David Bernstein is a litigation partner and a member of the firm’s Intellectual Property and International Dispute Resolution Groups. He is one of ...
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Trademark and Trade Dress
- Yves Saint Laurent in defeating a motion for a preliminary injunction by Christian Louboutin over YSL’s red-soled shoes, and subsequently obtaining dismissal of all claims by the Court of Appeals for the Second Circuit.
- Kate Spade in winning a verdict at trial defeating Saturdays Surf’s trademark infringement challenge against the new mark, Kate Spade Saturday.
- American Express in winning summary judgment cancelling the trademark registration BlackCard.
- Goyard Saint Honore in preventing the sale by a prominent retailer of a woman's top that counterfeited the registered Goyardine pattern, and obtaining complete disgorgement of all profits.
- Kind in a trademark dispute relating to a brand of vitamin supplements called Kind Organics.
- Moroccanoil in trademark and trade dress litigation and cancellation proceedings against Avon related to the registrability of its Moroccanoil trademark and Avon's unauthorized use of the Moroccanoil trade dress and the word "Moroccan" on its competing "Moroccan Argon Oil" products.
- Pernod Ricard in a trade dress litigation against White Rock over its infringement of the white bottle trade dress used for Malibu flavored rums.
- Pernod Ricard in obtaining dismissal of ownership claims filed by a Russian Federation entity related to the Stolichnaya trademark.
- Louis Vuitton in litigations involving infringement and dilution of its S-Lock and Epi marks.
- Cubaexport and Pernod Ricard in litigations relating to the famous Havana Club brand of rum.
- Glacéau, maker of VitaminWater, in prosecuting a temporary restraining order against PepsiCo over the trade dress of LifeWater.
- The International Trademark Association in amicus briefs filed in the B&B Hardware, Chewy Vuiton, Charbucks, Herb Reed Enterprises, Levi Strauss v. Abercrombie & Fitch, Betty Boop and Already v. Nike appeals.
- Snyder’s Lance in cancellation and opposition proceedings in the Trademark Trial and Appeals Board and the Court of Appeals for the Federal Circuit over the “Pretzel Crisps” trademark.
- AlEn in an ITC investigation and associated litigations over Pinol and Cloralex, which are well-known brands in Mexico, over Clorox’s claims of infringement of its Pine-Sol and Clorox trademarks.
- Body Armor Nutrition, which makes BodyArmor nutritional drinks, in defending against trademark and trade dress infringement claims by the sports apparel company Under Armour.
- Mike's Hard Lemonade in obtaining a TRO against the trade dress for Seagram's Ricked Spiked Lemonade.
- Kind in a preliminary injunction hearing and Second Circuit appeal challenging the trade dress of Clif’s competing Mojo snack bars.
- Swiss Watch in successfully overturning a judgment that its Swiss Legend Trimix watches counterfeited Audamars Piguet’s federally-registered Royal Oak watch design.
Internet and Domain Names
- Novartis and Bayer in obtaining preliminary injunctions against the illegal importation of foreign pet medicines into the United States.
- The International Trademark Association in amicus briefs filed in the Chloé v. Queen Bee, Tiffany v. Ebay, and Rosetta Stone v. Google appeals.
- Kibar and the Law Society (UK) in litigation to enforce UDRP decisions over their eponymous domain names.
- Bayer in false advertising challenges against Merial, Sergeant's, Summit, Elanco, and Farnam over advertising for their competitive flea and tick control products for pets.
- Nestlé, in back-to-back victories in false advertising disputes against Ross Laboratories over advertising for Ross's Isomil Advance and Similac EarlyShield baby formulas.
- Alcon Laboratories in successful challenges in court and before the NAD against Bausch & Lomb advertising that falsely disparaged Alcon’s Opti-Free Express contact lens solution.
- The International Trademark Association in an amicus brief filed in the Ferring Pharmaceuticals appeal.
- Unilever in false advertising claims against Just Mayo sandwich spread on the ground that the Just Mayo name is false because the product contains no eggs and therefore is not mayonnaise.
- Novartis in obtaining a preliminary injunction against Mylanta NightTime on the ground that the name deceptively implies that the product would prevent heartburn all night long.
- Apple in defending against copyright and trade dress infringement claims related to its display in its stores and on its website of an original work of art that allegedly infringes the artistic style of Brazilian artist Romero Britto.
- Prada in successfully defending against copyright infringement claims related to its use of a design derived from a vintage Hawaiian shirt pattern.
Patents and Trade Secrets
- Absolut Spirits in obtaining summary judgment dismissing trade secret and idea misappropriation claims relating to its sponsorship of a reality television show.
- Tilia, maker of the FoodSaver brand of home vacuum-sealing machines, in patent arbitration and ITC proceedings against Applica over its knock-off versions of the FoodSaver machines, sold under the Black & Decker brand.
- Galderma in successfully defending against multi-jurisdictional patent infringement claims involving its cancer drug Metvix.
- Yale Law School, 1989, J.D.
- London School of Economics and Political Science, 1986, M.S.
- Princeton University, 1985, A.B.