• Skip to primary navigation
  • Skip to content
  • Skip to primary sidebar

Fross Zelnick

  • People
  • Focus
  • Services

    Find Your Lawyer

    Richard Z. LehvNancy E. SabarraNadine H. JacobsonCarlos CucurellaDavid A. DonahueKatherine Lyon DaytonAmanda B. AgatiJason D. JonesLawrence Eli ApolzonBarbara A. SolomonAlexandra E. KochianChristina SauerbornJohn P. MargiottaMary StotteleAllison Strickland RickettsSara GoldmanRobin L. WarrenCole S. MathewsKimberly B. FrumkinAdrian E. Harrison Jr.Leo KittaySahil YadavKaren LimAlejandra Camacho LunaJames D. SilbersteinCharles T.J. Weigell, IIITodd MartinLydia T. GobenaJoyce M. FerraroNicole LiebermanLaura Popp-RosenbergCara A. BoyleAlexandra LenczewskiAngela García MedinaCraig S. MendeMaritza C. SchaefferShelby P. RokitoNancy DiConzaDaniel M. NuzzaciTamar Niv BessingerBrian LearyJames D. WeinbergerSherri N. DuitzAshford TuckerJennifer GibbinsRobert A. BeckerAndrew NietesJanet L. HoffmanAndrew N. FredbeckRobin N. Baydurcan
    • A
    • B
    • C
    • D
    • E
    • F
    • G
    • H
    • I
    • J
    • K
    • L
    • M
    • N
    • O
    • P
    • Q
    • R
    • S
    • T
    • u
    • v
    • w
    • x
    • y
    • z
    • View All
ShareBookmarkPrintPDF

Trademark

Fross Zelnick is the gold standard of trademark firms in the United States. With our 50-year history, there is likely no trademark issue that we have not handled – in the U.S. or around the world. Because of our known strengths and comprehensive experience, other law firms frequently seek our advice on unique or hard-to-handle U.S. and international issues. Our lawyers who represent clients around the world are so knowledgeable in the laws of many foreign countries that, uniquely, we often can provide initial opinions without consulting foreign trademark attorneys or agents.

We counsel U.S. and international clients – ranging from individuals to startups to companies valued at billions of dollars – on the best strategies to clear their trademarks for U.S. and worldwide use. We secure, protect, and enforce these rights, and manage large U.S. and global trademark portfolios for top brand owners across industries, including in the cosmetics, apparel, luxury goods, housewares, toys, retail services, consumer products, technology, publishing, financial, hospitality, pharmaceutical, real estate, food, beverage, hotel, and entertainment industries.

Strengths that Matter to our Clients

Selection – TM Search and Clearance – Clients benefit from our ability to recommend the quickest and most cost-effective search process, tailored to the nature of the mark and goods or services concerned, the countries of interest and the client’s budget. Our decades of experience enable us to give clients clear and succinct advice based on sophisticated risk evaluations and to carefully distinguish between infringement risk (availability of a mark for use) and possible barriers to obtaining registration. We investigate potentially problematic third-party marks to determine whether they truly pose a significant risk or justify the expense in attempting to overcome them. For international trademarks, clients derive a strategic benefit from our deep knowledge of – and experience with – relevant international treaties and systems, including the Paris Convention, the Madrid Agreement and Madrid Protocol IR registration system, the Community Trade Mark system of the European Union, the TRIPS Agreement, the Andean Pact and more.  Lawyers in our international practice also direct foreign counsel on overcoming office actions and refusals, taking a consistent approach to similar issues as they arise in different countries – this is much better for our clients. In doing so, our understanding of laws governing various international jurisdictions helps to ensure that action is not taken for success in one country that would put clients’ rights at risk elsewhere.

Adoption – TM Registration – We are particularly successful at overcoming blocking citations of prior marks and we take great care to identify inherent registrability or weakness issues that may undermine registration or enforcement, or increase the long-term costs associated with securing registrations for a proposed mark. The goal is to ensure that there are no surprises after a mark is adopted – in the U.S. or internationally – at both the use and registration levels, and as to enforcement. We maintain an extensive database of responses to Office Actions which saves clients precious time and money.

Protection – TM Enforcement and Defense – We manage U.S. and global enforcement programs for some of the world’s most iconic trademarks, by establishing appropriate watch services and evaluating third-party marks for which an opposition or cancellation action appears warranted – and distinguishing between serious encroachments, which may affect revenues, and more technical “maintenance” enforcement. When necessary, we implement sophisticated enforcement programs – including multi-jurisdictional international programs – to prevent the importation, sale and distribution of infringing or counterfeit products. Our Litigation team steps in when matters escalate to court.

Portfolio Management – TM Maintenance, Recordals and Renewals – Fross Zelnick’s proprietary trademark filing and prosecution database is constantly updated with the filing requirements of every jurisdiction in the world where trademark protection is possible. In the U.S., where there are strict use requirements, we take great care to ensure that maintenance of filings reflect the current status of use or excusable non-use. Because of these capabilities and the broad knowledge of Fross Zelnick lawyers, in-house legal teams often prefer that we carry out their filing programs through registration, recordals and renewals.

Transactions and Growth – Brand Licensing and M&A – We help to achieve the business goals of our clients by negotiating and drafting purchase, licensing, consent and coexistence agreements. We also provide critical guidance for clients to protect IP assets in the context of diverse business transactions, from advising on branding and licensing strategies to conducting due diligence in connection with an acquisition or divestiture – often working with traditional M&A law firms who appreciate our special abilities in this area. Upon completion of these transactions, we record them in the appropriate IP offices around the world.

Representative experience includes:

  • Among our more noteworthy registrations are the Red Sole for Christian Louboutin shoes, the TARZAN Yell for toys (among other things), the TIFFANY Blue Color and the TIFFANY Blue Box.
  • We advised on the trademark issues in an international joint venture transaction in which the lead lawyers for the transaction had developed representations and warranties for our client’s trademarks which were ambiguous, prone to unnecessary risk, and which failed to take account of different trademark regimes in the U.S. and multiple foreign countries.  Fross Zelnick’s lead trademark lawyer led a call with 20 other lawyers to explain how all of the trademarks worked.  With this solid background and detail to guide them, there were no further arguments and the $100 million deal closed.
  • For one of our pharmaceutical clients that was negotiating a joint venture, we searched 100 marks in 50+ countries in three weeks.   We know how to uncover where the problems  and what the issues are; we know precisely where to look and how to look so we can do it efficiently.  We learned that outside counsel for the other company had charged its client ten times more for its work.

Decisions

  • Moshik Nadav Typography LLC v. Banana Republic, LLC

    March 8, 2022

    Case No. 20-CV-8325

    On behalf of client Banana Republic, the firm was successful in dismissing a case brought by typographer Moshik Nadav, who alleged that our client used an ampersand he designed without permission in connection with certain promotions, alleging in three separate amended complaints claims sounding in unjust enrichment,More

  • Robert Kirkman, LLC v. The Toking Dead

    July 22, 2020

    Opposition No. 91242007 (T.T.A.B. July 22, 2020)

    On behalf of Robert Kirkman, LLC—owner of THE WALKING DEAD trademark associated with the comic book and television series—we successfully opposed in the TTAB an application to register the mark THE TOKING DEAD that covered retail merchandise related to comic books about zombies that smoke cannabis. More

  • Retrobrands USA LLC v. Intercontinental Great Brands, LLC

    May 29, 2020

    On behalf of client Intercontinental Great Brands, LLC (“IGBL”)—owner of the famous CHICLETS brand of chewing gum—we successfully defended against a cancellation action filed in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office in which Retrobrands USA, LLC sought to cancel IGBL’s registrations for the CHICLETS trademark on the ground that IGBL allegedly had abandoned the trademark in the United States.More

  • Saleh v. Sulka Trading Ltd., et al.

    April 30, 2020

    Case No. 19-2461 (2d Cir. 2020)

    The Second Circuit affirmed the S.D.N.Y.’s dismissal of a declaratory judgment action brought by Plaintiff Abdul Rehman Karim Saleh against our clients, Sulka Trading Ltd. and A. Sulka and Company Limited (together, “Sulka”). Sulka filed its motion to dismiss based on the ground that there was no actual controversy between the parties sufficient to create subject matter jurisdiction under the Declaratory Judgment Act because Saleh showed no evidence of an intent and ability to use the SULKA mark in an infringing manner in the U.More

  • Three Thirteen Licensing, LLC v. Marshall B. Mathers III

    December 31, 2019

    Opp. No. 91242434 (T.T.A.B.)

    Fross Zelnick successfully represented client Marshall B. Mathers III pka Eminem in a Trademark Trial & Appeal Board (TTAB) proceeding brought by opposer Three Thirteen Licensing, LLC, against his application to register E13 (stylized) for clothing. After the opposer failed to present testimony in support of its opposition,More

  • View All

Newsroom

  • WIPO: 2020 Version of 11th Edition of Nice Classification

    December 19, 2019

    By Karen Lim

    The 2020 version of the eleventh edition of the International Classification of Goods and Services (“Nice Classification”) will enter into force on January 1, 2020.  The International Bureau of WIPO will apply the 2020 version to: (i) any application for international registration that is received by the Office of origin on or after January 1,More

  • Argentina: New Invalidation and Non-Use Cancellation Procedures

    December 19, 2019

    By Alejandra Camacho Luna

    We recently discussed amendments to the Argentinean trademark law here. Subsequently, on October 8, 2019, the Argentine National Institute of Industrial Property (INAP) issued Resolution No. 279/2019 and corresponding annexes, which introduce new procedures for invalidation and non-use cancellation actions,More

  • Turkmenistan: New Trademark Law

    December 19, 2019

    By Janet L. Hoffman

    A new Law on Trademarks came into force on June 19, 2019 in Turkmenistan.  The most salient features of the new law are noted below:

    1. Definition of Trademark: The definition of “trademark” has been expanded to include “verbal,
    2. More
  • Malaysia: Accession to Madrid Protocol; New Trademark Laws

    December 19, 2019

    By Alejandra Camacho Luna

    On September 27, 2019, Malaysia acceded to the Madrid Protocol as the 106th member of the Madrid System. Malaysia’s accession follows from its obligations under the ASEAN Economic Community and commitment to the ASEAN Blueprint 2025. The Madrid Protocol will enter into force in Malaysia on December 27,More

  • TTAB: Doctrine of Foreign Equivalents Not Applicable to Personal Names

    December 19, 2019

    By Michael J. Antonucci

    Ricardo Media Inc. v. Inventive Software LLC, 2019 USPQ2d 311355 (T.T.A.B. 2019)

    In a recent precedential opinion, the Trademark Trial and Appeal Board (“TTAB”) declined to apply the Doctrine of Foreign Equivalents to recognizable personal names,More

  • View All

Primary Sidebar

Services

  • International
  • Litigation
  • Trademark
  • Transactions
  • Copyright
  • Social Media & Domain Names
  • Design
  • Publicity & Privacy

Related

People

  • Lydia T. Gobena

    Partner

  • Craig S. Mende

    Partner

  • Cara A. Boyle

    Partner

  • Karen Lim

    Partner

  • Janet L. Hoffman

    Senior Counsel

  • Nadine H. Jacobson

    Partner

  • James D. Weinberger

    Partner

  • Richard Z. Lehv

    Senior Litigation Counsel

  • Amanda B. Agati

    Partner

  • Laura Popp-Rosenberg

    Partner

  • View All
  • Sitemap
© 2023 Fross Zelnick
  • Fross Zelnick and FZ are registered trademarks of Fross Zelnick Lehrman & Zissu, P.C.
  • Attorney Advertising
  • Legal & Privacy
  • Connect with us on LinkedIn
  • Contact

Stay Connected

  • People
  • Focus
    • Celebrities, Bands & Athletes
    • Consumer Products
    • Entertainment Properties
    • Fashion
    • Startup & Emerging Growth
    • Food & Beverage
    • Hospitality & Hotels
    • Jewelry & Watches
    • Personal Care & Cosmetics
    • Pharmaceuticals
    • Professional Services
    • Publishing
    • Sports
    • Toys
  • Services
    • Trademark
    • Copyright
    • Design
    • Litigation
    • Transactions
    • Publicity & Privacy
    • Social Media & Domain Names
  • Decisions
  • Newsroom
  • Our Firm
    • About Our Firm
    • Contact
    • Recognition
    • Diversity & Inclusion
    • Pro Bono
    • Web TMS