Overview

Richard is a litigator with more than thirty years of experience handling intellectual property cases, including copyright, trademark, unfair competition and Internet-related matters, as well as other complex commercial disputes.  He regularly represents clients in federal court actions, contested proceedings before the Trademark Trial and Appeal Board and arbitrations and other alternative dispute proceedings.  Richard’s clients include companies in the music, television and motion picture, sports, fashion, food and tobacco industries. 

"Try to learn something about everything and everything about something."- Thomas Henry Huxley (1825-1895)

Honors & Recognitions

“The team of Richard Mandel, Jonathan King and Eric Shimanoff is deadly. Each of them are very smart, business savvy and know practice and procedure in not only New York but even other jurisdictions.”  2022 The Legal 500.

"Richard Mandel 'stands out as a strong, strategic and insightful litigator'. 'Trusted legal and commercial adviser.'" 2022 WTR 1000 – The World’s Leading Trademark Professionals 

“Richard Mandel gets a great write-up from peers, who see him as 'an excellent problem solver'. 'Nobody is going to take Richard lightly, so he’s at ease talking solutions'.” 2020 WTR 1000 – The World’s Leading Trademark Professionals

Richard Mandel is "a crack litigator who successfully represented the opposers in a recent major trademark dispute between cigarette paper companies" 2019 WTR 1000 – The World’s Leading Trademark Professionals

Richard Mandel "is highly effective and always civil – a rare combination of qualities." "A consummate professional, he is exceedingly sharp and able to devise innovative arguments." With Jonathan King "they are the best of the best and achieve exceptional results, time and time again."  2018 WTR 1000 – The World’s Leading Trademark Professionals

  • Named in The Top 50 Attorneys of New York (Attorney Intel 2022)
  • Named in The Best Lawyers in America for Intellectual Property Litigation (2018 to present)
  • Expert Guides (Euromoney Institutional Investor PLC) for Trademarks  (2015 to present)

  • Named in The Legal 500 - Intellectual Property - Trademarks, Litigation (2015 to present)
  • Named in IP Stars (Managing IP 2014 – to present – “Trademark Star” and “Copyright Star”)
  • 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

  • Richard has handled a wide variety of intellectual property cases, including disputes involving copyright infringement, trademark infringement, unfair competition, false advertising, licensing disputes, right of publicity claims, trade secrets, domain names and other Internet issues.
  • Richard’s clients include Universal Music Group, Sony Pictures Entertainment, Major League Baseball, Promotion In Motion (manufacturer of Welch’s Fruit Snacks), J. Crew and National Tobacco Company.
  • Richard is a member of the American Arbitration Association commercial panel. He has presided over cases involving intellectual property, entertainment and general commercial disputes.  Representative cases include a computer software breach of contract dispute, a multi-million dollar artist-management contract dispute, a licensing dispute involving a fashion designer, a trademark co-existence dispute among fashion companies, a law firm partnership dispute and a contractual dispute regarding a food concession agreement. 
  • Richard also serves as a court-appointed mediator in the United States District Court of the Southern District of New York mediation program where he has mediated a wide variety of commercial cases. He also has extensive experience representing clients in mediations and other alternative dispute resolution proceedings. 
Prior Employment

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

Newsroom

Speaking Engagements

  • Fordham University School of Law, Lincoln Center Campus, New  York, NY, 01.16.2018
  • Fordham University School of Law, Lincoln Center Campus, New York, NY, 01.17.2017
  • 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 Developments
    New York State Bar Association, 1996
  • Copyright Basics
    Jewelry Expo, 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

  • Meenaxi Enterprise, Inc. v. Coca-Cola Co., 2022 U.S. App. LEXIS 17942 (Fed. Cir. 2022).  Successfully obtained reversal on appeal of TTAB judgment cancelling registrant Meenaxi’s THUMS UP and LIMCA registrations for soft drinks under section 14(3) of Lanham Act (misrepresentation of source of goods).  The Federal Circuit ruled that Coca-Cola lacked statutory standing to assert claims based on the fame and recognition of its THUMS UP and LIMCA marks in India, because there was not substantial evidence establishing that the reputation of those marks extended to the United States.  Coca-Cola had thus failed to establish reputational injury in the United States that would support bringing a claim for cancellation.    

  • Sony Pictures Television Inc. v. Noorbakhsh, Opposition No. 91253442, 2022 TTAB LEXIS 166 (T.T.A.B. 2022).  Successfully argued opposition at oral hearing on behalf of Sony Pictures following post-trial acquisition of opposer’s registration and substitution as counsel.  Board held COBRA KAI for t-shirts confusingly similar to COBRA KAI JIU JITSU for martial arts facilities given common practice of licensing trademarks for use on diverse range of collateral products.   

  • TriStar Pictures, Inc. v. Christian St. Fort, Opposition No. 91239967, 2021 TTAB LEXIS 261 (T.T.A.B. 2021).  Successfully opposed application to resister JU’MAÑJI for clothing based on the continuing fame and recognition of the original JUMANJI movie starring Robin Williams.  Finding the continuous distribution of that 1995 film through cable television, DVDs, streaming and other platforms to be sufficiently related to clothing, the Board sustained the opposition notwithstanding Applicant’s insistence that he was unaware of the movie when he filed the application months before the release of the JUMANJI:  WELCOME TO THE JUNGLE sequel and the revived licensing program that accompanied it.

  • Chicago Cubs Baseball Club, LLC v. Cubsessed, LLC, Opposition No. 91239415, 2020 TTAB LEXIS 63 (T.T.A.B. 2020).  Successfully represented Chicago Cubs club in opposing applications filed by an admittedly obsessed Chicago Cubs fan to register CUBSESSED and IAMCUBSESSED for clothing.  Given the large variation of CUB/CUBS marks combined by the club with other words, the Board held that “the term CUBSESSED could very well be perceived as a new CUBS mark coined by the team to cater or refer to its most devoted fans; and CUBSESSED/IAMCUBSESSED clothing could be perceived as team gear designed to enable those fans to proudly display their ‘CUBSESSION.’”

  • Chicago Cubs Baseball Club v. Huber, Opposition No. 91232736, 2019 TTAB LEXIS 161 (T.T.A.B. 2019).  Successfully opposed application to register CUBNOXIOUS for clothing based on strength of opposer’s CUBS marks.  The Board found that although “obnoxious” is typically is not a flattering term, sports fans might embrace such a reputation as a badge of honor and thus consumers were likely to confuse the CUBNOXIOUS mark with the opposer’s licensed clothing products bearing CUBS marks.

  • Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018). Represented plaintiff record company in obtaining summary judgment on copyright infringement claims and on appeal affirming such judgment.  In case of first impression, district court rejected defendant start-up technology company’s attempt to establish digital first sale doctrine for lawful owners of digital music seeking to re-sell their music files.  940 F. Supp.2d 640 (S.D.N.Y. 2013).  On appeal, Second Circuit affirmed the judgment below, holding that defendants engaged in unauthorized reproductions of plaintiff’s copyrighted sound recordings that were not justified by the fair use doctrine and thus constituted copyright infringement.
  • North Atlantic Operating Company, Inc. et al. v. DRL Enterprises, Inc., 2016 TTAB LEXIS 282 (T.T.A.B. 2016). Successfully represented opposers in opposition proceeding challenging claimed rights in the designations 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.
  • New York Yankees Partnership v. IET Products and Services, Inc., 2015 TTAB LEXIS 114 U.S.P.Q.2d 1497 (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. 
  • 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
  • The Hershey Company v. Promotion In Motion, Inc., 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., 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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