Megan K. Bannigan is a partner and member of the Litigation and Intellectual Property & Media Groups at Debevoise & Plimpton LLP, focusing on trademarks, trade dress, copyrights, false advertising, design patents, rights of publicity, licensing and other contractual disputes. She represents clients across a range of industries, including consumer products, cosmetics, entertainment, fashion and luxury goods, financial services, food and beverage, pharmaceuticals, professional sports and technology.
Ms. Bannigan has extensive trial experience, helping to secure an over $20 million jury verdict for client Learning Annex in the United States District Court for the Southern District of New York, among other matters. She also has experience representing clients before the United States Patent and Trademark Office, the Trademark Trial and Appeal Board and the International Trade Commission. Recognized by Managing Intellectual Property’s IP STARS and Law360 as a Rising Star, she is known for “translat[ing] complex legal issues into clear pragmatic legal advice.” Ms. Bannigan is recognized as a Next Generation Partner by The Legal 500 US (2021), where she is lauded for her “tremendous drive, unsurpassed knowledge, creative solutions and quick, insightful communications.” She is ranked as a top practitioner by World Trademark Review (2020), which reports that she has “deep substantive knowledge married to a practical approach and is not intimidated by the most challenging cases or counterparties.”
Ms. Bannigan is also a frequent speaker and panel member for business, legal practice and educational groups across the country and is frequently quoted, mentioned and published in national and international publications, including Bloomberg, Reuters, Managing Intellectual Property, The World Trademark Review, Practical Law, Intellectual Property Magazine and Law360, as a legal authority on trademark and copyright matters. In December 2019, Ms. Bannigan testified as an expert before the United States Senate Judiciary Intellectual Property Subcommittee on the issue of fraudulent trademarks.
Ms. Bannigan is also an adjunct professor, teaching Advanced Trademark and False Advertising Law at NYU School of Law and Fashion Law at Rutgers School of Law. She previously was a Clinical Visiting Lecturer at Law at Yale Law School, leading the team of students that helped secure the landmark decision in Connecticut Coalition for Justice in Education Funding v. Rell, where the Court declared that several features of Connecticut’s system of education, including the formula for distributing funding to school districts, were unconstitutional.
Ms. Bannigan is active in intellectual property-related professional organizations, including the International Trademark Association, for which she spearheaded the development of INTA’s Pro Bono clearinghouse, was a member of the 2019 Presidential Task Force focusing on corporate responsibility and brands for a better society and, in 2017, was awarded the Volunteer Service Award for Advancement of the Association. She also currently serves as Counsel to the INTA Foundation. Ms. Bannigan is also Chair of the American Bar Association – IPL Trademark Litigation Committee, as well as member of the Section’s Nominating Committee and Deputy Editor-in-Chief of the Section’s Landslide Magazine. In both 2020 and 2021, Ms. Bannigan was the recipient of ABA-IPL Section Leadership Achievement Award. Ms. Bannigan is also a member of the NYC Bar Council on IP and Fashion Law Committee.
Ms. Bannigan has a strong commitment to public service. She has a large pro bono practice and is active in an array of not-for-profit organizations, including for Delivering Good, the Cancer Research Institute and Advocates for Children of New York. Prior to joining the firm, Ms. Bannigan worked in the Office of the New Jersey Governor.
Ms. Bannigan joined the firm in 2007. From 2008 to 2009, she clerked for the Hon. Mary Little Cooper of the United States District Court for the District of New Jersey.
Ms. Bannigan received her J.D. with high honors from Rutgers University in 2007, where she served as production editor of the Rutgers Law Review. She received a B.A. with honors from Rutgers College in 2002. Ms. Bannigan is a member of the Bars of New York and New Jersey and is admitted to practice before the Southern District of New York and the District of New Jersey.
This year saw an increased focus on the extraterritorial application of the Lanham Act, setting up a showdown at the Supreme Court in 2023. The last year also saw cases pressing the intersection of the Lanham Act with the First Amendment and artistic expression—both in the physical world and in the metaverse—and some rulings that will help clarify the likelihood of confusion analysis in various circuits.
As 2022 comes to an end, we look forward to what 2023 has in store.
The past year has seen the implementation of brand-new trademark legislation, significant analysis of trademark liability for new technologies, renewed focus on the doctrine of initial interest confusion, the transformation of Nikes into “Satan Shoes,” the functionality of chocolate dipped cookies, and the end to a long-running case involving two multi-million dollar jury awards for willful infringement. As 2021 comes to an end, we look forward to what 2022 has in store.
When an influencer is paid to promote a brand – and the brand’s name is trademark-infringing – can the influencer be on the hook for the infringement? A federal district court just said yes. The result could widely expand trademark litigation against influencers – and could reshape how companies and their influencers relate to one another contractually.
With brick-and-mortar stores closing at rapid paces and online sales surging, marketers are developing new models to facilitate sales through innovative online platforms. One of those new business models is Redbubble’s hybrid “print-on-demand” service. Two recent Court of Appeals decisions – from the Sixth and Ninth Circuits – consider important questions about when these new approaches to online sales gives rise to liability for trademark infringement, trademark counterfeiting, and right of publicity violations.
It has long been a fundamental tenet of advertising law that comments made to investors, and particularly those made before the commercial launch of a product or service, do not constitute the kind of “advertising” that is regulated by the Federal Trade Commission (FTC) or the National Advertising Division of the Better Business Bureau (NAD), and are outside the reach of the Lanham Act. That is because advertising law regulates communications that propose a commercial transaction; in contrast, the securities laws govern communications to investors that are designed to promote investments. A recent decision from the NAD has put a big crack in that jurisdictional wall, and threatens to breach the dam that has long shielded comments made in investor presentations from potential liability for false advertising.
Late Monday evening, Congress passed a massive omnibus budget bill to avert a federal government shutdown and provide critical COVID-19 relief. But that is not all – much to the surprise of the intellectual property world, the last-minute bill included several pieces of legislation, previously thought to be sidetracked in light of the current lame duck administration, that will alter the landscape of trademark, copyright and patent law as we know it. The changes include a Trademark Modernization Act that restores the rebuttable presumption of irreparable harm when a Lanham Act violation has been proven, allowing brand owners to more easily obtain injunctions, and the creation of a copyright small claims tribunal within the Copyright Office.
This year saw its fair share of high profile trademark cases: the Second Circuit vacated Tiffany & Co.’s $25 million summary judgment win against Costco Wholesale Corp. in a dispute over Costco’s use of the word “Tiffany” to identify a specific type of six-prong diamond ring setting in Tiffany and Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020);* the District Court for the Southern District of New York held that the First Amendment protects the use of Humvees in the acclaimed video game Call of Duty from claims of trademark infringement and dilution, and unfair competition in AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).; and the District Court for the Western District of Texas refused to grant a “Brizzy” hard seltzer brand a preliminary injunction against Molson Coors over a competing “Vizzy” product because both names were based on the common descriptive term fizzy in Future Proof Brands, LLC v. Molson Coors Beverage, 2020 WL 3578327 (W.D. Tex. Mar. 24, 2020), aff’d, 2020 WL 7064607 (5th Cir. Dec. 3, 2020). But among all of the cases, a select few stand out as ones that have shaped trademark law and are already having an impact that may last for years to come.
Last week, the U.S. Patent and Trademark Office (USPTO) released its long-awaited Examination Guide on so-called generic.coms – domain names comprised of generic elements along with a generic top-level domain (such “gTLDs” include .com, .net, .org, .biz and .info). The Guide (No. 3-20, entitled “Generic Terms after USPTO v. Booking.com”) provides needed guidance to trademark examiners on how to apply the U.S. Supreme Court’s decision in USPTO v. Booking.com B. V., 140 S. Ct. 2298 (2020); it also provides guidance to trademark applicants on the standards they can expect the USPTO to apply in considering whether their domain names are registrable as trademarks. Unfortunately, instead of faithfully applying the Supreme Court’s lesson about the importance of consumer perception in assessing whether a term functions as a trademark, the USPTO has relied on factors close to its discredited per se rule that will make it very difficult to register such marks.