Squire Patton Boggs resolves dispute with trademark squatter using firm's name in China
Trademarks related to Norton Rose Fulbright and Osborne Clarke also transferred as dispute concludes
June 12, 2018 at 11:20 AM
2 minute read
Squire Patton Boggs has resolved its domain name and trademark disputes in China, having settled with the company that had appropriated use of the firm's name there.
"Full control of our trademark and domain name in China has been transferred to the firm," said a firm spokesman based in New York.
The terms of the settlement were not disclosed.
The disputed domain name in question, squirepattonboggs.net, has been taken offline. A website using that domain name claiming to be an intellectual property law firm called Squire Patton Boggs first appeared in early 2017. But the domain name was registered first by a Chinese company in May 2014, immediately after legacy Squire Sanders and Patton Boggs announced a merger.
Last year, the real Squire Patton Boggs took its Chinese squatter before the ICANN-accredited Asian Domain Name Dispute Resolution Centre but it lost the case, as a single-member panel pointed out that the Am Law 100 firm did not own trademark rights in China.
The domain name squatter, a company based in northern China's Qinhuangdao City, has been in the business of registering Chinese trademarks involving foreign law firm names. Before filing the Squire Patton Boggs trademarks in 2014, the company also registered trademarks using the Norton Rose Fulbright name in 2012.
According to records from China's Trademark Office, all trademarks related to Squire Patton Boggs have been transferred. Trademarks related to Norton Rose Fulbright and Osborne Clarke, another firm whose name was squatted by the same company, have all been transferred.
Squire Patton Boggs' team handling the case was led by Los Angeles-based consultant Paolo Beconcini, who heads up the firm's China intellectual property team. Beconcini had been based in China since 2001 before relocating to Los Angeles earlier this year. He joined Squire Patton Boggs in 2016 through its merger with his previous firm, Carroll, Burdick & McDonough.
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