September 2015

News & Press

WE ARE PLEASED TO REPORT THAT Chambers USA 2015 named Fross Zelnick to Band 1 in both the U.S. Intellectual Property: Trademark, Copyright & Trade Secrets category, and the New York Intellectual Property: Trade Mark & Copyright category. Special mention was made of SUSAN UPTON DOUGLASS (“commended for her handling of TTAB oppositions”), ROGER ZISSU (“copyright guru”), JAMES WEINBERGER (“terrific”), and RICHARD LEHV (“flourishing practice”).

CHAMBERS GLOBAL 2015 ranked Fross Zelnick in Band 1 for Intellectual Property: Trademark, Copyright & Trade Secrets. SUSAN UPTON DOUGLASS was singled out for “her handling of trade mark clearance and filing” and ROGER ZISSU was noted as being “one of the most eminent authorities on copyright law in the country.”

FROSS ZELNICK was ranked by Legal 500 US 2015 in the first tier for Intellectual Property: Trademarks - Non-contentious, and in the second tier for Intellectual Property: Copyright and Intellectual Property: Trademarks - Litigation. The publication listed DAVID EHRLICH and MARK ENGELMANN as “Leading Lawyers” for Trademarks - Non-contentious, and ROGER ZISSU as a “Leading Lawyer” for Copyright. Specific mention was also made of CARA BOYLE, DAVID DONAHUE, RICHARD LEHV, BARBARA SOLOMON, and JAMES WEINBERGER.

LYDIA GOBENA obtained a win for client the Michael Kors company in a leading criminal trademark infringement trial in Chile. The case is discussed in greater detail here.

JANET HOFFMAN and LYDIA GOBENA obtained “well-known mark” recognition in China for client Tiffany and Company’s TIFFANY and TIFFANY & CO. trademarks. Details may be found here.

RICHARD LEHV, ROBERT BECKER, LEO KITTAY and EMILY WEISS won a rare decision in which the Federal Circuit reversed the Trademark Trial and Appeal Board. The case, Jack Wolfskin v. New Millennium Sports, involves an appeal of the Board's finding of likelihood of confusion in a case in which our client, Jack Wolfskin, applied to register a paw print as a mark for clothing. Details of the case can be viewed here.

Following an evidentiary hearing, on behalf of client The Gap, Inc. and its Old Navy brand, LAURA POPP-ROSENBERG, JAMES WEINBERGER and JASON JONES were successful in defeating a motion for a preliminary injunction brought by plaintiff Hoop Culture, Inc. over its alleged EAT...SLEEP...BALL. trademark. The U.S. District Court for the Middle District of Florida held that the plaintiff did not show a substantial likelihood of success on the merits of its claims on either ownership of a valid mark - despite the fact that it had a federal registration - or likelihood of confusion. The Court also held that plaintiff failed to establish the requisite irreparable injury. A .pdf of the decision can be downloaded at Fross Zelnick Cases.

On behalf of client DC Comics, JAMES WEINBERGER and LEO KITTAY successfully opposed two applications to register GOTHAM BATMEN and a batwing design in connection with entertainment and business networking services.  In sustaining the opposition, the Trademark Trial & Appeal Board held that BATMAN was "a famous mark in connection with . . . comic books and movies" and further that such "fame is transferred to a vast array of collateral or merchandising products that are purchased because they bear the BATMAN trademark; that is, consumers have come to associate the fame of BATMAN with the products bearing that mark.” A .pdf of the decision can be downloaded at Fross Zelnick Cases

CARA BOYLE and KAREN LIM spoke at the Seventh Annual American Intellectual Property Law Association's (AIPLA) Trademark Boot Camp in Alexandria, Virginia, in June 2015. Cara presented an overview on international trademark basics, and Karen discussed trademark co-existence agreements.

ERICA GOULD'S article "Battling Trademark Piracy in Cuba," was published in the June, 2015 issue of Managing Intellectual Property.  A .pdf of the article can be downloaded at Fross Zelnick Articles.

RICHARD LEHV has been named one of the "Voices of the Bar" by IP Law360. As IP Law360 describes it, "Voices of the Bar" features "concise and timely commentary from leading experts in the field of intellectual property law. With nearly 300 experts vying for only 50 spots on the panel, the selection process was anything but easy." Richard has so far provided commentary on Google Inc. v. Oracle America Inc, a copyright case involving computer software, and the Washington Redskins trademark cancellation proceeding. 

RICHARD LEHV was quoted extensively in an article in World IP Review concerning the First Amendment protection for trademarks. The article, entitled "US trademarks: Walking the line on free speech," by Max Walters, can be found here: World IP Review.

KAREN LIM was a panelist at the 13th Annual Women in Intellectual Property Law Program of the New York State Bar Association in June 2015.