Lawyer Detail

Barbara A. Solomon
Partner
212-813-5900
PDF

Practice Description
Counseling in the areas of trademark, trade dress, copyright, false advertising, unfair competition, rights of privacy, rights of publicity, parody and Internet-related matters; advising on domain name issues, including litigating and adjudicating UDRP cases; litigation in the federal district courts and appellate courts; handling opposition and cancellation proceedings in the Trademark Trial and Appeal Board; negotiating and preparing various intellectual property agreements including consent agreements, co-existence agreements, assignments, licenses, and representation agreements; advising and counseling on issues concerning counterfeiting including online counterfeiting and customs issues; advising on and reviewing searches for the clearance and registration of trademarks.

Education
Brown University (A.B., magna cum laude, 1981, Phi Beta Kappa); Harvard Law School (J.D., cum laude, 1984).

Professional Activities
Member: The Association of the Bar of the City of New York (Secretary, 1990-1992, Committee on Copyright and Literary Property). Speaker: Frequent lecturer on issues concerning the Internet, domain names, right of publicity, fair use and licensing. Appointments: WIPO panelist for cases brought under the UDRP; Adjunct Professor, Brooklyn Law School, 2004 (trademark law).

Honors
Member of Fross Zelnick litigation department named "Top Trademark Litigation Team" in the United States by Managing Intellectual Property Magazine in 1999; Recognized in the 2004, 2006 and 2008 editions of Guide to the World's Leading Trade Mark Law Practitioners, published by Euromoney Legal Media Group; Included in the list of New York Super Lawyers in Intellectual Property by "New York Super Lawyers 2006 - Manhattan Edition," "New York Super Lawyers 2007 - Metro Edition," "New York Super Lawyers 2008 - Metro Edition," and "New York Super Lawyers - Corporate Counsel Edition." Recognized in the trademark litigation and dispute resolution category in the 2006-2007 edition of the Legal 500 US Guide.

Admissions
New York State
United States Courts of Appeals for the Second, Third, Ninth, Eleventh and Federal Circuits
United States District Courts for the Southern, Eastern and Northern Districts of New York

Selected Transactions
Acted as trademark counsel in connection with sale of IBM's PC division to Lenovo; sale of IBM's Printed division to Ricoh; sale of Kraft Food's Post Cereal Division.

Selected Cases

-- U.S.P.Q.2d ----, Opp. No. 91208352 (T.T.A.B. May 27, 2014)

In a precedential decision before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office (“TTAB”), the Firm successfully represented Chanel, Inc. 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.  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.

No. 1:13-cv-00780 (N.D. Ill. July 1, 2013)

The Firm obtained a preliminary injunction on behalf of Kraft Foods Group Brands, LLC (“Kraft”), owner of the CRACKER BARREL trademark in connection with cheese, against restaurant company, Cracker Barrel Old Country Stores, Inc. (“CBOCS”) and prominent meat distributor, John Morrell & Co. (“John Morrell”).

Opp. Nos. 91178281, 91178290, 91178297 and 91178410 (consolidated) (T.T.A.B. Feb. 7, 2013)

The Firm successfully defended Hebei Aulion Heavy Industries Co., Ltd. ("Hebei Aulion"), a Chinese company, in its bid to register LOVOL.

Opp. No. 91181263 (T.T.A.B. Apr. 28, 2011)

The firm successfully represented Clinique Laboratories, LLC (“Clinique”) in its challenge to Nevada-based Absolute Dental LLC’s attempt to register the mark CLINIQUE DENTIQUE for “cosmetic dentistry services.”

2011 WL 1652171 (T.T.A.B. 2011)

On behalf of our client Clinique Laboratories LLC—owner of the famous CLINIQUE trademark in connection with cosmetics and cosmetic services—we successfully opposed Absolute Dental LLC’s attempt to register the trademark CLINIQUE DENTIQUE for “cosmetic dentistry services” with the United States Patent and Trademark Office.

Case No. 5:10-cv-02451 HLK, 2010 WL 3910178 (N.D. Cal. Oct. 5, 2010)

The Firm successfully defended our clients, The Estee Lauder Companies Inc. and Clinique Laboratories LLC, against a motion for preliminary injunction filed by Rodan & Fields, LLC.

732 F. Supp. 2d 712 (E.D. Ky. 2010)

On behalf of our client Cadbury Adams USA LLC--maker of the famous DENTYNE brand of chewing gum--we defeated a motion for a preliminary injunction brought by plaintiff which sought to block the launch of Cadbury's new breath purifying gym, DENTYNE PURE, on the grounds that the name DENTYNE PURE was confusingly similar to plaintiffs' MENTOS PURE FRESH and MENTOS PURE WHITE names used for chewing gum.

Opp. No. 91180742, Canc. No. 92048446, 2010 WL 3798550 (T.T.A.B. 2010)

Prevailed at trial on behalf of Dr Pepper/Seven Up, Inc. in consolidated opposition and cancellation proceedings against the mark, CRUSSH.

82 U.S.P.Q.2d 1319 (S.D.N.Y. 2007); No. 01 Civ. 3192 (CLB) (S.D.N.Y. Dec. 11, 2001), aff'd, 2002 WL 31303241 (2d Cir. Oct. 11, 2002)

Our firm successfully defended Cab Calloway's grandson, Christopher Brooks, against multiple attempts by his step-grandmother, her family, and their company to prevent him from performing his grandfather's music under the name "The Cab Calloway Orchestra." Most recently, we obtained a dismissal on res judicata grounds of the plaintiffs' copyright infringement claims against Mr. Brooks for his use of Cab Calloway's songs. Judge Richard Owen held the claims should have been brought in an action the plaintiffs filed against Mr. Brooks in 2001 concerning use of the CAB CALLOWAY trademark. In the 2001 action, we obtained summary judgment for Mr. Brooks, which was affirmed by the U.S. Court of Appeals for the Second Circuit.

440 F. Supp. 2d 249 (S.D.N.Y. 2006)

The firm won a trial before the United States District Court for the Southern District of New York on behalf of plaintiffs De Beers LV Limited and De Beers LV Trademark Limited, owners of rights in the famous DE BEERS mark. Calling the DE BEERS mark "one of the most famous brands in the world," the District Court ruled that the defendants' attempt to use the DE BEERS name to sell diamonds over the Internet was "entirely in bad faith" and accordingly found the defendants liable for trademark infringement, trademark dilution and unfair competition.

292 F.3d 1139 (9th Cir. 2002)

While our client, the Estate of Diana, Princess of Wales, was unsuccessful in overturning a grant of summary judgment against it, the case is significant for its discussion of the scope and extent of nominative fair use as a defense to trademark infringement. 

98 Civ. 7448 (S.D.N.Y. 2000)

In a copyright case of first impression, the court held that Viacom's distribution of publicity materials featuring its television characters did not allow a recipient under the guise of media coverage or a fair use defense to commercially reproduce these materials as posters that were folded up to look like a magazine without the authorization of the copyright owner.

15 F. Supp.2d 389 (S.D.N.Y. 1998), aff'd, 1999 U.S. App. LEXIS 22965 (2d Cir. Sep. 22, 1999)

We successfully represented the plaintiff in a case of first impression in the Second Circuit on the issue of when a trademark, "Lane," is primarily merely a surname. In affirming the District Court's grant of summary judgment enjoining the defendant from using the Lane Capital Management name, the Second Circuit set the standard for determination of the surname issue.

Slip Op., 97 CV 214 (C.D. Cal. Mar. 18, 1997); 98 CV 1730 (C.D. Cal. Mar. 11, 1998)

 

In a case of first impression, we successfully argued that in a federal court action seeking to cancel the defendant's trademark registration, the applicable factors to be applied are those established by the Federal Circuit, not the likelihood of confusion factors applied in an infringement analysis.

(S.D.N.Y. 1994)

This was the first case ever filed alleging that a domain name infringed on a trademark and that sought to apply Lanham Act principals to the registration and use of a domain name. 

No. 90-CV-06147 (S.D. Fla. June 30, 1992)

We obtained a preliminary injunction on a trade dress claim concerning the design of suntan lotion packages.

746 F. Supp. 1159 (D. Mass. 1990)

In one of the only decisions of its kind, the district court ruled in favor of our clients in finding that there was no likelihood of confusion when the identical mark "Pump" was used as the name of an album by our client, the rock band, Aerosmith, and as the name of a lesser-known band.

874 F.2d 109 (2d Cir. 1989)

We obtained summary judgment for defendant in a decision that clarifies the circumstances under which confidentially disclosed information loses its protectable character.

Published Works

Domain Name Disputes: New Developments and Open Issues

91 The Trademark Reporter 833 (July-August 2001)

Download
Can the Lanham Act Protect Tiger Woods? An Analysis of the Uncomfortable Fit Between Right of Publicity and Unfair Competition

94 The Trademark Reporter 1202 (November-December 2004)

Download
Two New Tools to Combat Cyberpiracy: A Comparison

Intellectual Property Forum, Sept. 2000 and 90 The Trademark Reporter 679 (May - June 2000)

Download
Overview of Basic Principles of Trademark Law. How to Handle Basic Copyright and Trademark Problems

PLI, 1989, 1990, reprinted in 20 The Lawyer's Brief, Issue 21 (Business Laws, Inc., 1990)