Our Lawyers

Lawyer Detail

Laura Popp-Rosenberg
Partner
212-813-5900

Practice Description
Laura Popp-Rosenberg is a partner in the firm’s litigation department.  She litigates copyright, trademark, unfair competition, right of publicity, advertising and related matters in federal and state trial and appellate courts. She also represents clients in inter partes proceedings before the Trademark Trial and Appeal Board. Ms. Popp-Rosenberg regularly counsels and advises clients on a wide range of intellectual property matters and negotiates and drafts intellectual property agreements, including licenses and coexistence agreements.  Her clients span a broad range of industries, from entertainment, luxury goods and fashion companies to beverage, personal care and financial services companies, and from FORTUNE 500 companies to start-ups.

Prior to joining Fross Zelnick, Ms. Popp-Rosenberg was an associate in the litigation department of a leading New York law firm.

Education
University of North Carolina at Chapel Hill (B.A. in English with Highest Honors and Highest Distinction, 1994). Phi Beta Kappa; Columbia University School of Law (J.D., 2000). Harlan Fiske Stone Scholar; Special Issue Editor, Columbia Journal of European Law.

Clerkship
Law Clerk to the Honorable Alvin K. Hellerstein, United States District Court for the Southern District of New York (2001-2002).

Professional Activities
Member: International Trademark Association (Enforcement Committee, Issues of Proof Subcommittee, 2010-2011; Trade Names Subcommittee, 2012-2013); MARQUES European Trademark Association (Intellectual Asset Management Team, 2009-2013); Association of the Bar of the City of New York; New York State Bar Association; American Bar Association.

Admissions
New York State
United States District Courts for the Southern and Eastern Districts of New York

WIPO Proceedings:

Kiss Nail Products, Inc. v. Telecom Tech Corp., WIPO Case No. D2009-1308:  Recovered domain name kissnailproducts.com for complainant in a UDRP proceeding

Confidential WIPO Arbitration:  Defended international fashion company in an accelerated WIPO arbitration proceeding involving claims of breach of contract and trademark infringement.  Successfully defended against trademark infringement claims.  Successfully convinced panel to award only nominal damages on admitted breach of contract.

Counseling:

Counsel preeminent music company on trademark, copyright, false advertising and domain name matters.

Counsel leading intimate apparel manufacturer on trademark, copyright, false advertising, domain name and design patent matters.

Negotiated entertainment contracts for international fashion company.

Selected Cases

122 F. Supp. 3d 1338 (M.D. Fla. 2015), aff'd, 684 Fed.Appx. 981 (11th Cir. 2016)

Following an evidentiary hearing, on behalf of client The Gap, Inc. and its Old Navy brand, the Firm was 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. This decision was affirmed by the U.S. Court of Appeals for the Eleventh Circuit.

8:13-cv-02967-GJH (D. Md. Jan. 30, 2014)

The Firm successfully defeated a motion for a preliminary injunction motion on behalf of client Athleta, Inc., a leading retailer of women’s performance apparel and gear and part of The Gap, Inc.’s portfolio of companies. Plaintiff Body Wisdom Media, Inc. sought a preliminary injunction to stop Athleta’s use of a pinwheel design as a logo, alleging likelihood of confusion with Body Wisdom’s own pinwheel design logo used in connection with fitness DVDs. Athleta had adopted the challenged pinwheel logo seven years prior and had used it across its business since that time. The U.S. District Court in Maryland denied Body Wisdom’s motion, ruling that Body Wisdom was not likely to succeed on the merits of its infringement claim, because, inter alia, the parties’ goods are different and had coexisted under the respective marks without confusion for a number of years. The court also held that any injunction would harm Athleta, which uses the challenged pinwheel design across its entire business.

Opposition No. 91184978, 2013 WL 223400 (T.T.A.B. Jan. 22, 2013)

The Firm successfully represented our client, McNeil-PPC, Inc., a subsidiary of Johnson & Johnson and the exclusive licensee of the ZYRTEC mark for allergy products in the United States, in a five-year challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to Walgreen Co.’s attempt to register the mark WAL-ZYR in connection with an allergy product containing the identical active ingredient to ZYRTEC.

No. CV 12–10499–CAS (FMOx). 2013 WL 142877 (C.D. Cal. Jan. 7, 2013)

The Firm was successful in obtaining a preliminary injunction for our client, Athleta, Inc., a subsidiary of Gap Inc., against Pitbull Clothing Co. and Cory Peck, operators of the website athletica.net.

No. 10 Civ.1165, 2011 WL 4360113 (E.D. Va. Sept. 19, 2011)

Successfully recovered two domain names for plaintiff under the in rem provisions of the Anticybersquatting Consumer Protection Act.

11 Civ. 1626 (S.D.N.Y.)

Represented luxury goods plaintiffs in a case involving false advertising, unfair competition and trademark infringement arising out of defendants’ false assertions in relations to sales of plaintiffs’ watches, including that defendants sell only new products while in fact selling used and damaged watches, that defendants source products directly from plaintiffs when they do not, and that defendants have access to exclusive products when they do not.  Secured consent judgment.

No. 11 Civ. 0271 (S.D.N.Y.)

Represented luxury goods plaintiffs in a case asserting false advertising, unfair competition and trademark infringement arising out of defendants’ false assertions in relations to sales of plaintiffs’ watches, including that defendant sells only new products while in fact selling used and damaged goods and that defendant sources goods directly from the manufacturer when it does not.  Secured consent judgment.

No. 11 Civ. 0318 (S.D.N.Y.)

Represented luxury goods plaintiffs in a case involving false advertising, unfair competition and trademark infringement arising out of defendants’ false assertions in relations to sales of plaintiffs’ watches, including that defendants sell only new products while in fact selling used and damaged watches. Secured consent judgment. 

Opposition No. 91180742 & Cancellation No. 92048446m 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.

731 F. Supp. 2d 400 (D.N.J. 2010)

Represented one of the country’s largest cable television companies in a trademark infringement action arising out of defendant’s use of OPTIMUM NETWORKS name for Internet-related services. Successfully defended against a motion to dismiss. Negotiated settlement before trial.

No. 10 Civ. 6390 (S.D.N.Y.)

Represented luxury goods plaintiffs in a case asserting false advertising, unfair competition, trademark infringement and trademark dilution arising out of defendants’ false assertions in relations to sales of plaintiffs’ watches, including that defendants sell only new products while in fact selling used and damaged watches and that plaintiffs’ warranties apply when they do not.  Negotiated settlement before trial.

No. 10 Civ. 5845 (S.D.N.Y.)

Represented luxury goods plaintiffs in a case asserting false advertising, unfair competition, trademark infringement and trademark dilution arising out of defendant’s false assertions of “partnership” with the brands it sells and sales of used and damaged goods bearing plaintiffs’ marks.  Negotiated settlement before trial.

No. 10 Civ. 5534 (E.D.N.Y.)

Represented luxury goods plaintiffs in a case involving false advertising, unfair competition and trademark infringement arising out of defendants’ false assertions in relations to sales of plaintiffs’ watches, including that defendants sell only new products while in fact selling used and damaged watches. Secured consent judgment.

No. 10-1459 (D.N.J.)

Currently representing luxury goods plaintiffs in a counterfeiting action. Secured two separate ex parte seizure orders and temporary restraining orders in New Jersey and in New York.  Secured preliminary injunction against all defendants. Secured default judgment awarding more than $37 million in statutory damages against one defendant (2011 WL 3881498).

No. 08-CV-0412 (E.D.N.Y.)

Secured default judgment for plaintiff in trade dress infringement action, including monetary award of $93,279.67.

No 07-CV-5218 (E.D.N.Y.)

Represented plaintiff in trade dress infringement action. Negotiated settlement before trial.

No. 06-CV-13483 (E.D. Mich.)

Represented luxury goods plaintiff in a trademark dilution action.  Secured consent judgment.

430 F.3d 1036 (9th Cir. 2005), cert. denied, 126 S. Ct. 2969 (2006)

In the first judicial treatment of the new termination right enacted in the U.S. Copyright Term Extension Act of 1998, 17 U.S.C. § 304 (d), the U.S. Court of Appeals for the Ninth Circuit affirmed the District Court's decision rejecting an attempt by Disney and Clare Milne to cut off client Stephen Slesinger, Inc.'s right to receive royalties relating to Winnie the Pooh. The court held that Milne could not terminate a 1930 grant where the parties in 1983 had mutually revoked that grant and substituted a new one that was not subject to termination for significantly increased compensation to the author's heirs. The firm also represented Slesinger in successfully opposing Milne's Petition for a Writ of Certiorari filed in the U.S. Supreme Court. In February 2007, on the same theory we also successfully obtained a dismissal for Slesinger of an attempted termination action brought by the granddaughter of the illustrator of the Pooh works.

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.

335 F. Supp. 2d 412 (S.D.N.Y. 2004)

We obtained a preliminary injunction against ice cream company, CoolBrands, on behalf of the firm's client, Frozfruit. The U.S. District Court for the Southern District of New York held that Frozfruit was likely to prevail on the merits of its claim that CoolBrands' re-designed packaging for its frozen fruit bar was an infringement of the Frozfruit trade dress.

Published Works

First Successful Fraud Case in Five Years at U.S. Trademark Trial and Appeal Board

Mondaq, March 20, 2015.

Trademark Tacking is Factual Question for Juries Says U.S. Supreme Court

Mondaq, March 19, 2015.

Co-Existence Outside of U.S. May Be Relevant to Obtaining Permanent Injunction in U.S.

Mondaq, March 19, 2015.

Arresting Art Loan Seizures

24 Colum.- VLA J. of L. & Arts 213