Photo of Brendan O'Rourke

Brendan O'Rourke is the immediate past co-chair of the Firm’s Litigation Department and chair of the False Advertising & Trademark Group. From the inception of his career, Brendan has concentrated in the field of trademark, false advertising, and unfair competition law, and has provided day-to-day trademark, false advertising, and Lanham Act counseling to many Fortune 500 clients, as well as start-up companies and entrepreneurs. He is a first-rate, first-chair trial lawyer, having successfully tried numerous trademark, trade dress, unfair competition, false advertising, copyright and entertainment cases involving diverse products and companies, and has significant experience in obtaining emergent relief, including preliminary injunctions, temporary restraining orders, seizure orders, and ex parte relief.

His experience includes all phases of trademark and false advertising counseling and litigation, including complex issues involving consumer survey research and claim substantiation, and inter partes proceedings before the U.S. Trademark Trial and Appeal Board and the Federal Circuit.

Brendan is also a very experienced commercial litigator and has represented a diverse array of well-known clients in state and federal courts throughout the United States.

Brendan is a frequent lecturer, has had numerous articles published in the fields of trademarks, false advertising, copyrights, and patents, and has appeared on national television to discuss trademark litigation. He has chaired INTA's advanced forum on the Trademark Law and Revisions Act, INTA's third annual "Trademarks in Cyberspace" forum, INTA's Annual Leadership Meeting, as well as INTA's Annual Basics Forum. He also has served on many INTA project teams, including the joint forum between INTA and NAD on false advertising, where he led a discussion and panel on claim substantiation. Brendan is also a frequent lecturer for the AIPLA and NYIPLA.

In addition to his vast experience trying cases, Brendan has significant experience in mediation through both the federal courts and the INTA panel of neutrals for clients such as Kraft, Estee Lauder, Madonna, Bristol-Myers Squibb, Federal Signal, and EMI. Brendan's experience includes Internet and domain name disputes, including successful ICANN proceedings for Madonna, Estee Lauder, and Shania Twain, and self-regulatory advertising arbitrations before the National Advertising Division ("NAD") and the National Advertising Review Board ("NARB") of the Better Business Bureau on behalf of clients such as Colgate-Palmolive, Bristol-Myers Squibb, SC Johnson, Mead Johnson, and Bausch & Lomb.

Brendan has tried and been involved in a variety of cases and reported decisions of interest in his field, including Stark v. Diageo Chateau & Estate Wines; Taymor v. 8 Legged Production; Jackson Family Wines v. Diageo Chateau & Estate Wines; Buday v. The New York Yankees; Major League Baseball v. Upper Deck; Anheuser-Busch v. Major League Baseball; GlaxoSmithKline v. Colgate-Palmolive; Mendenhall v. Hanesbrands; The London Group v. SiTV; Lester v. U2; Brando Estate v. Madonna; Perot Government Systems v. 21CSI; Colgate v. P&G; Guinness v. Anheuser-Busch; Extreme Color v. Clairol; TT Sounds Good v. Tommy Lee; EMI v. Hill Holiday; Emergency One v. American Fire Eagle; RIAA v. Napster; Parisi v. Madonna; Platypus v. Bad Boy and Sean John; SC Johnson v. Clorox; Phillip Morris v. Allen; Elk v. GAF; Fabrications v. Hygenic; Bristol-Myers v. McNeil Labs; Kunycia v. Kay Bee Toy Stores; L.A. Gear v. Thom McAn; Vision Street Wear v. Melville; Edison Bros. v. Cosmair, McDonald's Corp. v. McBagels, and MasterCard v. American Express.

Recognized in Chambers USA and US Legal 500, Brendan is praised for "serving his clients aggressively and effectively” and is recommended for his “sound, practical advice.” Brendan was inducted into the inaugural class of The Legal 500 Hall of Fame in 2017.

Last month, our post about art NFTs and the DMCA highlighted the distinction between non-fungible tokens and the copyrighted works they represent. In the context of copyright, this dichotomy is generally uncontroversial: In most cases, an NFT merely points to an underlying work but does not contain a copy of the work it represents, and so it is conceptually and legally separate from that work for copyright purposes. But NFTs can be used to signify ownership of products beyond digital artworks—and where those products involve trademarks, new legal issues arise.

Enter Nike: On February 3, the apparel and footwear giant sued StockX, an online resale marketplace for sneakers and other collectibles, in the US District Court for the Southern District of New York, alleging trademark infringement in connection with StockX’s issuance of NFTs featuring Nike sneakers. In the complaint, Nike asserts that these Nike-branded “Vault NFTs”—which StockX’s website says merely track ownership of a physical pair of sneakers in the company’s possession, like a virtual claims ticket or receipt—are in fact “new virtual products.” (Nike v. StockX LLC, No. 22-00983 (S.D.N.Y. filed Feb. 3, 2022)). In their March 31 answer, StockX reasserts their website’s position and insists that “Vault NFTs are absolutely not ‘virtual products’ or digital sneakers” (emphasis in original). StockX instead claims that the Vault NFTs are merely a convenient use of new technology that allows buyers to track ownership without having to possess the physical sneaker, such that the “owner can make a future trade without incurring transaction costs, delay, or risk of damage or loss associated with shipping physical sneakers to StockX and then to the ultimate recipients.”