Experience

• Trademark

  • Casa Azul Spirits in the successful defense against trademark infringement claims brought by Casa Tradicíon, the maker of Clase Azul tequila, in an action that challenged the CASA AZUL trademark for tequila and tequila soda.
  • 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.
  • 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.
  • H&R Block in winning a preliminary injunction after a full evidentiary hearing against Square’s change of its corporate name to Block.
  • WeWork, in securing a highly favorable settlement in a multijurisdictional trademark dispute with a coworking rival on the eve of a preliminary injunction hearing.
  • Bank of America in defending a challenge to its ownership and use of the trademark ERICA for its virtual financial assistant, beating back a motion for preliminary injunction, and winning summary judgment.
  • Costco Wholesale Corp. before the U.S. Court of Appeals for the Second Circuit in successfully overturning the lower court’s summary judgment decision that Costco counterfeited and willfully infringed Tiffany & Co.’s TIFFANY trademark for diamond engagement rings.
  • New York & Co. in obtaining reversal of trebled damages following a jury verdict of trademark infringement.
  • Exponent Private Equity LLC in favorably resolving two trademark disputes with two unrelated companies offering financial services under the identical EXPONENT marks.
  • WeWork in favorably resolving a challenge before the Trademark Trial and Appeal Board to the validity of its WE family of trademarks.
  • Snyder’s-Lance in cancellation proceedings in the Court of Appeals for the Federal Circuit, over the "Pretzel Crisps" trademark.
  • BA Sports Nutrition, makers of BodyArmor Super Drink, in defense of a trademark infringement action brought by Under Armour, makers of Under Armour sports clothing, equipment and related goods.
  • Moxie Software in a trademark infringement action filed in the Southern District of New York by Zenith Optimedia and its subsidiary Moxie Marketing Services.
  • Case-Mate in trademark claims against Wal-Mart over its sale of Casemate branded school and office supplies.
  • Snap Inc. in defense of a trademark infringement lawsuit brought by Snap Interactive, Inc. with respect to Snap, Inc.'s corporate name.

• 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.
  • Ambac, a provider of financial guarantees, in securing in a UDRP proceeding the transfer of a domain name from a cybersquatter that created a fraudulent website designed to obtain customers’ financial information.

  • UNTUCKit, in a Nominet proceeding to secure the domain name untuckit.uk.co from a cybersquatter.

• False Advertising

  • 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".
  • 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.
  • 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.

• Media and Entertainment

  • A leading developer of interactive entertainment in defense of claims privacy violations.
  • Prometheus Global Media and its publication, the Hollywood Reporter, in defending a libel action filed in N.Y. Supreme Court by movie financier David Bergstein.
  • Take-Two Interactive Software, in a dispute with the Chicago Transit Authority, which unilaterally removed advertisements for Grand Theft Auto IV, violating Take-Two’s first amendment rights.

• Copyright

  • Costco Wholesale in the successful Ninth Circuit appeal defending against the claim that Costco’s sale of gray market Seamaster watches infringed Omega’s copyright in a tiny globe design engraving on the back of the watches.