Firm / Organisation

Banner & Witcoff, Ltd

Current View:

This content is provided by Banner & Witcoff, Ltd.

Managing Partner: Chunhsi Andy Mu
Number of partners: 66
Number of lawyers: 110
Languages: English

Firm Overview:
A national law firm with more than 100 attorneys and agents and nearly 100 years of practice, Banner Witcoff provides legal counsel and representation to the world’s most innovative companies. The firm’s attorneys are known for having the breadth of experience and insight needed to handle complex patent, trademark and copyright issues as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries.

Main Areas of Practice:

Litigation:

Banner Witcoff has represented significant clients at the center of cases that reached the Federal Circuit, Supreme Court and International Trade Commission. In recent years, the firm represented NIKE in its case involving the trademark registration on its Air Force 1 sneaker trade dress and Lexmark International in its case over patent exhaustion for printer toner cartridges. On appeal before the Federal Circuit, Banner & Witcoff represented Converse in successfully obtaining a vacature and remand of the International Trade Commission, setting the stage for Converse to reclaim its initial victory at the ITC against entities selling knock-off versions of Converse’s iconic Chuck Taylor All Star sneaker. The firm has also achieved successful results for significant clients, including YETI Coolers, in district court litigation. Banner Witcoff recently helped YETI reach a settlement agreement with RTIC Coolers, ending the infringement lawsuits YETI filed against them and requiring the company and its owners to pay YETI an unspecified amount and to stop selling all products accused of infringement. In 2018 the firm secured a jury verdict for Buc-ee’s against a chain of travel centers in Texas. The unanimous jury found that Buc-ee’s logo is famous and that the defendants violated the law by using logos that were confusingly similar and likely to cause dilution of Buc-ee’s famous logo.

Patent Post-Issuance Proceedings:
Banner Witcoff has been involved with post-issuance proceedings since the America Invents Act was signed into law in 2011, and was recently recognized as one of the best performing and most active law firm’s in IPRs. . In 2018, the firm defended NIKE in two inter partes review challenges filed by Skechers, targeting design patents covering NIKE’s popular FREE outsole designs. After defeating these two challenges, NIKE has prevailed on all 15 IPR challenges mounted by Skechers over the past two years. Also in 2018, the firm defended RTC Industries in four inter partes review challenges filed by Fasteners for Retail, targeting four patents covering merchandise display systems used in grocery stores and other retailers. In addition, the firm received favorable inter partes review decisions for Comcast against Rovi on patents related to television program guides, digital video recorders and mobile services. Every asserted claim in the first 12 challenged patents to reach final decision has been found unpatentable in final written decisions. The firm is a founding member of the PTAB Bar Association and introduced a first-of-its kind class at Northwestern University that prepares law students for handling post-issuance proceedings.

Patents:
Preparation and prosecution of utility patent applications, both in the United States and abroad, was the historical basis for the firm’s practice at its founding in the 1920s. The prosecution teams manage large patent portfolios that range from several hundred to several thousand patents and patent applications, and typically include substantial numbers of foreign patents and applications. The firm also has extensive experience in obtaining and enforcing design patents. The firm became the first law firm in history to obtain more than 1,000 US design patents in a single year in 2016. Banner Witcoff accomplished this again in 2017, by obtaining 1,424 US design patents for its clients. It was also the 15th consecutive year that the firm obtained more US design patents than any other law firm in the country.

Trademarks:
Banner Witcoff works to procure, protect, defend, and enforce famous brands and handle complex trademark issues for innovative clients, including NIKE, Schneider Electric, and YETI Coolers. The firm recently represented complainant Converse in one of the largest trademark cases in International Trade Commission history, In re Certain Footwear Products, and was a leading filer of trademark litigation complaints before federal district courts in 2017. Globally, the firm manages more than 14,500 active trademark applications and registrations in more than 170 countries on behalf of nearly 1,000 clients.

IP Strategy & Protection:
Companies spend valuable time and money developing new techniques and designing innovative products, and call on us to help them understand laws that protect these assets. Banner Witcoff works with clients on patents, trademarks, copyrights, domain names and trade secrets, all of which can be used alone or in combination, to help them gain an edge over their competitors, create a revenue source and enhance the value of their business. The firm provides counseling and opinions services, including landscape studies, infringement/non-infringement opinions, validity/ invalidity opinions, freedom to operate evaluation and global filing strategies. Banner Witcoff also helps clients establish invention award, review and prosecution programs, and provides support when they launch new products or want to maintain commercial advantage for existing products.