IP Industries – Retail

In retail, brand is everything.

Our attorneys help fashion clients and retailers remain competitive by protecting the trademarks, designs and other technical innovations essential to building their brand.

Trademarks

  • Secured a favorable settlement for Lumondi, Inc., the U.S. distributor of LUMINOX brand watches, in the prosecution of trademark infringement, false designation of origin and false advertising claims, as well as violations of New York state law for trademark dilution, deceptive trade practices, and unfair competition. The settlement permanently enjoined the defendants from selling infringing goods.
  • A nationally recognized consumer goods retailer in the prosecution of trademark infringement and unfair competition claims in violation of the Lanham Act. Secured summary judgement after demonstrating that the utilization of “Sears” by the defendant created a strong likelihood of confusion.
  • Defended Highline United, LLC, a U.S. distributor of designer footwear, against trademark and trade dress infringement claims by Converse, Inc. The case involved complex issues of likelihood of confusion, likelihood of dilution, and acquired distinctiveness. It went to trial before an administrative law judge who determined that Converse's claimed common law trademark was invalid. The ITC confirmed the ALJ’s findings.
  • Opposition sustained by TTAB in name and design infringement claims brought by Otto International, Inc., an international headwear manufacturer.
  • A nationally recognized consumer goods retailer in prosecution of trademark infringement and unfair competition claims in violation of the Lanham Act. Prevailed on motion for a preliminary injunction, which involved issues of likelihood of confusion and trademark dilution.
  • Represented Sears Roebuck and Co. in Sears PLC v. Sears Roebuck and Co., an international dispute over the use and registration name and mark Sears against Sears PLC, the parent company of a U.K. department store and specialty store retailer.
  • Successfully assisted in the defense of Kay Berry, Inc. involving copyright infringement and federal Lanham Act violations, resulting in a dismissal of all claims.
  • Represented a client in the fashion industry in a breach of copyright case involving design patterns.
  • Represented a client in the fashion industry in a copyright infringement case involving fabric designs.
  • On behalf of a client who is a major fashion retailer, successfully achieved a quick dismissal of all claims in several copyright infringement suits.
  • Won an order to vacate a Temporary Restraining Order in blue jeans pocket copyright infringement filed in California state court action and transferred case to federal court, then obtained a default judgment on copyright misuse and attorney's fees. L.A. Idol Fashion, Inc. v. Botin Jeanswear Trading, Inc. (Central District of California, 2014).
  • Represented a nationally recognized consumer goods retailer in prosecution of trademark infringement and unfair competition claims in violation of the Lanham Act. Prevailed on motion for a preliminary injunction, which involved issues of likelihood of confusion and trademark dilution.
  • Manage global trademark portfolios and enforcement actions on behalf of European-based life sciences, fashion and cosmetic companies.
  • Defended cosmetics company in trademark opposition, resulting in TTAB dismissing case and clearing way for client’s trademark registration.

Patents

  • Dananberg v. Payless ShoeSource 
    Defended a national retailer and manufacturer in federal court in New Hampshire, where the plaintiff sought millions of dollars in damages for infringing a patent for a one-piece insole. Secured favorable Markman rulings and, ultimately, summary judgment on all claims.
  • The Sliding Door Co. v. KLS Doors, LLC
    Defended KLS Doors in a patent and trade dress infringement case relating to a sliding door system. Secured claim construction ruling resulting in favorable settlement.
  • Ermenegildo Zegna Corporation v. Lanificio Mario Zegna
    International dispute over the name and mark ZEGNA in the U.S. District Court, Court of Appeals and International Arbitration before the matter settled favorably.
  • Defended Highline United, LLC, in a dispute where the ITC invalidated both the common law and registered trademarks for Converse’s Chuck Taylor All Star shoe and confirmed that Highline’s ASH branded footwear did not infringe the asserted marks.

Trade Secrets

  • Defended a Fortune 100 company and its employees in one of the first cases litigated under the Pennsylvania Uniform Trade Secrets Act. Specific allegations included breach of non-competition agreements and misappropriation of trade secrets. Injunction denied and clients awarded approximately $2 million in attorneys’ fees.

Licensing

  • Represented a designer in negotiation of distribution and licensing agreements with major national retailer and other entities.

Copyrights

  • Defended intellectual property rights, including patents, trademarks and copyrights, during and after Pandora Jewelry LLC's successful launch of its Pandora jewelry in the United States.