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
- Snaidero Rino, S.p.A., an Italian designer and manufacture of luxury kitchens in a high-stakes contract and trademark dispute with Snaidero Rino’s long time U.S. distributor and former subsidiary, Snaidero USA.
- Mark Anthony International in a dispute with Bronco Wine Company before the Trademark Trial and Appeal Board regarding the CHECKMATE trademark for wine.
- Motel One, a leading European high design affordable hotel chain, in a trademark dispute before the Trademark Trial and Appeal Board related to its first hotel in the United States.
- StockX in a dispute brought by Nike for alleged trademark infringement related to StockX’s Vault Nike NFTs.
- Rauch Industries in a trademark litigation against Christopher Radko over his use of his name in selling competing Christmas ornaments.
- The Standard Hotel Group in defending a trademark suit by JWR Management regarding use of the Standard name on residential apartments and condos.
- MSCHF in an appeal to the Second Circuit from the district court’s preliminary injunction order against MSCHF's Wavy Baby artworks, which Vans alleged violated the trademarks and trade dress of its Old Skool sneakers.
- Snap Inc in a federal district court appeal of the USPTO’s refusal to register SPECTACLES trademark for Snap’s brand of wearable “smart glasses” on the grounds that SPECTACLES is a generic term.
- Diamond Hands Consulting in obtaining a preliminary injunction to protect its SATOSHISTREETBETS trademark, which it uses for popular online cryptocurrency discussion forums and other services, against a scheme by internet fraudsters to misappropriate the trademark to sell deceptive cryptocurrencies and NFTs.
- GrubHub, in persuading the district court to reject a magistrate judge’s recommendation that a preliminary injunction be entered against Grubhub’s use of its house and cutlery logo, and then obtaining affirmance of the preliminary injunction denial in the U.S. Court of Appeals for the Seventh Circuit.
- Fox Corporation in successfully defeating a preliminary injunction motion in a trademark and false advertising lawsuit brought by the owners of the 1980s United States Football League against the league and team names of the new USFL.
- The James Beard Foundation on a pro bono basis in successfully challenging a competing charity’s use of the slogan GOOD FOOD FOR GOOD PEOPLE, which infringed JBF’s registered trademark GOOD FOOD FOR GOOD, and in successfully defeating counterclaims seeking cancellation of JBF’s trademark.
- H&R Block in winning a preliminary injunction after a full evidentiary hearing against Square’s change of its corporate name to Block.
- Merck KGaA in trademark infringement, false advertising, cybersquatting, and breach of contract litigation against Merck & Co.
- Oliver Thomas in 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.
- Kate Spade in winning a verdict at trial defeating Saturdays Surf NYC’s trademark infringement challenge against the name of Kate Spade’s new global lifestyle brand, 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.
- American Express in winning summary judgment cancelling the trademark registration BlackCard.
- Pernod Ricard in a trade dress litigation against White Rock over its infringement of the white bottle trade dress used for Malibu flavored rums.
- Policygenius in multiple enforcement actions and subsequent successful negotiations to protects its distinctive POLICYGENIUS brand.
- Louis Vuitton in litigations involving infringement and dilution of its S-Lock and Epi nontraditional marks.
- Cubaexport and Havana Club Holdings in litigations relating to the famous Havana Club brand of rum.
- 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 more than ten appeals, including before the U.S. Supreme Court.
- 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.
- BodyArmor Nutrition in defense of a trademark infringement action brought by 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 Mojo snack bars.
- Swiss Watch in overturning a judgment that its Trimix watches counterfeited Audamars Piguet’s federally registered Royal Oak watch design.
- Kind LLC in a series of advertising challenges before the NAD against Clif, including the first ever decided by the NAD under its fast-track SWIFT procedure, in which Kind won a decision barring Clif from advertising its energy bars as being “better performing” for “sustained energy".
- 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 the deceptively named Mylanta NightTime.
- 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.
- 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.
- 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 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.
- BA Sports Nutrition in its defense of false advertising and trade disparagement claims by the makers of Gatorade about marketing materials comparing BODYARMOR Superdrink to Gatorade.
Internet and Domain Names
- Booking.com NV, one of the world’s leading digital travel companies, in its U.S. Supreme Court case – the first ever case argued by telephone in the Supreme Court – where the Court ruled 8-1 that Booking.com NV’s eponymous domain name is not generic and could register as a trademark.
- Novartis and Bayer in obtaining preliminary injunctions against the illegal importation of foreign pet medicines.
- Sought and won a preliminary injunction ordering turnover of two fraudulent domains imitating Debevoise & Plimpton under the Lanham Act’s anti-cybersquatting provisions.
- The International Trademark Association in amicus briefs filed in the Chloé v. Queen Bee, Tiffany v. Ebay, Rosetta Stone v. Google and Ohio State v. Redbubble appeals.
- Kibar and the Law Society (UK) in litigation to enforce UDRP decisions over their eponymous domain names.
- Prada in successfully defending copyright infringement claims related to a design derived from a vintage Hawaiian shirt.
- 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.