June 2016

News & Press

WE ARE PLEASED TO REPORT THAT Who’s Who Legal Awards 2016 named Fross Zelnick the trademarks law firm of the year worldwide for the eleventh consecutive year. See more at WhosWhoLegal.

MANAGING INTELLECTUAL PROPERTY presented Fross Zelnick with the “Firm of the Year – Northeast” award for Trademark Prosecution. The MIP 2016 IP Stars Handbook ranks the firm in the First Tier of law firms in the Trademark Prosecution, Trademark Contentious, and Copyright categories in the United States. The rankings may be viewed at www.ipstars.com. Individually listed as IP Stars were LAWRENCE APOLZON, CARA BOYLE, CARLOS CUCURELLA, DAVID DONAHUE, MARK ENGELMANN, NADINE JACOBSON, JOHN MARGIOTTA, CRAIG MENDE, BARBARA SOLOMON, ALLISON STRICKLAND RICKETTS, JAMES WEINBERGER, and ROGER ZISSU.

CHAMBERS GLOBAL 2016 ranked Fross Zelnick in Band 1 for Intellectual Property: Trademark, Copyright & Trade Secrets in the United States. Special mention was made of SUSAN UPTON DOUGLASS (“commended for her handling of Trademark Trial and Appeal Board oppositions”), and ROGER ZISSU (“copyright guru . . . well known for trying and winning significant cases concerning content in all media”). See more at www.chambersandpartners.com).

LAW 360 listed Fross Zelnick as a “Ceiling Smasher” for being one of the top twenty-five best U.S. law firms for female partners. 37.5 percent of the firm’s partners are women, compared to the national average of 22 percent for law firms in general, and 19 percent for IP boutiques. In an April 18, 2016 article, the publication quoted LYDIA GOBENA, who attributed the firm’s success to “a team mentality.” See www.law360.com.

SUPERLAWYERS published its Top Women Attorneys in New York list in March 2016, naming SUSAN DOUGLASS, JANET HOFFMAN, NADINE JACOBSON, and BARBARA SOLOMON as SuperLawyers, and KAREN LIM, HINDY DYM, and JENNIFER INSLEY-PRUITT as Rising Stars.

ALLISON STRICKLAND RICKETTS was named to Managing Intellectual Property’s list of the top 250 women in IP worldwide. The list can be viewed at www.ipstars.com.

ROGER ZISSU received a 2016 Client Choice award for Intellectual Property Copyright in United States: New York.

LAURA POPP-ROSENBERG and JASON JONES, on behalf of our client The Gap, Inc. (“Gap”), obtained an affirmance from the United States Court of Appeals for the Eleventh Circuit of the denial of a preliminary injunction in a trademark infringement claim brought against Gap in the U.S. District Court for the Middle District of Florida. In its complaint, plaintiff Hoop Culture, Inc. (“Hoop Culture”) alleged that the sale of t-shirts by Gap featuring the phrase Eat Sleep Ball on the chest infringed Hoop Culture’s purported rights in the phrase EAT…SLEEP…BALL. In the District Court, Hoop Culture requested a preliminary injunction to halt Gap’s sales of the accused t-shirts pending trial. Following an evidentiary hearing, the District Court denied Hoop Culture’s request for a preliminary injunction, finding that Hoop Culture had failed to prove either likelihood of success on the merits of its infringement claim or that it would suffer irreparable harm if an injunction was not entered – both of which are prerequisites to obtaining a preliminary injunction. Hoop Culture appealed to the Eleventh Circuit and, on April 28, 2016, the Eleventh Circuit affirmed the District Court’s denial of preliminary injunctive relief. Specifically, the Eleventh Circuit stated that Hoop Culture had failed to demonstrate irreparable harm. And the Eleventh Circuit further held that there was no possibility of irreparable harm, as all of Gap’s accused shirts were sold out and Gap had no plans to sell the shirts in the future. The Eleventh Circuit stated that these two facts “flatly contradict” any claim that Hoop Culture would suffer irreparable harm absent a preliminary injunction. The case will return to the trial court for further proceedings.

KAREN LIM and JASON JONES’ article “From Disparagement to Fame and Other Key Developments in U.S. Trademark Law” was published in The International Comparative Legal Guide to Trademarks 2016 Edition, Global Legal Group, Ltd., London. A .pdf of the chapter may be downloaded at www.iclg.co.uk.

JOHN MARGIOTTA was quoted in Law360 on March 14, 2016 in an article about the Fourth Circuit Court of Appeals ruling in Shammas v. Focarino. He commented that the ruling that trademark applicants who file a de novo appeal of a decision of the United States Patent and Trademark Office to a federal district court must bear all expenses of the proceeding, including the Office’s full attorneys’ fees, “directly contradicted the American Rule.”

On April 6, 2016, ROGER ZISSU participated in a panel of copyright, mystery writers, and Conan Doyle experts convened at New York’s historic Salmagundi Club by the Mystery Writers of America to discuss the Seventh Circuit Court of Appeals’ decision holding the early Sherlock Holmes stories to be in the public domain. The panelists addressed Judge Posner’s decision as well as the nature and duration of copyright protection for literary characters.