David H. Bernstein

As the chair of his firm’s intellectual property litigation group and a prominent trademark litigator, Bernstein knows what kind of case he enjoys the most. He and his team prefer cases “that are critical to the [client’s] enterprise [and] raise really interesting questions of trademark law,” he said.

He has been litigating one such case for more than a decade, although the dispute dates to 1993. He represents a joint venture led by Pernod Ricard in a dispute with another group led by Bacardi Rum over the rights to use the name of a famous, old Cuban rum, Havana Club. Bacardi sued after the Trademark Trial and Appeals Board allowed Pernod Ricard to use the name.

The case raises issues involving abandonment and expropriation of trademarks, the impact of the U.S.’s decades-old Cuban embargo and a 1998 federal statute that essentially targeted Bernstein’s client. Bacardi & Co v. Emprese Cubana Exportadora de Alimentos Y Productos Varios, 1:04-cv-00519 (D.D.C., filed March 28, 2004).

“It literally turns me on to be working on cases of this kind because they’re so fascinating and so important, and they’re culturally so significant,” he said.

In a newer case with similar issues and broader cultural significance, Bernstein and his team represent Fox Corp. in its attempt to bring back the United States Football League to play during the spring. Former owners of teams in the similarly named league from the 1980s claim they still own the rights to the USFL trademarks. The Real USFL v. Fox Sports, 2:22-cv-01350 (C.D. Cal., filed Feb. 28, 2022).

“Our view is back in the ’80s, they took a run at it, they had more than 400 trademark registrations, they closed up shop… and they allowed all their trademark registrations to be canceled [by the PTO] for nonuse,” he said.

Now Fox has registered the USFL trademark and asserted it against infringers. “So we are the owners now of this brand.”

The former owners are seeking an injunction against Fox, making this a “bet-the-company” case. “If an injunction is granted… on the eve of the kickoff, we couldn’t even have a league,” Bernstein said. “This is the stuff my team and I love to do.”

They also represent H&R Block who is suing the company formerly known as Square. That company changed its name to Block in December and has a new product within its Cash App service to prepare users’ taxes. “Our view is it’s inevitable that the media and others will report [the new tax product] as Block’s Cash App because Block is, after all, the owner,” Bernstein said. He expects the court to rule on his preliminary injunction motion soon. H&R Block Inc. v. Block Inc., 4:21-cv- 00913 (W.D. Mo., filed Dec. 16, 2021).

– Don DeBenedictis