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Trademark/Unfair Competition

Apparel
  • Infringement Defense
    Gathered third party use evidence and worked with experts in the creation of secondary meaning surveys that persuaded the International Trade Commission to rule that the Converse Chuck Taylor All-Star Sneaker’s combination of toe cap, toe bumper and midsole stripe design elements was not protectable after having settled the case for three defendants with a provision giving them be benefit of this decision without the cost of going to trial. In the Matter or Certain Footwear Products, Inv. No. 337-TA-936 (I.T.C. 2016).
  • Infringement Defense
    Successfully limited temporary restraining order in representing importer of a container of assorted men's suits, some of which allegedly had unauthorized labels bearing the plaintiff's trademark. Settled. Ermenegildo Zegna v. 3 Friends Trading LLC, No. 03 Civ. 4626 (S.D.N.Y. 2003).
  • Infringement Defense
    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. Something Old, Something New, Inc. v. QVC, Inc., 53 U.S.P.Q. 2d 1715 (S.D.N.Y. 1999).
  • Infringement Defense
    After being retained by defendant L.A. Gear on appeal, obtained the reversal of a final judgment that defendant's copying of the trade dress of plaintiff's sneaker constituted unfair competition in view of defendant's prominent use of its own trademarks. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993).
  • Infringement Defense
    Defeated plaintiff's motion for a preliminary injunction seeking to prevent the defendants' use of the descriptive phrase 'feels like a sneaker' in advertisements for women's shoes. United States Shoe Corp. v. Brown Group, Inc., 740 F. Supp. 196 (S.D.N.Y. 1990).
Computer software; Technology
  • Infringement Defense
    Successfully represented defendant, a Canadian software company, against a preliminary injunction motion in action for copyright infringement based upon the look and feel of computer screen displays and a claim for trademark infringement based upon the similarity of the trademarks TRACK IT and TRACK MAN for help desk software. Settled. Blue Ocean Software, Inc. v. Track Man Help Desk Software, Inc. and Help Star.com, Inc., No. 8:01CV1365 T 24 (M.D. Fla. 2002).

Cosmetics; Fragrances
  • Infringement Defense
    Obtained a summary judgment, affirmed on appeal, that use of phrases like “deliciously kissable love potion fragrance” on DESSERT fragrances 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 did not infringe the registered mark LOVE POTION for perfumed essential oils. Dessert Beauty, Inc. and Sephora, Inc. v. Mara Fox, No. 05 Civ. 3872 (S.D.N.Y. 2008). aff’d. No. 08 Civ. 4479 (2d Cir. 2009).
  • Infringement Claim
    Represented distributor of LIPFUSION lip plumper in trademark dress action against producers of television soap opera series 'All My Children,' which featured a fictional cosmetics company named 'Fusion,' and obtained settlement the day following a preliminary injunction hearing against the marketing of a FUSION perfume. Settled. Fusion Beauty, Inc. v. The Walt Disney Co., et. al., No. 05 Civ. 6256 (S.D.N.Y. 2005).
  • Infringement Claim
    Obtained judgment of infringement, after appeal, based on plaintiff's 100% mark for expensive skincare lotion versus defendant's use of same mark for inexpensive line of shampoos and other toiletry products. Estee Lauder Inc. v. The Gap, Inc., 932 F. Supp. 595 (S.D.N.Y. 1996), rev'd 108 F.3d 1503 (2d Cir. 1997).
  • Infringement Claim
    Obtained preliminary injunction based on trademark and trade dress infringement of CLINIQUE skin care products. Clinique Labs. Inc. v. DEP Corp., 945 F. Supp. 547 (S.D.N.Y. 1996).
  • Infringement Claim
    Defeated defendant's motion for summary judgment in an action claiming that defendant's use of the trademark WHITE LACE infringed plaintiff's trademark WHITE LINEN, both for fragrance products. Estee Lauder, Inc. v. Airs Int'l, Inc., 37 U.S.P.Q. 2d 1607 (S.D.N.Y. 1995).

Food; Supplements; Beverages; Restaurants

  • Infringement Defense
    Prevailed at representing 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. The Hershey Company v. Promotion In Motion, Inc., No. 07-CV-1601 (SDW) (D. N.J. 2013).
  • Infringement Claim
    Defeated a declaratory judgment motion of non-infringement by getting the suit dismissed on the ground that the court lacked jurisdiction. House Counsel’s statement that its client objected to the use of the marks in issue was held not to create “a case of actual controversy.” 1-800-Flowers.com, Inc. v. Edible Arrangements, LLC, No. 12 CV 1483 (DRH) (ARL) (E.D.N.Y. 2012).
  • Infringement Defense
    Defeated a motion for a preliminary injunction by the owners of the Cotton Club nightclub in New York seeking to prevent the use of the title of New York City Center's Encores musical production, 'COTTON CLUB PARADE as a trademark infringement and breach of contract. The Court held that plaintiff’s delay in bringing its application belied any claim of urgency, and that the balance of the equities was strongly in defendant’s favor. JR Caterers, Inc. v. New York City Center, Inc. , 12 CV 7073 (LLS) (S.D.N.Y. 2012).
  • Infringement Claim
    Obtained a jury verdict of $3.1 million for the plaintiff in a trademark infringement action claiming that AMERICAN LONGEVITY for a nutritional supplement infringed LONGEVITY for competing products. Longevity Network, Ltd. v. Wallach, not reported (C.D. Cal. 2006). This was after the affirmance of an appeal from a successful cancellation proceeding in Longevity Network, Ltd. v. Wallach, 2004 TTAB 121 (T.T.A.B. 2004), aff'd, not reported (W.D. Cal. 2005).
  • Infringement Defense
    Successfully represented defendant in obtaining summary judgment against claim that its SQWISH fish-shaped gummy candy violated plaintiff's trademark and product configuration trade dress in its SWEDISH FISH fish-shaped gummy candy. Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003).
  • Infringement Claim
    Represented plaintiff in trademark infringement suit involving novel issues concerning the territoriality of trademark rights. Otokoyama Co. Ltd., a Japanese Corporation v. Wine of Japan Import Inc., 985 F. Supp. 372 (S.D.N.Y. 1997), aff'd, U.S. App. LEXIS 6048 (2d Cir. 2001).
  • Infringement Defense
    Successfully blocked McDonald's efforts to stop the release of 'Big Kids Meals' (a $125 million launch), first defeating motion for preliminary injunction and then obtaining summary judgment. McDonald's Corp. v. Burger King Corp., 107 F. Supp. 2d 787 (E.D. Mich. 2000).
  • Infringement Defense
  • Obtained judgment that BRAVO'S for tortilla chips did not infringe BRAVO'S for crackers by extending Polaroid factors to competitive goods. Vitarroz Corp. v. Borden, Inc., 644 F.2d 960 (2d Cir. 1981).
Games
  • Counterfeiting Claim
    Obtained ex parte order pursuant to which seized over 25,000 counterfeit SPIDER-MAN and HULK toys filling up 3 tractor-trailer trucks, seized business records, and froze bank accounts. Marvel Enterprises, Inc. v. Toy Season, Inc., No. 05 Civ. 3149 (S.D.N.Y. 2005).
  • Infringement Defense
    Successfully defended against trademark, copyright, trade dress and design patent claims alleging that SWAMP CHECKERS infringed POND CHECKERS for board game. Checkers Alive Games, Ltd. v. Pressman Toy Corp., not reported (D.N.J. 2005).
Healthcare
  • Infringement Claim
    Obtained a permanent injunction, after trial, based on holding that the name and brand ADVANCIS infringed AVENTIS and SANOFI-AVENTIS, all for pharmaceutical products. Sanofi-Aventis, Inc. v. Advancis Pharmaceutical Corp., No. 03 Civ. 1083 (D. Del. 2006).
    Infringement DefenseDenial of summary judgment and dismissal of claim, upheld on appeal, that the trademark QUITED NORTHERN MOIST-ONES allegedly infringed on the trademark WET ONES, both for pre-moistened wipes, since the prominent presence if the distinct brand name QUILTED NORTHERN was held to support the finding of a lack of confusing similarity of the marks viewed in their entireties. Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004).
  • Infringement Claim
    Represented plaintiff Columbia University in an action for trademark infringement against the Columbia/HCA Healthcare Corporation arising out of the use of the mark COLUMBIA for hospitals. After a three week expedited trial, the District Court held that there was no infringement. On appeal to the Second Circuit, however, the case was settled with an agreement that Columbia/HCA would not use COLUMBIA in the New York City metropolitan area where it could be confused with the COLUMBIA PRESBYTERIAN MEDICAL CENTER. Trustees of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733 (S.D.N.Y. 1997).
  • Infringement Claim
    Successfully represented PDK Laboratories against various defendants in an action for trade dress infringement involving similar packaging designs for over the counter pharmaceutical products. Settled in 2002. PDK Labs, Inc. v. Village Consumer Prods. LLC, No. 01 Civ. 5284 (E.D.N.Y. 2001).
Music
  • Infringement Defense
    First, defeated preliminary injunction motion by a turntabilist known as DJ Logic who sought to prevent the release by our client Def Jam Records of an album by a rap musician known as Logic. Then, obtained a grant of our client’s motion for summary judgment. Kibler v. Hall, et al, 14 Civ 10017 (E.D. Mich. 2015), aff’d, No. 15-2516 (6th Cir. 2016).
  • Misrepresentation Defense
    Successfully represented Capitol Records in defeating preliminary injunction motion seeking to enjoin 'Marcy Playground' hit record album based on allegation that the producer credits on the record were false. Marcy Playground, Inc. v. Capitol Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998).
  • Royalty Defense
    Successfully represented defendant EMI UK in a royalty dispute with the estate of the late recording artist Paul Robeson. Settled. Paul Robeson v. EMI, Index No. 11614/2000 (N.Y. Sup. Ct. 2001).
Publishing
  • Infringement Claim
    Successfully represented the Chabad Lubavitch religious publisher, Merkos L’Inyonei Chinuch, Inc.  (“Merkos”), in an appeal to the United States District Court for the Eastern District of New York, which affirmed the decision of the Trademark Trial and Appeal Board that the Lubavitch Kehot Logo is a trademark (not a certification mark) that is owned by our client Merkos and can be registered.  The judge denied the other side’s motion to dismiss our client’s counterclaims for trademark infringement based upon the statute of limitations or laches. Vaad L’Hafotzas Sichos, Inc. v. Kehot Publications Society, No. 10 Civ. 4976 (E.D.N.Y. 2013). After a four day bench trial and our post-trial motion, the judge amended his factual findings and changed his judgment so that he ultimately held that there was a likelihood of confusion but he found that the claim was barred by laches. Vaad L’Hafotzas Sichos, Inc. v. Kehot Publications Society, No. 10 Civ. 4976 (E.D.N.Y. 2016).
  • Infringement Defense
    Successfully represented media conglomerate in defeating a preliminary injunction motion seeking to enjoin continued use of the PRIMEDIA name based on allegation of infringement by the owner of a federal trademark registration for the mark PRIME MEDIA for custom publishing and related services. Prime Media, Inc. v. PRIMEDIA Inc., 33 F. Supp. 2d 932 (D. Kan. 1998).
  • Infringement Defense
    Successfully defended trademark infringement suit, involving First Amendment issues, against Pee Wee Scouts children's book series. Girl Scouts of the United States v. Bantam Doubleday Dell Publishing Group, Inc., 996 F.2d 1477 (2d Cir. 1993), aff'g 808 F.Supp. 1112 (S.D.N.Y. 1992).
  • Infringement Defense
    Successfully represented defendant, a subsidiary of Reader's Digest, in obtaining summary judgment, affirmed on appeal, dismissing trademark infringement claim that NEW CHOICES PRESS for books was infringed by NEW CHOICES FOR THE BEST YEARS for magazines. Lang v. Retirement Living Pub. Co., 759 F. Supp. 134 (S.D.N.Y. 1991), aff'd, 949 F.2d 576 (2d Cir. 1991).
  • Infringement Claim
    Obtained preliminary injunction against trade dress of CELEBRITY PLUS magazine on the basis of its similarities with the trade dress of PEOPLE WEEKLY magazine. Time Inc. Magazine Co. v. Globe Communications Corp., 712 F. Supp. 1103 (S.D.N.Y. 1989).
Sports
  • Infringement Defense
    • Successfully obtained a declaratory summary judgment that Major League Baseball Properties, Inc. did not infringe any rights of Opening Day Productions in the term 'Opening Day.' Major League Baseball Properties, Inc. v. Opening Day Properties, 74 U.S.P.Q. 2d 1102 (S.D.N.Y. 2005).
Television; Radio
  • Defamation Defense
    Obtained dismissal for lack of jurisdiction, affirmed on appeal, for the leading Philippine newspaper (The PHILIPPINE DAILY INQUIRER) and its 10% owned website (INQ7), in case of first impression in any New York court, involving the publication of an allegedly defamatory article on a website accessible to New York residents and to which New York residents subscribed. Realuyo v. Abrille, 32 Media L. Rep. (BNA) 1427, 2003 WL 21537754 (S.D.N.Y. 2003), aff'd, 2004 WL 605275 (2d Cir. 2004).
  • Infringement Defense
    Defeated motion for preliminary injunction seeking to prevent use of newly adopted radio call letters. Infinity Broadcasting Corp. v. Greater Boston Radio, 32 U.S.P.Q. 2d 1925 (D. Mass. 1994).
  • Infringement Defense
    Defeated motion for a temporary restraining order seeking to block use of WINGS as a title for a national network television sitcom. Cable Educational Network, Inc. v. Paramount Pictures Corp. and National Broadcasting Co., 17 U.S.P.Q. 2d 1723 (D. Md. 1990).
Miscellaneous
  • Declaratory Judgement Defense
    Represented Edible Arrangements, LLC in getting the dismissal of a declaratory judgment action on the ground that merely filing six trademark oppositions and making an offhand statement that it objected to use of the trademarks did not create a "case of actual controversy" when no cease and desist letter had been sent to the plaintiff.  1-800-Flowers.com, Inc. v. Edible Arrangements, LLC, 104 U.S.P.Q. 2d 1925 (E.D.N.Y. 2012).
    Genericism Claim
    Represented The First Church of Christ, Scientist in trademark infringement action in which the court held that CHRISTIAN SCIENCE is protectible as a mark for goods and services, and was infringed by UNIVERSITY OF CHRISTIAN SCIENCE, despite earlier decision that it is the generic name of a religion.Christian Science Board of Directors of The First Church of Christ, Scientist v. Nolan, 259 F.3d 209 (4th Cir. 2001).

 

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