David Bernstein chairs Debevoise’s Intellectual Property Litigation Group. He is widely recognized as one of the nation’s leading ...
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Trademark and Trade Dress
- Merck KGaA in trademark infringement, false advertising and breach of contract litigation against Merck & Co., Inc.
- Black Diamond Group and Oliver Thomas in winning a complete victory at trial defeating MZ Wallace’s trade dress infringement claim involving a quilted handbag design.
- 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 Saturday Surf’s trademark infringement challenge against the new mark, Kate Spade Saturday.
- Allied Domecq in obtaining dismissal of ownership claims filed by a Russian Federation entity related to the Stolichnaya trademark.
- WeWork, in securing a highly favorable settlement in a multijurisdictional trademark dispute with a coworking rival on the eve of a preliminary injunction hearing.
- PayPal in negotiating a favorable, confidential settlement with Pandora in a highly publicized case addressing the protection of mobile app icons.
- 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.
- 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 Argan 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.
- Louis Vuitton in litigations involving infringement and dilution of its S-Lock and Epi marks.
- Cubaexport and Havana Club Holdings in litigations relating to the famous Havana Club brand of rum.
- Glacéau, maker of VitaminWater, in prosecuting a TRO against PepsiCo over the trade dress of LifeWater.
- New York & Co. in obtaining reversal of trebled damages following a jury verdict of trademark infringement.
- 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. the Court of Appeals for the Federal Circuit, and the Western District of North Carolina over the "Pretzel Crisps" trademark.
- Industrias 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.
- 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.
- Foundation Medicine in a California false advertising litigation filed by a competitor over methods of validating genomic assays of cancer cells.
- 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.
- 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.
- American Express in false advertising challenges against Visa’s television commercials claiming superior card acceptance.
- 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 in successful challenges in court and before the NAD against Bausch & Lomb advertising that falsely disparaged Alcon’s Opti-Free Express contact lens solution.
- BodyArmor in false advertising challenges filed by Gatorade before the NAD.
- The International Trademark Association in an amicus brief filed in the Ferring Pharmaceuticals appeal.
Internet and Domain Names
- 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.
- Prada in successfully defending against copyright infringement claims related to its use of a design derived from a vintage Hawaiian shirt pattern and obtaining cancellation of plaintiff’s copyright registration.
- Spectrum Brands in defending against a preliminary injunction for copyright and trademark infringement filed by Energizer against Spectrum’s new Rayovac battery packaging.
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 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 multijurisdictional 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.