June 2014

News & Press

PARTNER BARBARA SOLOMON was featured in IP Law360's Female Powerbrokers interview series, in which leading female lawyers give their perspectives on the legal profession. For the full text of Barbara's insightful and entertaining interview, click here.


  • FIRM OF THE YEAR -- TRADEMARKS in Who’s Who Legal 100 2014, in which seventeen of our partners were nominated individually, namely: LARRY APOLZON, STEVE BIGGER, CARA BOYLE, CARLOS CUCURELLA, DAVID DONAHUE, SUSAN DOUGLASS, DAVID EHRLICH, MARK ENGELMANN, LYDIA GOBENA, JANET HOFFMAN, NADINE JACOBSON, RON LEHRMAN, CRAIG MENDE, PETER SILVERMAN, BARBARA SOLOMON, ALLISON STRICKLAND RICKETTS and ROGER ZISSU. Partners David Ehrlich and Susan Douglass accepted the award on behalf of the firm at a ceremony held on March 31, 2014.
  • FIRM OF THE YEAR for Trademark Prosecution (National and Northeast) at the Managing Intellectual Property annual awards dinner on March 25, 2014.
  • PLACEMENT IN THE “FIRST BAND” of the Chambers 2014 rankings for Intellectual Property: Trademark, Copyright & Trade Secrets – USA. Special mention was made of ROGER ZISSU (“long…known as one of the most distinguished practitioners in the fields of copyright, trade marks and unfair competition…and…someone ’you’d want as the éminence gris’ in matters of global brand strategy”), SUSAN DOUGLASS (who “focuses predominantly on copyright issues, as well as trade mark portfolio management, filing, searching, litigation and internet-related licensing agreements”) and CARLOS CUCURELLA (“US and Spanish-qualified attorney…[who] brings significant experience in handling trade mark matters for a broad spread of clients…highlighted for his ability to ‘work hard to give practical and efficient advice’ and…noted for the depth of his expertise in handling IP-related matters in the Spanish market.”)
  • “FIRST BAND” nationally and in New York State for Intellectual Property: Trademark & Copyright, by Chambers USA, which ranks American firms nationwide and by region. The firm was recognized nationally as a “[m]ajor intellectual property law player handling copyright, design rights, trademarks and unfair competition matters…[h]ighly adept at complex, multijurisdictional litigation as well as offering significant IP transactional expertise.” On the New York State front, the firm was described as “widely admired for its full-service copyright and trademark practice, which takes in counseling, filing, clearance and litigation[,] [and w]ell known for representations in the apparel, entertainment, consumer products, financial services, leisure and luxury goods industries.” The write-up included the following comments from clients: “Absolutely outstanding in this field.” “An excellent, comprehensive practice.” “[W]onderful representation, excellent arguments.” Special mention was made of partners ROGER ZISSU (“a celebrated copyright and trademark expert”…”one of the most eminent authorities on copyright law in the country”…“one area of specialization…[being] copyright law governing character rights in fiction of various media”), RICHARD LEHV (“noted for his prowess as a litigator in copyright, trademark, false advertising and unfair competition cases…appear[ing] before state and federal courts and in cancellation and opposition actions before the TTAB”), SUSAN DOUGLASS (“respected for her handling of trademark clearance and filing, as well as representations before the USPTO and the…TTAB…[and who is] also engaged for copyright counseling” and JAMES WEINBERGER (“a litigator who takes on copyright and trademark cases, and enjoys a strong track record for his work before the TTAB and the courts…[and] also advis[es] on clearance, filing and strategy”).

BARBARA SOLOMON and ANNA LEIPSIC successfully represented Chanel, Inc. (“Chanel”) in its challenge to a Canadian real-estate developer’s attempt to register the mark CHANEL for condominium and other real-estate services on grounds of dilution. The parties stipulated to the use of the Accelerated Case Resolution procedure established by the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”), which allows for a full determination on the merits through the use of a summary judgment-like procedure. To prevail on a dilution claim a party must establish that its mark became famous before the other party commenced use of the challenged mark. Following the submission of extensive evidence, the TTAB found CHANEL to be a household name and that the fame preceded any use of the mark by applicant. As to what constitutes “use” of a mark by an applicant, the TTAB held in this precedential decision that in a TTAB proceeding an Opposer may prove Applicant’s use either by direct evidence of use or by reliance on the application filing date as the date of constructive use. Because the TTAB found that the applicant’s mark was likely to dilute the famous CHANEL mark, the TTAB sustained the opposition. The case is Chanel, Inc. v. Jerzy Makarczyk, Opp. No. 91/208352.

RICHARD LEHV and JENNIFER INSLEY-PRUITT successfully represented Inter IKEA Systems B.V. (“Ikea”) in its challenge to Akea, LLC’s attempt to register the mark AKEA for retail store services in International Class 35. Ikea is the owner of the IKEA mark, which has been used for many years in connection with a variety of goods and services. Following the submission of extensive evidence, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) found IKEA to be a famous mark in connection with retail store services. The TTAB then determined that IKEA and AKEA were similar in appearance and sound, finding the difference in the initial vowel inconsequential. Based on these and other factors, the TTAB concluded that the mark AKEA was likely to cause confusion with the established mark IKEA in connection with retail store services, and therefore sustained Ikea’s challenge to registration of the AKEA mark in Class 35.

MICHAEL CHIAPPETTA successfully represented Lion Capital, LLP, a private equity investment firm and owner of the LION and LION CAPITAL trademarks (the “LION Marks”), in an appeal to the Federal Circuit by hedge fund manager Stone Lion Capital, LLC of the Trademark Trial and Appeal Board’s (“TTAB”) decision sustaining Lion Capital’s opposition to Stone Lion Capital’s application for STONE LION CAPITAL covering “financial services, namely investment advisory services, management of investment funds, and fund investment services.” On appeal, Stone Lion Capital argued primarily that the TTAB erred in failing to consider the sophistication of the actual investors in its hedge fund and the due diligence required for investment in the fund. The Federal Circuit agreed with Lion Capital’s argument, however, that the TTAB correctly considered the typical consumers of the services as they were identified in the application, which (given the broad coverage of Stone Lion Capital’s application) included consumers of any and all investment advisory services (i.e., ordinary investors) and not limited to high dollar hedge fund investors. Stone Lion Capital also argued that, although the parties provide their investment services to similar entities, the persons within those entities charged with considering Lion Capital’s private equity investment offerings on the one hand and Stone Lion Capital’s hedge fund investment offering on the other hand are different. But again, the Federal Circuit agreed with Lion Capital that because Lion Capital’s registrations and Stone Lion Capital’s application in issue were not limited to private equity investment services and hedge fund investment services, respectively, the TTAB was correct in disregarding the particular investors targeted by the parties’ actual offerings, and confirmed that registrability must be determined based on the identification of services set forth in the trademark filings at issue. Accordingly, the Federal Circuit affirmed the TTAB’s decision sustaining Lion Capital’s opposition.

PARTNER CHARLES WEIGELL, has been named Chair of the 1,656-member New York State Bar Association, Intellectual Property Law Section. Charles has been a member of the State Bar Association Executive Committee for ten years and most recently served as vice-chair of the Intellectual Property Law Section. The New York State Bar Association was founded in 1876 and is the largest voluntary state bar association in the U.S.

LYDIA T. GOBENA spoke on a panel entitled, “Battling for Brands: Strategies for Dealing with Private Labels,” at the INTA Annual Conference in Hong Kong.

ON MAY 20, 2014, PARTNERS SUSAN DOUGLASS AND KAREN LIM presented at the New York City Bar Association program on “Trademark Talk: Hot Topics and Recent Developments in Trademark Law.” Susan spoke about trademark application pre-filing strategies on the panel, “Trademark Prosecution & The PTO: Practice Tips,” and Karen discussed the new amendments to the trademark law of the People's Republic of China on the panel, “Enforcing Trademarks in China & Recent Developments in Chinese Trademark Law.”

WE ARE PLEASED TO WELCOME STACY WU who has joined us as an associate in our International Group. Before coming to Fross Zelnick, Stacy was an Associate in the trademark department at Ladas & Parry LLP in New York. Previously, she served as a Law Clerk for the U.S. Copyright Office in Washington D.C. and a Legal Intern for Himark Counselors, a boutique IP firm in Taiwan. Stacy received her J.D. from Benjamin N. Cardozo School of Law in 2011, where she graduated with a concentration in intellectual property. She also served as a Research Assistant for the China State Intellectual Property Office Tutoring Program at Cardozo. She received first place in the New York State Bar Association IP Law Section’s Law Student Writing Competition in 2011 for her article Clearing Content in Documentary Filmmaking. Stacy has a Master of Arts in Media, Culture & Communication from New York University and a Bachelor of Arts in Film Studies from Columbia University. She currently serves as Co-Chair of the Intellectual Property Committee of the Asian American Bar Association of New York and is proficient in Mandarin Chinese.