Education

Harvard University

B.A.M.E., 1979

University of Maine

J.D., 1985

Bar Admission

District of Columbia

Maine

Virginia

Fred W. Hathaway

Member

Overview

Mr. Hathaway's practice is focused on domestic and international trademark and copyright counseling, clearance of marks and rights in works, and trademark and copyright prosecution and enforcement. Mr. Hathaway also has significant experience with trademark litigation in federal court and before the TTAB, and with domain name disputes.

Prominent Assignments

  • Headed up a nationwide, multi-year project to enforce trademark rights and de-brand hundreds of former TEXACO service stations. Work included supervision of numerous trademark infringement litigations in U.S. district courts in North Carolina, Pennsylvania, Florida, and Missouri (2007-2011).
  • Michelin North America, Inc v. Pirelli, Opp. No. 160,239 (TTAB 2006). Successfully enforced family of "X" trademarks.
  • Chevron U.S.A., Inc. v. J&P Lube, Inc., et al., Civil Action No. 1:05 CV 1414 (E.D. Va. 2006). Secured a consent order requiring a former XPRESS LUBE licensee to amend its trademarks and trade names.
  • Advance Stores Co. v. Refinishing Specialties, 188 F. 3d 408 (6th Cir. 1999). Secured and preserved on appeal extensive geographic rights for trademark use by the national retail auto parts chain ADVANCE AUTO PARTS in trademark litigation against a prior common law user.
  • Choice Hotels Int'l, Inc. v. Sutelan, Opp. No. 110,688 (TTAB 2002). Secured finding that SLEEP INN marks are famous and prevented registration of SLEEPERS mark.
  • Resort Management Group, LLC et al. v. Silver Creek Holding Co., Inc., Opp. Nos. 116,00; 116,391; and 120,800, (TTAB 2001). Cancelled rights in a geographic mark owned by a ski area and secured rights for other area businesses to use the term freely.
  • Alitalia-Linee Aeree Ataliane v. Casinoalitalia.com and Technologia JPR, Inc., 128 F. Supp 2d 340 (E.D. Va. 2001). First domain name case to decide that in rem and in personam actions may not be brought simultaneously under § 43(d) of the Lanham Act.

Professional Involvement

  • International Trademark Association (INTA), Adjunct Professor Special Interest Group
  • American Bar Association, Intellectual Property Law Section
  • American Intellectual Property Law Association

Experience

Fred was a partner with Burns, Doane, Swecker & Mathis, one of the oldest and largest intellectual property firms in the United States. He served for several years as an adjunct professor of trademark and unfair competition law at Georgetown University Law Center. In 2003 and 2009, Fred spent nearly two years seconded to Chevron Corporation in San Ramon, California and leading their Trademark & Copyright practice group. Fred has counseled clients in many diverse industries including energy, transportation, fashion, and food and beverage.

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Acknowledgements

  • Named "IP Star" by Managing Intellectual Property (2013-present)
  • Selected to appear in the IP Stars from Managing IP (MIP) Magazine - 4th Edition