Victory after trial in trademark opposition on behalf of growing restaurant chain
On behalf of Dig Inn Restaurant Group, the owner and operator of more than a dozen DIG INN restaurants which offer healthy, wholesome and eco-friendly meals, Yuval Marcus and Michelle Levin successfully opposed a trademark application filed by a competing restaurant for the mark DIG IN GULF and Design. After trial, the Trademark Trial and Appeal Board found in favor of Dig Inn and sustained the opposition, concluding that “because the marks are similar, the services, channels of trade and consumers are identical, and the services are subject to impulse purchase, we find, after balancing the relevant du Pont factors, that confusion is likely between the marks.”
DIG INN RESTAURANT GROUP LLC V. MURRAY, OPPOSITION NO. 91223145 (T.T.A.B.)
making new law
In Herb Reed, Leason Ellis attorneys Cameron Reuber and Yuval Marcus created new law in the Ninth Circuit in a trademark dispute involving to the right to use the name THE PLATTERS for musical performances. In vacating a preliminary injunction entered by the lower court, the Ninth Circuit applied the holding in the U.S Supreme Court's patent case eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), to trademark cases. The Ninth Circuit's decision eliminated the long-established rule that a plaintiff demonstrating a likelihood of trademark confusion is thereby entitled to presumption of irreparable harm per Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008).
Herb Reed Enterprises, LLC v. Florida Entertainment Management Inc., 736 F.3d 1239 (9th Cir.)
Walk-off home run in white plains courthouse
Leason Ellis had a walk-off home run in its home White Plains courthouse, cementing our position as a "get-it-done" IP firm prosecuting cases at the courthouse. This case concerned a broker whose portfolio of one-million domain names was recently acquired by GoDaddy. The broker was sued in White Plains in a trademark case involving Lanham Act cybersquatting, dilution, and false advertising claims. All claims were dismissed on summary judgment, with prejudice, in favor of our client. Marty Schwimmer and Cameron Reuber secured that victory.
NEW WORLD SOLUTIONS, INC. V. NAMEMEDIA INC., 150 F.SUPP.3D 287 (S.D.N.Y.)
Throwing shade at shutter shades
Representing plaintiffs Party City and Amscan Inc. in a patent and trademark infringement suit surrounding the plaintiffs’ manufacture, distribution and sale of sunglasses, Leason Ellis invalidated the trademark rights of defendants Shutter Shades, Inc. (“SSI”) and, its principal, Donald T. Wilkerson, in the mark SHUTTER SHADES in the course of procuring an order directing the U.S. Patent and Trademark Office to cancel SSI’s trademark registration for that mark. The Hon. Cathy Seibel granted plaintiffs’ summary judgment motion in its entirety, without the need for a full trial on the merits, finding as a matter of law that (i) Party City and Amscan did not infringe SSI’s purported trademark rights in the mark SHUTTER SHADES, and (ii) SSI’s trademark rights had in fact been abandoned due to its pattern of naked licensing (i.e., granting licenses without monitoring or controlling the quality of its licensees’ goods). The Court simultaneously denied defendants’ cross-motion for summary judgment on its counterclaim of trademark infringement. Further proceedings were ordered regarding whether plaintiffs intended to pursue their other claims seeking to invalidate SSI’s patent.
AMSCAN INC. AND PARTY CITY CORP. V. SHUTTER SHADES, INC. AND DONALD T. WILKERSON, 13-CV-1112 (CS) (S.D.N.Y.)
Trademark win in the eastern district of virginia
We represented Belmora, a Virginia pharmaceutical business, in its successful defense against a major pharmaceutical company seeking to cancel Belmora’s registration and to enjoin its use of its flagship mark. After an adverse decision before the Trademark Trial and Appeal Board, we were retained by Belmora to appeal to the Eastern District of Virginia. In the de novo proceeding, the adverse party added claims – alleging infringement of an unregistered mark and false advertising under the Lanham Act (as well as related state claims). In a case of first impression, Judge Gerald Bruce Lee dismissed all counts, holding that claimant had no standing to bring claims under the Lanham Act based solely on its alleged “substantial goodwill” and/or “fame” of its Mexican trademark, as long as it did not make use of its trademark in U.S. Commerce.
BELMORA LLC V. BAYER CONSUMER CARE AG AND BAYER HEALTHCARE LLC, 1:14-CV-00847-GBL (E.D.V.A.)
TRIAL VICTORY - JURY VERDICT OF $0 ON $22 MILLION CLAIM
We represented a textile business in its successful defense against a claim for nearly $22 million in damages. The claimant sought damages over an alleged material breach of a license agreement as well as associated claims for misappropriation, conversion, and unjust enrichment. Following a two-week trial in the White Plains federal courthouse of the United States District Court for the Southern District of New York, the jury returned a complete verdict for our client after less than a day of deliberation.
TRIBORO QUILT MANUFACTURING CORP. V. LUVE LLC, CIVIL ACTION NO. 7:10-CV-03604 (VB) (S.D.N.Y.)
gameologist not so lucky against Leason Ellis
Representing The New York State Division of the Lottery in a five-year trademark infringement suit surrounding the manufacture, distribution and sale of “scratch-off” lottery tickets, we invalidated the rights of Plaintiff The Gameologist Group, Inc. in the mark BLING BLING in the course of procuring an order on summary judgment dismissing all claims against the defendant with prejudice.
The Gameologist Group, LLC v. New York Division of Lottery, Case # 46-1-2010-0808
Peter Sloane and Cameron Reuber briefed and argued a successful motion for summary judgment dismissing all claims against defendant international diversified gaming client. Judge Koeltl agreed that the plaintiff's claims for trademark infringement, unfair competition, breach of contract, and associated business torts had no merit insofar as plaintiff had not accumulated sufficient rights in the asserted trademarks to preclude the use of similar marks for lottery tickets by several state lotteries. The Second Circuit affirmed the dismissal of all claims.
the GAMEOLOGIST GROUP, LLC V. SCIENTIFIC GAMES INTERN., INC., 2011 WL 5075224 (S.D.N.Y.), AFFIRMED, 2013 WL 276078 (2D CIR.)
piece of cake
Karin Segall represented the successful applicant in Cake Divas v. Charmaine Jones. In dismissing the opposition, the Trademark Trial and Appeal Board held that the applicant had established a proprietary interest in the mark CAKE DIVA prior to that of opposer.
CAKE DIVAS V. CHARMAINE JONES, OPPOSITION NO. 91177301 (T.T.A.B.)
LIKELIHOOD of confusion win for theraflu mark
Peter Sloane successfully prepresented Novartis AG in an oppostion mark CERAFLU for "oral hydration powdered nutritional supplement drink mix" in Class 5. The Trademark Trial and Appeal Board agreed that there was a likelihood of confusion with Novartis' mark Theraflu for cold and cough preparations. In upholding the opposition, the Board found THERAFLU to be a "distinctive, strong and famous mark."
NOVARTIS AG V. CERA PRODUCTS, INC., 2009 WL 871661 (T.T.A.B.)
"TRAP BUY" INSUFFICIENT TO CLAIM JURISDICTION
Representing New York-based non-profits, Be Positive Works, LLC and the B+ Foundation, Inc., Leason Ellis attorneys Peter Sloane and Lauren Sabol obtained a dismissal for lack of personal jurisdiction in a trademark infringement suit filed against our clients in Delaware. In granting our motion to dismiss, Chief Judge Leonard Stark of the District of Delaware agreed that one “trap buy” orchestrated by the plaintiff’s counsel was insufficient to confer jurisdiction. Leason Ellis worked with local Delaware counsel, Elizabeth Wilburn Joyce of Pinckney, Weidinger, Urban & Joyce LLC, to obtain this favorable result for our clients.
McDonough v. Gorman et al., 16-cv-203 (LPS) (D.Del.)
Leason Ellis Successfully Defends Against Preliminary Injunction
On behalf of clients Barton Cirker LLC and Cirker’s City Center Warehouse Inc., Peter Sloane, Cameron Reuber and Lauren Sabol successfully defended against a motion for a preliminary injunction seeking to prohibit our client’s use of its licensed trademarks and family name. The matter involved extensive briefing relating to the parties’ trademark rights and obligations under an existing asset purchase agreement. Within hours of oral argument, Judge Castel of the Southern District of New York dissolved the previously entered temporary restraining order against our client and denied the plaintiff’s request for a preliminary injunction.
Cirkers, LLC v. Barton Cirker, LLC et al., 16-cv-6830 (PKC) (S.D.N.Y.)
FAVORABLE SETTLEMENT FOR FASHION DESIGNERS IN PRO BONO CASE
Leason Ellis, selected as pro bono counsel by the Southern District of New York’s Office of Pro Se Litigation, defended and negotiated favorable settlement for pro bono client. In this matter, Peter Sloane and Lauren Sabol represented New York-based fashion designers Matthew Mendoza and Christopher Toro in a trademark infringement case brought by a third party fashion designer over rights to the trademark LAVISH for apparel and accessories. At the close of expedited discovery, the parties reached an amicable settlement which allowed defendants to continue to use and register the trademark LAVISH NYC. In his Order of Dismissal, Magistrate Judge Cott expressed his gratitude to legal counsel for providing pro bono services.
win early, win often
Leason Ellis obtained favorable settlement for digital marketing company in trademark infringement suit. Leason Ellis sought preliminary injunctive relief for the client based on mounting consumer confusion in the marketplace. After the filing of the motion, the defendant agreed to resolve the dispute on favorable terms to our client.