Intellectual Property
Overview
Barack Ferrazzano’s Intellectual Property Group has extensive experience in the protection, management, and enforcement of our clients’ intellectual property assets. Our IP Group understands the value of trademarks, copyrights, design patents, and trade secrets, and how best to select, use, and protect these valuable assets. We have extensive experience in all facets of IP practice, including counseling, licensing, prosecution, business transactions involving intellectual property, registration, enforcement, and litigation. We represent clients in a broad range of industries, including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.
Trademarks & Trade Dress
We understand that our clients’ trademarks, logos, and trade dress are the cornerstone of their brands. We have extensive experience in all aspects relating to the development and protection of our clients’ trademarks and trade dress, and we count among our clients some of the world’s most well-known brands. Our trademark practice includes:
- Trademark Clearance. We conduct trademark clearance on a thorough and cost-effective basis for trademarks and trade dress, both domestically and worldwide.
- Prosecution and Maintenance. We regularly handle the registration and maintenance of large worldwide trademark portfolios, as well as opposition and cancellation proceedings. We have a network of skilled foreign associates with whom we have worked extensively.
- Counseling. We counsel our clients on how to strengthen the protection of their trademarks, on proper trademark usage, and on the most cost-effective way to build their brands.
- Policing. We routinely advise clients on the importance of policing their marks to prevent third-party use, and handle these activities in a cost-sensitive manner, including the implementation of watch services and counseling regarding potentially infringing marks. We also consider the impact of social media when advising clients on how to protect their brands.
- Complex Transactions. We handle corporate transactions for famous brands, both domestically and internationally, in the context of acquisitions and sales. Not only are the attorneys in our group skilled at structuring transactions to enhance the protection of all aspects of IP rights, our strong litigation background enables us to identify and provide advice to minimize transactional risks.
- Licensing. We negotiate and draft a wide variety of trademark licenses. We also routinely handle assignments, security interests, and other agreements relating to trademark rights.
- Litigation. Our attorneys have nationwide experience in all aspects of trademark and trade dress litigation, including infringement, counterfeiting, false advertising, false endorsement, and dilution.
- ADR. We are highly experienced in using alternative dispute resolutions to achieve solutions to legal problems without litigation.
Right of Publicity
Our practice group is experienced in evaluating and litigating right of publicity claims and negotiating endorsement agreements.
Copyright
Our IP practice group has a strong background in counseling and in protecting our clients’ copyrights, including:
- Copyright prosecution;
- Counseling clients on how to develop and protect ownership of copyrighted works;
- Counseling clients to minimize the risk of infringement claims;
- Drafting license and assignment agreements;
- Advising clients in complex transactions; and
- Litigating copyright infringement lawsuits.
Trade Secrets
We have extensive experience in the protection of our clients’ trade secrets and sensitive business information. We counsel our clients on how to protect their valuable trade secrets by developing trade secret protection programs. We draft, negotiate, and enforce confidentiality and non-compete agreements, and we litigate trade secret and non-compete disputes across the country.
Design Patents
Our IP practice includes Design Patent counseling, prosecution, and litigation.
Software
Our intellectual property attorneys counsel entities and individuals engaged in the development, distribution, licensing, and other commercialization of software. Our work in this area includes:
- Drafting and negotiating software development agreements, distribution agreements, reseller agreements, and traditional and custom licensing agreements;
- Assisting our clients with the preparation of enforceable invention assignments and confidentiality agreements for use with employees and independent contractors;
- Counseling clients on how to protect the proprietary elements of developed and licensed software, including source code, documentation, websites, content, trademarks, copyrights, trade secrets, algorithms, and enhancements;
- Identifying and addressing software-specific issues in mergers and acquisitions, including addressing ownership issues, transition matters, and “open source” licensing concerns; and
- Developing software development policies designed to prevent unauthorized use of “open source” software.
Internet
We recognize that the legal issues relating to the Internet – including domain name protection, e-commerce, social media, and the hidden use of trademarks in metatags and key words – constitute a dynamic and increasingly important area of the law. Our IP Group is well-versed on these issues, and our practice includes:
- Internet domain name acquisition and registration;
- Negotiating agreements and policies relating to Internet and cloud issues, including website terms of use, privacy policies, and disclosures;
- Social media counseling;
- Internet domain name infringement and cybersquatting disputes;
- Metatag and key word disputes; and
- Copyright infringement and trade dress claims regarding website copying.
Our Team
Having practiced extensively in large firm and boutique environments, our intellectual property attorneys bring years of experience and a creative approach to their work. Our intellectual property group includes attorneys with experience in complex contract negotiation, strategic transactions, ongoing business counseling, litigation, and dispute resolution. As a result, we maintain an impressive record of crafting favorable outcomes to a wide array of challenges in both transactional and litigation scenarios. Some of our attorneys focus on IP counseling, licensing, business transition, and portfolio management matters, while others focus on IP litigation. Our practice is supported by highly skilled paralegals and a state-of-the-art intellectual property asset management database system.
Experience
Trademark Infringement Litigation
DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd. Defended De Beers Diamond Jewellers Ltd. in a trademark infringement action.
GoSmile, Inc. v. CVS Caremark Corporation. Represented GoSmile, Inc. in a trademark and trade dress infringement action.
Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A. Represented Louis Vuitton in a trademark infringement action; we obtained a consent injunction and the plaintiff’s agreement to pay the legal fees our client incurred in the action.
Louis Vuitton Malletier S.A. v. Dooney Bourke. Represented Louis Vuitton Malletier in a successful appeal to U.S. Court of Appeals for the Second Circuit; we obtained a reversal of the District Court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.
Louis Vuitton Malletier, S.A. v. Hyundai Motor America. Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.
T 7 Group, LLC v. Sutton Civil Action. Represented T 7 Group, a local streetwear company in a trademark infringement action. We obtained an award of our client’s damages and injunctive relief, rejecting the defendant's federal trademark application and transferring the defendant’s infringing domain name to our client.
Zodiac Spirits, Inc. v. Moët Hennessy U.S.A. Defended Moët Hennessy in a trademark infringement action.
Represented GIBC, Inc., a well-known micro-brewery (Goose Island Beer), in a trademark infringement action, successfully enjoining a competitor’s use of a beer tap handle that infringed upon GIBC’s trademarked “Goose Head” beer tap handle.
Represented Fendi in a trademark infringement action against a major discount retailer, arising out of the defendant retailer’s sale of allegedly counterfeit Fendi handbags, wallets, and other accessories in its warehouse stores.
Trade Secret Litigation
Cintas Corp. v. America West Airlines, Inc. Defended America West Airlines in a case alleging misappropriation of trade secrets.
DF Institute, LLC d/b/a Kaplan Professional v. Dalton Education, LLC et al. Litigated claims under the Defend Trade Secrets Act involving former employees recruited to join a directly competing company.
Brand Amabassador Agreements
Representation of Givenchy – a Louis Vuitton Moët Hennessy luxury brand known for its haute couture clothing, accessories, and perfume – in the negotiation of a relationship deal with prominent actress and singer Ariana Grande as the new face of Givenchy. Ariana will be featured in Givenchy’s Fall-Winter 2019 campaign, to be unveiled in July (Announced: May 2019).
Copyright Infringement Litigation
Represented an author in successfully resolving a copyright infringement claim, without the need for litigation.
Represented a quilt manufacturer in successfully defending a copyright infringement claim concerning the fabric patterns used for quilts, without the need for litigation.
False Advertising Litigation
Miller Coors Beverage Co. USA, LLC v. Anheuser-Busch Companies, LLC. Member of the defense team who obtained a reversal of a preliminary injunction in a high-profile competitor false advertising dispute arising out of the 2019 Super Bowl. Law360 named the appellate court’s decision the #3 most significant Lanham Act decision of midyear 2020.
Trademark Dilution Litigation
Louis Vuitton Malletier, S.A. v. Hyundai Motor America. Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.
Intellectual Property Acquisition & Counseling
Serve as counsel to L Catterton, the largest consumer-focused private equity group in the world, in connection with its growth investments in leading consumer brands, including recent investments in NotCo, Hydrow, FlashParking, ThirdLove, ClassPass, and Il Makiage.
Represented a division of LVMH in the intellectual property aspects of its acquisition of Millennium Imports, LLC, which held the worldwide rights to Belvedere and Chopin brand vodkas, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.
Represented various divisions of LVMH Moët Hennessy Louis Vuitton, S.A. in the intellectual property aspects of their acquisitions of Bliss, Fresh, Benefit, Urban Decay, Hard Candy, Donna Karan, Belvedere Vodka, including overseeing the intellectual property-related due diligence activity and negotiating the intellectual property-related provisions of the transaction documents.
Represented Accor S.A. in the intellectual property aspects of its sale of an interest in Carlson Wagonlit Travel, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.
Representation of Kendo Holdings, Inc., a cosmetics and beauty incubator company owned by LVMH Moët Hennessy Louis Vuitton and affiliated with Sephora, in strategic transactions related to the formation and launch of the brand Fenty Beauty by Rihanna.
Representation of LVMH Moët Hennessy Louis Vuitton (LVMH) in strategic corporate and intellectual property transactions related to the formation and launch of Fenty by Rihanna, a new luxury fashion maison of ready-to-wear clothing, shoes, and accessories. The historic collaboration will make Rihanna the first woman to create an original LVMH brand, and Fenty the first LVMH-established fashion house in more than 30 years (Announced: May 2019).
Represented LVMH Luxury Ventures, an investment arm of LVMH Moët Hennessy Louis Vuitton SE, in its equity investment in renowned horology authority HODINKEE.
Represented Moët Hennessy, a division of LVMH Moët Hennessy Louis Vuitton SE, in its acquisition of a minority stake & distribution partnership with WhistlePig Whiskey.
Representation of Sephora in negotiations with Kohl's on a long-term strategic partnership to create a new era of elevated Beauty at Kohl's, marrying Kohl's expansive customer reach and omnichannel convenience with Sephora's prestige service, product selection and exceptional beauty experience.
Trademark Counterfeiting Litigation
Represented Fendi in a trademark infringement action against a major discount retailer, arising out of the defendant retailer’s sale of allegedly counterfeit Fendi handbags, wallets, and other accessories in its warehouse stores.
Federal Trademark Prosecution
Ongoing representation of several cosmetic companies in connection with the prosecution, maintenance, and licensing of their worldwide trademark portfolios, of which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.
Ongoing representation of a prominent wine and spirits manufacturer and distributor in connection with the prosecution, maintenance, and licensing of its worldwide trademark portfolio, of which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.
In a coordinated effort with over 70 foreign associates, Scott cleared and applied to register a multi-national corporate client's new trademark in over 75 countries on the same day. Scott devised the difficult international filing strategy to stave off potential infringers from around the world.
Trademark Trial and Appeal Board Appeals, Oppositions, and Cancellations
Abbott Laboratories v. New Age Beverages Corporation. Represented Abbott Laboratories in successfully opposing application to register PEDIAADE based on Abbott’s PEDIALYTE trademarks.
Abbott Laboratories v. Salud y Bellezza Inc. Represented Abbott Laboratories in successfully opposing application to register SIMILAX-OL based on Abbott’s SIMILAC trademarks.
Affordable Care, LLC v. Boston Dental Group, LLC. Represented Affordable Care, LLC in successfully opposing application to register 4DABLE DENTAL CARE based on Affordable Care’s AFFORDABLE DENTURES trademarks.
Affordable Care, LLC v. EmbraceKids, a professional LLC. Represented Affordable Care, LLC in successfully opposing application to register AFFORDABLE FEES, PRICELSS SMILES based on Affordable Care’s AFFORDABLE DENTURES trademarks.
Affordable Care, LLC v. Hamid Rouhani. Represented Affordable Care, LLC in successfully opposing application to register AB AFFORDABLE BRACES BY A GENERAL DENTIST based on Affordable Care’s AFFORDABLE DENTURES trademarks.
Affordable Care, LLC v. Jason R. Stott. Represented Affordable Care, LLC in successfully opposing application to register OPEN AND AFFORDABLE DENTAL based on Affordable Care’s AFFORDABLE DENTURES trademarks.
Affordable Care, LLC v. Straight Teeth Direct. Represented Affordable Care, LLC in successfully opposing application to register STARIGHT TEETH DIRECT AFFORDABLE INVISIBLE AT HOME based on Affordable Care’s AFFORDABLE DENTURES trademarks.
Affordable Care, LLC v. Tri Pham. Represented Affordable Care, LLC in successfully opposing application to register AFFORDABLE DENTIST NEAR ME based on Affordable Care’s AFFORDABLE DENTURES trademarks.
AlinaRoytberg v. Tavern 242 LP DBA Bartlett Hall City Rental Management LLC. Representing AlinaRoytberg in opposition against Tavern’s application to register BARTLETT HALL based on AlinaRoytberg’s trademark for BARTLETT HALL.
Automobil Lamborghini S.p.A. v. General Motors, LLC. Representing Automobil Lamborghini in opposing application to register SURUS application based on Lamborghini’s URUS registrations.
Campari America v. Polmos Zyrardow Spolka Z Ogranicazon Odpowiedzialnoscia. Representing Polmos in defending opposition brought by Campari America over Polmos’ application to register NATURALLY SMOOTH based on Campari’s NATURALLY SMOOTH trademarks.
Carol Cole Company v. Susanne Lang Fragrance Inc. Represented Susann Lang Fragrance Inc. in successfully defending application to register THE NEW FACE OF CLEAN against Carol Cole Company.
Dave & Busters I, L.P. v. Main Event Entertainment, L.P. Represented Main Event Entertainment, L.P. in successfully defending application to register EAT. BOWL. PLAY from opposition by Dave & Busters I, L.P.
Defiant Crew MC v. Defiant Crew Motorcycle Club. Representing Defiant Crew MC in opposition against Defiant Crew Motorcycle Club’s application to register DEFIANT CREW MC 4X3 based on Defiant Crew MC’s mark for DEFIANT CREW MC 4X3.
ESAB Group, Inc. v. Lincoln Global, Inc. Represented Lincoln Global, Inc. in successfully defending cancellation action filed against its registration for FLASHBACK FRIDAY.
Fresh, Inc. v. Best Accessory Group, LLC. Representing Fresh, Inc. in opposition against Best Accessory Group’s application to register FRESHSWEET based on Fresh, Inc.’s FRESH trademarks.
Fresh, Inc. v. Joanne Dampney. Representing Fresh, Inc. in opposition against Joanne Dampney’s application to register JUICE GLOW based on Fresh, Inc.’s GLOW JUICE trademarks.
Fresh, Inc. v. Karilyn A. Colegrove. Representing Fresh, Inc. in opposition against Karilyn A. Colegrove’s application to register FRESHY based on Fresh, Inc.’s FRESH trademarks.
Fresh, Inc. v. Naterra International, Inc. Representing Fresh, Inc. in opposition against Naterra International’s application to register SUGARLIPS based on Fresh, Inc.’s SUGAR trademarks.
Fresh, Inc. v. Shenzhen Carlzi Trading Co., Ltd. Representing Fresh, Inc. in opposition against Shenzhen Carlzi Trading’s application to register FLOWERWORLD.
HFC Prestige International Holding Switzerland Sarl and the Wella Corporation v. Xuchang Shangtai Import and Export Co., Ltd. Represented HFC Prestige International Holding Switzerland Sarl and the Wella Corporation in successfully opposing application to register ORNATE HAIR.
Hugo Boss Trademark Management Gmbh & Co., KG v. LA Event Development LLC. Represented Hugo Boss in successfully opposing application to register BOSSY BOOTS.
Implant Seminars, Inc. v. Live Implants Corporation. Represented Live Implants Corporation in successfully defending registration for LIVE IMPLANT TRAINING in cancellation filed by Implant Seminars, Inc.
Katherine Cohen Ph. D. v. Angela Willingham. Representing Katherine Cohen in opposition against Angela Willingham’s application to register EZY-PEEZY SWIMWEAR based on Katherine Cohen’s registrations for EASYPEESIES and PEESIES.
Katherine Cohen Ph. D. v. Olanrewaju Jimoh Irawo. Representing Katherine Cohen Ph. D. in opposition against Olanrewaju Jimoh Irawo’s application to register EZ2P based on Cohen’s registrations for EASYPEESIES and PEESIES.
Kind Management Inc. v. Grupo Bimbo, S.A.B. de C.V. Represented Kind Management Inc. in successfully opposing application to register KINDLITE by Grupo Bimbo S.A.B. de C.V.
KVD Vegan Beauty LLC v. Kenia Ortega. Represented KVD Vegan Beauty in opposing application to register KVO based on KVD Vegan Beauty’s KVD trademarks.
MK Products, Inc. v. Lincoln Global, Inc. Represented Lincoln Global, Inc. in successfully defending opposition to application to register PYTHONIX.
Molly’s Cupcakes IP Holding Company, LLC v. Bakeovers, Inc. Representing Molly’s Cupcakes IP Holding Company, LLC in opposition against Bakeovers, Inc.’s application to register GOOD MOLLY’S based on Molly’s Cupcake’s MOLLY’S CUPCAKES trademarks.
Molly’s Cupcakes IP Holding Company, LLC v. Molly B’z Inc. Representing Molly’s Cupcakes IP Holding Company, LLC in opposition against Molly B’z Inc.’s application to register MOLLY BZ based on Molly’s Cupcakes MOLLY’S CUPCAKES trademarks.
Monster Energy Co. v. Cavaliers Hockey Holdings, LLC. Defended a professional hockey franchise in consolidated trademark opposition proceedings involving full trial on the merits.
MPP Co., Inc. v. St. Jude Medical, Inc. Represented St. Jude Medical, Inc. in successfully defending opposition to its MPP trademark by MPP Co., Inc.
NP IP Holdings v. Incredible Technologies, Inc. Represented Incredible Technologies, Inc. in successfully defending application to register BIG PRIZE BUBBLEGUM JUMBO against NP IP Holdings.
Penguin Books Limited v. Late for the Sky Productions Co., Inc. Represented Late for the Sky Productions Co., Inc. in defending opposition to PENGUIN OPOLY.
Polmos Zyrardow Spolka Z Ogranicazon Odpowiedzialnoscia v. HotelAB, LLC. Representing Polmos in opposition against HotelAB, LLC’s application to register BELVEDERE-ON-HUDSON based on Polmos’ BELVEDERE trademarks.
Primerica, Inc. v. How Money Works, LLC. Defended a financial services company in trademark cancellation action.
Progressive Casualty Insurance Company v. Decos Beheer B.V. Represented Progressive Casualty Insurance Company in successfully opposing FLO trademark based on Progressive’s FLO character.
Reinhart Foodservice, L.L.C. v. Shields & Mudd Holdings, LLC. Represented Reinhart Foodservice, L.L.C. in successfully opposing application to register NAUTIFISH RUM BAR.
Royal Brush Manufacturing, Inc. v. Chique Brow. Represented Royal Brush Manufacturing, Inc. in cancellation action against Chique Brow and Supply’s CHIQUE BROW AND SUPPLIES registration.
SDI International, LLC v. SDI Presence LLC. Represented SDI Presence LLC in successfully defending opposition to SDI PRESENCE trademark by SDI International, LLC.
Seven S.P.A. v. Tastemaker Ventures LLC. Represented Tastemaker Ventures LLC in successfully defending opposition to BEST OF SEVEN trademark by Seven S.P.A.
Sjovik Limited v. Bingqing Zhong. Representing Sjovik Limited in opposition against Bingqing Zhong’s application to register MIXI BEAUTY based on Sjovik’s PIXI trademarks.
Sjovik Limited v. Cosmax Corporation. Representing Sjovik Limited in opposition against Cosmax Corporation’s application to register PIXIE based on Sjovik’s PIXI trademarks.
Sjovik Limited v. Kim Myungsik. Representing Sjovik Limited in opposition against Kim Myungsik’s application to register PXU based on Sjovik’s PIXI trademarks.
Sjovik Limited v. Margaret Treanor. Representing Sjovik Limited in opposition against Margaret Treanor’s application to register GLOWTANIX based on Sjovik’s trademark for GLOW TONIC.
Sjovik Limited v. Paxi Skin Care LLC. Representing Sjovik Limited in opposition against Paxi Skin Care’s application to register PAXI based on Sjovik’s PIXI trademarks.
Sjovik Limited v. Roxanne Barnes-Rogers. Representing Sjovik Limited in opposition against Roxanne Barnes-Rogers’ application to register MELEPOP BEAUTY based on Sjovik’s POPBEAUTY trademarks.
Susanne Lang Fragrance Inc. v. Beauty Perspectives, LLC. Represented Susanne Lang Fragrance Inc. in successfully opposing application to register BYDE BEAUTY based on Susanne Lang’s BITE BEAUTY trademarks.
The Lincoln Electric Company and Lincoln Global, Inc. v. Zheijian Linlong Welding Equipment Co., Ltd. Represented The Lincoln Electric Company and Lincoln Global, Inc. in successfully opposing application to register LINLONG.
The Wella Corporation v. It’s a 10, Inc. and It’s a New 10, LLC. Represented The Wella Corporation in successfully opposing an application to register POTION 10 MIRACLE REPAIR SHAMPOO and POTION 10 MIRACLE REPAIR CONDITIONER.
Worldwide ERC, Inc. v. Executive Resource Center LLC. Represented Worldwide ERC, Inc. in successfully opposing application to register ERC by Executive Resource Center LLC.
Zynga Inc. v. Incredible Technologies, Inc. Represented Incredible Technologies, Inc. in successfully defending application to register SCRATCH IT RICH against Zynga Inc.
Clients
Representative Clients
Representation of global private equity firm L Catterton and its fund strategies (including L Catterton North American Growth and L Catterton Real Estate) in connection with its growth investments in leading consumer brands, luxury retail-driven real estate developments, and other transactions.
- Fresh
Representation of French multinational conglomerate LVMH in connection with its growth investments in leading consumer brands, luxury goods, and other transactions.
Representation of Moët Hennessy, a subsidiary of LVMH Moët Hennessy Louis Vuitton, in connection with its growth investments in leading consumer brands, M&A, and other matters.
Twitter
Facebook
LinkedIn
Google+