of the ABA Section of Intellectual Property Law.

[4] Jonathan currently is the Chair of the Trademark Division of the ABA Section of Intellectual Property Law.

February 11, 2010

Owners of copyright in a foreign work must obtain U.S. copyright registration in order to seek statutory damages/attorneys’ fees in U.S. courts

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:22 pm

by Thad Chaloemtiarana, Trademark Attorney

Article Five of the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”) provides that “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality”.  In the Berne Convention Implementation Act of 1988 (the “Implementation Act”), Congress brought United States copyright law into conformity with the standards of the Berne Convention.  Among other things, the Implementation Act released foreign (but not U.S.) claimants from the obligation to register their foreign copyrights as a prerequisite to enforcing them in United States courts.  The Implementation Act, however, did not amend Section 412 of the Copyright Act of 1976 which conditions an award of statutory damages or attorneys’ fees on registration of the copyright in the United States.

Does Section 412 of the Copyright Act conflict with Article Five of the Berne Convention, such that it should be pre-empted by the Supremacy Clause of Article VI of the United States Constitution?  In Elsevier B.V. v. UnitedHealth Group Inc., 93 U.S.P.Q.2D 1408 (S.D.N.Y. 2010), the U.S. District Court for the Southern District of New York, following the well-established precedent that the Berne Convention was not self-executing, answered, “No”. (more…)

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