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Overview

Richard is a litigator focusing on intellectual property matters, including copyright, trademark, unfair competition and Internet-related issues.

Honors & Recognitions

  • Named in The Legal 500 - Intellectual Property - Trademarks, Litigation (2015 to present)
  • Named in The Legal 500 - Intellectual Property - Copyright (2013 to present)
  • Named in WTR 1000 World Leading Trademark Professionals, Individuals: Enforcement and Litigation (2014 to present)
  • Named in New York "Super Lawyers" in Intellectual Property Litigation (2007 to present)

Community & Professional Activities

  • American Arbitration Association - Arbitrator, Commercial Panel
  • U.S. District Court, Southern District of New York - Volunteer Court Appointed Mediator
  • New York State Bar Association - Co-Chair, Literary Rights Committee of the Entertainment, Arts & Sports Law Section (2004 - 2006)
  • Cardozo School of Law - Adjunct Professor, Advanced Trademark Law (1995 - 1998)

Experience

Experience

  • Weil, Gotshal & Manges, Associate (1985 - 88)

Newsroom

Speaking Engagements

  • Richard Mandel participated in a PLI panel on Trademark Prosecution: Strategies for Potential Litigation
    Practicing Law Institute, 2014
  • Alternatives to Federal Court Trademark Litigation
    Practicing Law Institute, 2004 - 2013
  • Taking and Defending Depositions in Trademark Cases
    American Bar Association - 25th Annual Intellectual Property Law Conference, 2010
  • Protecting the Value of Your Brand
    Fancy Food Show, 06.2003
  • Discovery Tasks in Litigation
    INTA Annual Meeting, 05.2002
  • Mediation in Entertainment Industry
    New York Women in Film & Television/AAA, 02.1999
  • Copyright Basics
    Jewelry Expo, 1996
  • Copyright Developments
    New York State Bar Association, 1996
  • Expert Witnesses
    Copyright Society, 1995

Publications

  • Outside Counsel column on Domain Name Disputes
    New York Law Journal, 2002
  • IP Litigator - Copyright Column (1995 - 1998)
  • 'Liquor Advertising:  Resolving the Clash Between 1st and 21st Amendment,' Note (New York University Law Review, April 1994)

Cases

Cases

  • North Atlantic Operating Company, Inc. et al. v. DRL Enterprises, Inc., 2016 TTAB LEXIS 282 (T.T.A.B. 2016) – successfully represented petitioners-opposers in consolidated opposition and cancellation proceeding challenging claimed rights in the designations 1.0, 1.25 and 1.5 for cigarette rolling papers.  Following trial, the Board issued a 98 page opinion holding that the decimal designations were generic or alternatively were descriptive without secondary meaning, cancelling applicant-registrant’s registrations for stylized versions of such designations and sustaining oppositions against its applications to register the decimals in standard character form.  
  • New York Yankees Partnership v. IET Products and Services, Inc., 2015 TTAB LEXIS 96 (T.T.A.B. 2015) – represented New York Yankees in successfully opposing applications to register applicant’s top hat design mark and THE HOUSE THAT JUICE BUILT word mark, which were purportedly intended to parody the Yankees’ primary logo top hat mark and THE HOUSE THAT RUTH BUILT word mark.  In a precedential ruling by a panel of seven judges, the Board found that applicant’s marks resulted in a likelihood of dilution by blurring of the New York Yankees baseball club’s famous trademarks.  The Board ruled that the parody defense was inapplicable in Board proceedings involving claims of dilution because of an applicant’s necessary intention to use any applied for mark commercially as a trademark. 
  • Capitol Records, LLC v. ReDigi, Inc., 940 F. Supp.2d 640 (S.D.N.Y. 2013) – obtained summary judgment on behalf of plaintiff record company on claims for direct and secondary copyright infringement against start-up technology company purporting to provide “the world’s first and only online marketplace for digital used music.”  In case of first impression, Court ruled that the first-sale doctrine did not permit lawful owners of digital music to re-sell music files because such activities involved reproduction of the copyright owner’s sound recordings. To read the decision, click here.
  • New York Yankees Partnership v. Evil Enterprises, Inc., 2013 TTAB LEXIS 72 (T.T.A.B. 2013) – represented New York Yankees in successfully opposing clothing company’s application to register mark BASEBALLS EVIL EMPIRE.  The Board held that the Yankees club had established prior rights in EVIL EMPIRE designation based on extensive use of that term by the public, press, fans and media to refer exclusively to the New York Yankees baseball club, and concluded that applicant’s mark would result in a likelihood of confusion among consumers when applied to clothing and would falsely suggest a connection with the Yankees.  To read the decision, click here.
  • The Hershey Company v. Promotion In Motion, Inc., No. 07-CV-1601 (SDW) (D. N.J. 2013) – represented defendant candy manufacturer in defeating Hershey’s claims for trademark infringement and dilution. Following bench trial, Court ruled that defendant’s proposed use of SWISSKISS for Swiss chocolates did not infringe or dilute Hershey’s KISSES trademarks.  To read the decision, click here.
  • Ferrari S.p.A. v. Exoto, Inc., No. CV 99-10205 (DSF) (C.D. Cal. 2010) - obtained order enforcing settlement agreement on behalf of Ferrari prohibiting use of its trademarks in connection with defendant's sale of miniature replica model cars.  Following Ferrari's successful appeal to the Ninth Circuit reversing the original denial of Ferrari's motion, the District Court held that no valid license had ever been culminated between Ferrari and Exoto overriding the terms of their original settlement agreement, and that the post-settlement negotiations did not otherwise create a valid estoppel or laches defense precluding enforcement of the settlement agreement.  The Court also rejected Exoto's fair use defense, ruling that any such defense had effectively been waived by virtue of the parties' earlier settlement prohibiting use of Ferrari's marks in any context.
  • Wolfgang Puck v. W. Steak Corp., No. CV 08-3394 (GAF) (C.D. Cal. 2008) - defeated preliminary injunction motion by chef and restaurateur Wolfgang Puck seeking to prevent opening of restaurant in Beverly Hills, California under the name 'Wolfgang's Steakhouse by Wolfgang Zwiener.' Court held that parties' agreement permitted use of the selected name notwithstanding any evidence of confusion in the marketplace.
  • Sanofi-Aventis v. Advancis Corp., 453 F. Supp.2d 834 (D. Del. 2006) - represented multi-national drug manufacturer in successful trademark infringement suit against publicly traded start-up drug company.  After bench trial, Court held that ADVANCIS name was confusingly similar to AVENTIS trademark, and also violated state dilution laws.
  • Major League Baseball Properties, Inc. v. Opening Day Productions, Inc.,385 F. Supp.2d 256 (S.D.N.Y. 2005) - obtained summary judgment on behalf of Major League Baseball Properties granting declaratory relief and dismissing counterclaims alleging trademark infringement of the 'Opening Day' trademark and misappropriation of ideas allegedly submitted to Major League Baseball regarding sponsorship program.
  • Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F. Supp.2d 355 (S.D.N.Y. 2003) - obtained summary judgment for defendant dismissing case brought by the manufacturer of the popular 'Swedish Fish' gummy candy involving product configuration and packaging trade dress claims, trademark infringement and dilution claims and false advertising claim.
  • Prime Media, Inc. v. PRIMEDIA Inc., 33 F. Supp.2d 932 (D. Kan. 1998) - defeated preliminary injunction motion brought against PRIMEDIA magazine publisher. After an evidentiary hearing, the Court ruled that company's newly adopted name did not infringe rights of custom publisher previously using 'Prime Media' as its corporate name and service mark.
  • Marcy Playground, Inc. v. Capitol Records Inc., 6 F. Supp.2d 277 (S.D.N.Y. 1998) - defeated preliminary injunction application against Capitol's hit record album 'Marcy Playground' based on alleged claim that record's producer credits were false, in violation of section 43(a) of the Lanham Act. The Court held that plaintiffs failed to establish irreparable harm or a strong likelihood of success on the merits.

Education

New York University School of Law (JD 1985; Order of the Coif; New York University Law Review)

New York University (BA 1982, summa cum laude; Phi Beta Kappa)

Admissions

  • New York
  • United States Court of Appeals for the Federal Circuit
  • United States Court of Appeals for the Ninth Circuit
  • United States Court of Appeals for the Second Circuit
  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York
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