R. Charles Henn Jr.
Partner

1100 Peachtree Street NE Suite 2800, Atlanta, GA USA 30309

3 TIMES SQUARE, New York, NY USA 10036

Overview

Charlie Henn concentrates his practice in the area of intellectual property litigation, regularly representing companies and sports leagues and teams in cases involving trademark and trade dress infringement claims. An experienced trial lawyer, he was co-lead trial counsel for the plaintiff in the adidas v. Payless case, which resulted in the largest trademark-infringement verdict ever ($305 million), and he also has obtained defense trial verdicts in cases involving claims for tens of millions of dollars.

Charlie has received numerous national and local honors recognizing his professional accomplishments, including being named by LawyersUSA as one of six “Lawyers of the Year” nationally in 2008. In 2010, he was the sole US winner of the International Law Office (ILO) Client Choice Award for Intellectual Property, which recognizes the top provider of client service on intellectual property matters.

He is annually listed as a leading intellectual property litigator by Chambers USA: America's Leading Lawyers for Business , The Best Lawyers in America ®, Legal 500 , World Trademark Review 1000 , World IP Review , Super Lawyers , Managing Intellectual Property , and Georgia Trend . Chambers USA has noted that Charlie “is pragmatic, creative, and solution-oriented” and “an excellent and skilled negotiator with a great balance of trustworthiness, likeability, and advocacy.”

Charlie has extensive experience with consumer surveys and working with expert witnesses in the context of trademark litigation. His survey-related publications include “Likelihood of Confusion Surveys: The Ever-Constant Eveready Format; The Ever-Evolving Squirt Format” (with Jerre Swann), 109 TMR 671 (2019), “Internet Surveys in Trademark Cases: Benefits, Challenges, and Solutions” (with Matthew Kugler) in the Diamond-Swann book Trademark & Deceptive Advertising Surveys: Law, Science & Design (2d ed. 2022), “Why Ask Why? A Critical Assessment of an Historical Survey Artifact,” 113 TMR 772 (2023), and “Survey Methodologies to Overcome ‘Failure to Function’ Refusals in the U.S. Patent and Trademark Office,” 114 TMR 560 (2024).

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Experience

Lead trial counsel for Floor & Decor in a trademark infringement case brought by another flooring retailer, RVC Floor Decor, in the Eastern District of New York. The trial initially began as a jury trial, but in response to motions brought by Kilpatrick, the Court struck the jury mid-trial, resulting in a bench trial. The court ultimately entered a full defense verdict, finding that the plaintiff lacked secondary meaning and that no likelihood of confusion existed between the parties’ marks. RVC Floor Decor Ltd. v. Floor & Decor Outlets of Am., Inc., No. 18-cv-6449, 2024 WL 2847139 (E.D.N.Y. 2024).

Represented Major League Baseball Properties and the Chicago Cubs Baseball Club, LLC in a widely publicized lawsuit in federal court in Illinois claiming the defendants, vendors, were producing and planning to sell merchandise that infringed and counterfeited the trademarks of MLB and the Cubs. The Court granted both a temporary restraining order, authorizing the seizure and impoundment of the knock-off products, and a preliminary injunction prohibiting such sales. Major League Baseball Properties, Inc. & Chicago Cubs Baseball Club, LLC v. Stevens et al., No. 1:16-cv-09140 (N.D. Ill. 2016).

Lead trial and appellate counsel for four major universities and The Collegiate Licensing Company (CLC) in a trade dress infringement case. The firm secured a ruling rejecting the theory that school colors were aesthetically functional and that the defendant's use was "fair." After prevailing on summary judgment on the issue of liability for trademark infringement and unfair competition, we conducted a jury trial on monetary relief. The plaintiffs recovered damages in the form of a reasonable royalty and an accounting of defendants’ profits. The defendants later appealed, and the Fifth Circuit unanimously affirmed. Louisiana State University v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008).

Co-lead trial counsel for adidas America Inc. and adidas-Salomon AG in trademark infringement litigation against Payless Shoesource involving the defendant’s infringing use of the well-known and distinctive adidas Three-Stripe Mark. Following a 14-day trial and two days of deliberation, the jury found unanimously in adidas' favor on all seven claims, including trademark infringement, trade-dress infringement, unfair competition and unlawful and deceptive trade practices. The jury awarded $305 million in monetary relief, including $137 million in punitive damages. This verdict was the largest in history for a trademark infringement case. Following entry of final judgment in excess of $60 million, the parties later settled for an undisclosed amount. adidas America Inc. v. Payless Shoesource Inc., No. CV01-1655 (D. Or. Nov. 11, 2008).

Lead trial counsel for the University of Kansas against JoeCollege.com, a retailer selling various apparel using colors and other indicia of the University. Obtained award of attorneys' fees. University of Kansas v. Larry Sinks, et al., 2008 U.S. Dist. LEXIS 23765 (D. Kan. 2008).

Trial counsel for Jan Voda, M.D., a cardiologist, in a patent infringement suit related to angioplasty catheters against Cordis, a division of Johnson & Johnson, in the Western District of Oklahoma. After a two-week trial, a jury found Dr. Voda’s patents to be valid and Cordis willfully infringed. In August 2006, the court awarded Dr. Voda damages at a 7.5 percent royalty rate, double compensatory damages and attorneys’ fees. Voda v. Cordis Corp., 536 F.3d 1311 (Fed. Cir. 2008).

Represented fourteen universities in trademark counterfeiting and infringement litigation against a company that sold counterfeit cheerleading uniforms and other unlicensed items bearing university trademarks. The court granted a temporary restraining order and authorized immediate seizure of the counterfeit merchandise, manufacturing supplies, financial records, and computer hardware from the defendants. The case subsequently settled on favorable terms, including entry of a permanent injunction and final judgment in favor of the universities. The University of Georgia Athletic Association, Inc. et al. v. Signature Diversified, Inc. et al., No. 4:12-CV-107 (N.D. Ga. filed May 8, 2012).

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Insights
Education

University of North Carolina School of Law J.D. (1998) cum laude

Emory University B.A. (1995) Political Science and French Literature, summa cum laude

Admissions

Georgia (1998)

New York (2016)

Court Admissions

Georgia Court of Appeals

Supreme Court of Georgia

U.S. Court of Appeals for the Eleventh Circuit

U.S. Court of Appeals for the Fifth Circuit

U.S. Court of Appeals for the Fourth Circuit

U.S. Court of Appeals for the Ninth Circuit

U.S. Court of Appeals for the Second Circuit

U.S. Court of Appeals for the Seventh Circuit

U.S. Court of Appeals for the Tenth Circuit

U.S. District Court for the District of Colorado

U.S. District Court for the Eastern District of New York

U.S. District Court for the Middle District of Georgia

U.S. District Court for the Northern District of Georgia

U.S. District Court for the Southern District of New York

U.S. Supreme Court

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Professional & Community Activities

Leadership Georgia, Class of 2013

Leadership Atlanta, Class of 2011

Marshall Memorial Fellow, Class of 2009

Coverdell Leadership Institute, Class of 2008

International Trademark Association

National Association of College and University Attorneys (NACUA)

Georgia Bar, Entertainment & Sports Law Section (Vice Chair, 2007-2012)

The Federalist Society (President of the Atlanta Lawyers Chapter, 2001-2006)

Boys & Girls Clubs of Metro Atlanta
   Board Chair
   Executive Board Member (2014-Present)

Theatrical Outfit, Board of Trustees (2008-2015 & 2017-2022)

Flying Carpet Theater, Board Member (2003-Present)

All Saints Episcopal Church, Vestry Member (2018-2021)

Emory University, Board of Visitors (2013-2016)

ArtsATL.com, Board Member (2009-2017)

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