Trademark/Unfair Competition

Apparel

• Unfair Competition Claim
  We appeared after the pre-trial stage as co-counsel representing the famous fashion designer, Nanette Lepore, in an action for breach contract and unfair competition against a garment manufacturing company which had acquired the NANETTE LEPORE brand for clothing and accessories.  Although the federal court case was dismissed for lack of jurisdiction, we are still consulting with the client in relation to another litigation involving the same issues pending in New York County Supreme Court.  Nanette Lepore, et al v. Nl Brand Holdings LlC et al, 16 Civil 8115 (GBD) (S.D.N.Y. 2017).
• 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

• Theft of Property Defense
  Successfully represented defendant in an action for alleged theft of property by a plaintiff who had purchased a hacked and hijacked YouTube channel in our client’s network from an online seller and alleged that its restoration to our client’s control constituted theft of the plaintiff’s property.  Showcase Magazine Inc. v. Warner Music Group, Case No. 590GV000066200 (Danville Va. General District Court 2020).

• 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 Claim
  Defeated a motion to dismiss our client's claim that the shape of defendant's wooden air freshener infringed the trade dress of our client's famous LITTLE TREES air fresheners.  Car-Freshner Corp. v. Sun Cedar, Inc., 2016 U.S. Dist. LEXIS 90669 (N.D.N.Y. 2016).
• 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

• Cancellation Appellate Defense
  Successfully defended a soft drink manufacturer in the appeal to and reversal by the Federal Circuit of a decision by the TTAB, which had cancelled for alleged misrepresentation of source two U.S. registrations of marks which Coca-Cola had used only in India and not in the U.S. Meenaxi Interprise, Inc. v. The Coca-Cola Company, No. 21-2209 (Fed. Cir. 2022).
• Infringement Defense
  Successfully moved to dismiss Ohio federal court suit for a declaratory judgment of non-infringement regarding our client’s slogan “Fruit is Our 1^st Ingredient” as an “improper anticipatory suit motivated by forum shopping” filed two days before our client’s infringement suit was filed in New Jersey federal court.  J.M. Smucker Company v. Promotion in Motion, Inc., No. 5:10-cv-01116 (N.D. Ohio 2019).
• Infringement Claim
  Settled protracted litigation alleging that 1-800-Flowers.com used various marks, keywords and designs that infringed Edible Arrangements’ trademarks and trade dress.  Edible Arrangements International, LLC and Edible Arrangements, LLC v. 1-800-Flowers.com, Inc. and 800-Flowers.com, Inc. et al., Case No. 3:14-cv-01744 (D. Conn. 2014.)
• Infringement Claim
  Settled protracted litigation alleging infringement and related claims based on Provide Commerce’s use of keywords containing Edible Arrangements’ trademarks.  Edible Arrangements International, LLC and Edible Arrangements, LLC v. Provide Commerce, Inc., Case No. 3:14-cv-00250-VLB (D. Conn.2014).
• 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 Defense
  Denial 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 (6^th 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); aff’d., 16-2934-cv; 16-3364-cv (2d Cir. 2017.
• 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

•  Laches Defense
  Represented (together with Orrick Herrington & Sutcliffe) defendant Kars 4 Kids Inc. on two appeals to the Third Circuit and remand proceedings to the Texas district court, which was ordered to vacate with prejudice its injunction against defendant’s advertising reaching Texas, and its award of over $7.8 million in damages, on the ground that these remedies were barred by the plaintiff’s laches and that the district court had wrongly imposed on the defendant the burden of proof on this point. Kars 4 Kids Inc. v. American Can!, Nos. 23-1273 and 23-1281 (3d Cir. 2024).
• 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).

 

Prior results do not guarantee a similar outcome.