Arlana S. Cohen

Partner

• 1133 Avenue of the Americas, NY 10036-6799 Ph: 212.790.9237Fax: 212.575.0671

• Arlana has 25 years of experience in all aspects of trademark law, including issues of associated marketing law, contests  and promotions. She focuses on branding and product development, licensing, anti-counterfeiting actions on an international scale, trademark prosecution in the U.S. Patent and Trademark Office, opposition and cancellation actions before the Trademark Trial and Appeal Board, and litigation before the various U.S. district and appellate courts. She has served as a speaker for ALI-ABA and INTA on trademark law and has appeared on WNBC -- TV regarding anti-counterfeiting law.

• • Cases

    Luxo A.S. v. Disney and Pixar, (S.D.N.Y. 2009).  Negotiated mutually agreeable, confidential settlement for Luxo A.S., in a highly-publicized trademark infringement case.  The case arose when Disney introduced an actual lamp product whereas prior to this only Pixar's well-known logo used a desk lamp image, which itself was inspired by the real-life LUXO lamp on its executive's desk.

    Dessert Beauty v. Fox, 89 USPQ 2d 1432 (S.D.N.Y. 2008), aff'd. No. 08 Civ. 4479 (2d Cir. 2009).  Obtained summary judgment, affirmed on appeal, for cosmetics clients, Dessert Beauty and Sephora that their respective usage of the phrases like "deliciously kissable love potion fragrance" or "belly button love potion fragrance" was statutory descriptive fair use of a term that described, not the product, but rather the purpose for which consumers would use the product and therefore did not infringe the Plaintiff's registered mark LOVE POTION for perfumed essential oils. 

    L.C. Licensing, Inc. v. Berman, Opposition (T.T.A.B.).  Obtained precedental decision holding an application to register ENYCE for automobile accessories likely to be confused with ENYCE for hip-hop clothing.  The TTAB also ruled one may not prove intent to use only oral testimony -- there must be at least some documentation evidencing such steps taken to use same.

    Marvel Enterprises, Inc. and Marvel Characters, Inc. v. Toy Season, Inc., 05 Civ. 3149 (S.D.N.Y. 2006). Obtained ex parte seizure order seizing truckloads of counterfeit (and dangerous) SPIDER-MAN toys.  Also obtained incontested summary judgment damages in an amount of $2 million and collected and obtained in settlement all fees spent by client.

    Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F. Supp. 2d 512 (S.D.N.Y. 2002). Won, on summary judgement, a design patent and trade dress case, including a decision which granted damages to our client.

    McDonald's Corp. v. Burger King Corp., 107 F. Supp. 2d 787 (E.D. Mich. 2000). Successfully blocked McDonald's efforts to stop the release of 'Big Kids Meals,' first defeating motion for preliminary injunction and then obtaining summary judgment.

    Something Old, Something New, Inc., and Laurie Cybul v. QVC, Inc., Joan Rivers Rosenberg, and JMAM, LLC, 53 U.S.P.Q. 2d 1715 (S.D.N.Y. 1999). Obtained dismissal at close of plaintiff's case in chief on behalf of defendants QVC and Joan Rivers in a trademark infringement case in which the plaintiff was trying to claim rights in the acrostic 'DEAREST,' used in jewelry since Victorian times.

  • Articles & Speeches

    Catching Big Fish - Using investigators for effective, well planned anti-counterfeiting enforcement (Originally published in: IP World, May, 2005).

  • Honors & Awards

    Named in New York  "Super Women Lawyers" in Intellectual Property (2013)

    Named in New York  "Super Lawyers" in Intellectual Property  Law (2009-2012)

    Named in New York  "Super Lawyer", Corporate Counsel (2010-2011)

    Named by World Trademark Review 2011  as a "solid litigator and among the top 25 trademark practitioners in New York in both contentious and non-contentious categories and in 2012 as "a bright, talented and aggressive advocate"; she divides her practice between all aspects of trademark prosecution and litigation, and is a superb all-rounder.

    Named in The Legal 500: The Client's Guide to the US Legal Profession 2011 Intellectual Property Trademarks:Litigation (The Legal 500, 2011)

  • Affiliations

    Member, International Anti-Counterfeiting Coalition

    Member, INTA Information Resources Committee

    Member, NYIPLA

    Member, ALIPA, Anti-Counterfeiting Subcommittee of Copyright Committee

    Member, New York State Bar Association -- Member, Intellectual Property Subcommittee