Admitted to bar, 1969, New York and New Jersey
U.S. Court of Appeals, Second, Third and Federal Circuits, U.S. District Court, Eastern and Southern Districts of New York and District of New Jersey
U.S. Court of Appeals, Second, Third and Federal Circuits, U.S. District Court, Eastern and Southern Districts of New York and District of New Jersey
Education:
Union College (B.A., 1965)
St. John's University (J.D., 1969)
St. John's University (J.D., 1969)
Member:
American Bar Association
Practice Areas:
Trademark
Copyright
Unfair Competition Law
Litigation
Patents
Licensing
Intellectual Property
Computer Law
Copyright
Unfair Competition Law
Litigation
Patents
Licensing
Intellectual Property
Computer Law
John M. Rannells, Jr.
Member
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Admissions:
Member
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Admissions:
Education:
Rutgers University (B.A., 1975)
Seton Hall University (J.D., 1987)
Guest Lecturer, 1990—: "Entertainment Law," Union County College; "Intellectual Property," Raritan Valley Community College.
Seton Hall University (J.D., 1987)
Guest Lecturer, 1990—: "Entertainment Law," Union County College; "Intellectual Property," Raritan Valley Community College.
Member:
American Bar Association (Intellectual Property and Entertainment Sections)
NARIP (National Association of Recording Industry Professionals)
Madison’s Who’s Who
NARIP (National Association of Recording Industry Professionals)
Madison’s Who’s Who
Listings:
Music Registry, Attorney, Legal & Business Affairs
The Music Phone Book
The Music Phone Book
Languages:
Spanish
Practice Areas:
Trademark
Music Licensing
Intellectual Property
Entertainment Law
Music Licensing
Intellectual Property
Entertainment Law
New Jersey: 1987
U.S. District Court New Jersey: 1987
New York: 1987
U.S. District Court, Southern District, New York: 1989
U.S. District Court, Eastern District, New York: 1992
U.S. Court of Appeals, Federal District: 2006
Pro Hac Admissions:
U.S. District Court, Northern District, New York
U.S. District Court, Central District, California
U.S. District Court New Jersey: 1987
New York: 1987
U.S. District Court, Southern District, New York: 1989
U.S. District Court, Eastern District, New York: 1992
U.S. Court of Appeals, Federal District: 2006
Pro Hac Admissions:
U.S. District Court, Northern District, New York
U.S. District Court, Central District, California
Recent Cases:
Constellation Wines US Inc. v. Whois Protection
08/28/2007 National Arbitration Forum Decision #1040081
Successful in obtaining transfer of domain name, blackstonewines.com, to client on basis of client's superior and valid rights, likelihood of confusion withclient's BLACKSTONE trademark for wines, and bad faith on the part of the domain registrant. Obtained finding that client’s mark is famous and client’s wines “one of the most successful wine brands in the United States.”
http://domains.adrforum.com/domains/decisions/1040081.htm
Goya Foods, Inc. v. Holland Coffee, Inc.
09/12/2006 Cancellation No. 92/030908
Successful in obtaining cancellation of registration for the mark GAYO MOUNTAIN COFFEE for coffee beans on the basis of likelihood of confusion with client’s mark GOYA for coffee and related food products. Registration cancelled. Judgment for client.
Goya Foods, Inc. v. Cerveceria Nacional Domincana C. por A.
09/05/2006 Opposition No. 91/158354
Successfully opposed application for MALTA MORENA and design for a malt beverage on the basis of likelihood of confusion with client’s mark MORENA for malt beverages. Overcame defense that applicant disclaimed the entire word mark “Malta Morena” and its claim that “morena” is descriptive. Application denied. Judgment for client.
Drown Corp. v. Premier Wine & Spirits, Inc.
02/13/2006 National Arbitration Forum Decision #616805
Successful in obtaining transfer of domain name, premierwine.com, to client on basis of client's superior and valid rights, likelihood of confusion with client's family of PREMIER marks, and bad faith of domain registrant.
World Confections, Inc. v. Kencraft Inc.
01/26/2006 Opposition No. 91/158237
Judgment for client denying application for mark ALPINE CONFECTIONS for candy on basis of likelihood of confusion with client’s identical mark for related goods. Judgment issued on motion for summary judgment. Overcame asserted defense of priority.
Simi Winery, Inc / Franciscan Vineyards, Inc. v. Mr. Container / Simi Global, Inc.
09/09/2005 Cancellation No. 92/031424
Successful in obtaining cancellation of registration for mark SIMI in stylized form for a variety of food products and condiments on basis of likelihood of confusion with client’s mark SIMI for wine.
Instituto Do Vinho Da Madeira (Official Agency of the Regional Government of Madeira, Portugal) v. Constellation Brands, Inc.
01/25/2005 Opposition No. 91/158791
Successfully defended opposition to client’s application for ARBOR VALLEY AMERICAN MADEIRA for wine against likelihood of confusion claim asserted by owner of certification mark for “MADEIRA” for wine from autonomous region of Madeira, Portugal. Opposition dismissed and registration issued to client.
Representative Federal Court Actions
Iberia Foods Corp. v. Rolando Romeo d/b/a Rol-Rom Foods (3rd Circuit Court of Appeals) 150 F.3d 298; 47 USPQ2d 1604 (1998). Co-counsel on the brief. -- Grey-market case. Established importance of quality control standards on domestic goods manufactured abroad and its connection to whether such goods are considered “genuine” when imported into U.S. domestic market. Obtained ruling that client’s imported goods were “genuine” and that plaintiff’s goodwill was not harmed.
Goya Foods, Inc. v. Tropicana Products, Inc. (2nd Circuit Court of Appeals) 846 F.2d 848; 6 USPQ2d (1988). Co-counsel on the brief. -- Trademark Infringement / Declaratory Judgment action. Appeal from N.Y. district court dismissing client’s action on basis of no “justiciable controversy.” Judgment reversed. Established that pendency of a PTO proceeding is not a proper basis to forestall a lawsuit based upon a claim of trademark “infringement” or in seeking a declaration of non-infringement. Federal District Court
St. Helena Wine Company, Inc., d.b.a. Duckhorn Vineyards, v. Allied Management, Inc. and Adler Fels, d.b.a. Wood Duck Pond Winery, 1998 U.S. Dist. LEXIS 12558 (NDCa 1998). Co-counsel. -- On forum non conveniens motion, successful in obtaining transfer of action from California to New Jersey federal district court (client’s venue).
Goya Foods, Inc. v. Condal Distributors, Inc., 732 F. Supp. 453; 17 USPQ2d 1949 (SDNY 1990). Co-Counsel. -- Successful prosecution of preliminary injunction motion converted to final judgment. Obtained finding of trade dress infringement based upon similarities in appearance of parties’ respective rice packages and upon persuasive survey evidence.
Frederick Blum v. Harper's Bazaar et al, 1988 U.S. Dist. LEXIS 4424; 8 USPQ2d (SDNY 1988). Primary counsel. -- Successful defense in defeating cross-motion for summary judgment on issue of “works-made-for-hire” in copyright infringement action. Case settled with payment to client.
In Design a/k/a Hukafit Sportswear, Inc. v. S. Rothschild & Co., 1986 U.S. Dist. LEXIS 29875; Copy. L. Rep. (CCH) P25,890 (SDNY 1986). Co-counsel. -- Copyright Infringement action (sweater design). Successfully defeated motion for preliminary injunction and obtained ruling denying plaintiff’s claim for injunctive relief and denying plaintiff’s claims for damages.
U.S. Patent and Trademark Office Litigation (TTAB)
Ravenswood Winery Inc. v. DuClaw Brewery LLC
04/29/2005 Opposition No. 91/155312
Successfully opposed application for RAVENWOOD for beer, ale and porter filed on bases of likelihood of confusion with client’s mark RAVENSWOOD for wines and dilution of client’s famous mark. Application withdrawn; judgment for client.
Nautica Apparel, Inc. v. Michael H. Valentine
08/06/2004 Opposition No. 91/159247
Successfully opposed application for NAUTI-CREW in class 25 based upon client’s rights in mark NAUTICA for clothing and retail clothing store services; Judgment for client.
Ridge Vineyards, Inc. v. Allied Management, Inc.
04/20/2004 Opposition No. 91/117041
Successfully defended opposition to client’s application for SONOMA RIDGE for wines against likelihood of confusion claim asserted by owner of mark RIDGE for wines, including successful defense of summary judgment motion. Opposition withdrawn; registration issued to client.
35 Food Corp. v. LFI, Inc.
03/30/2004 Cancellation No. 92/019494
Successful in obtaining cancellation of registration for ANTONIO (food products) on basis of likelihood of confusion with client’s common law rights in mark ANTONIO’S by first obtaining summary judgment on issue of priority and later judgment on basis of likelihood of confusion. Offending registration cancelled.
World Confections, Inc. v. Kencraft, Inc. (Mark: ALPINE CONFECTIONS)
01/25/2006 Opposition No. 91/158237
Opposition granted on summary judgment motion on basis of priority and likelihood of confusion. http://ttabvue.uspto.gov/ttabvue/v?pno=91158237&pty=OPP&eno=28
Drown Corp. v. Rouse Property Management, Inc.
12/31/2003 Cancellation No. 92/030585
Successful in obtaining cancellation of registration for PREMIER SHOPPER CLUB on basis of likelihood of confusion with client’s marks PREMIER CARD and PREMIER SMART BUYERS CARD. Registration abandoned; judgment for client.
Red Bull GMBH v. Westmoor Manufacturing Corp.
12/18/2003 Opposition No. 91/118892 (Co-Counsel)
Successfully defended opposition to client’s application for BUNCHA BULL for clothing against likelihood of confusion claim asserted by owner of mark RED BULL for various goods and services (including promotional clothing). Judgment for client and registration issued.
Nautica Apparel, Inc. v. Mariner International Travel, Inc.
11/20/2003 Opposition No. 91/125273
Successfully opposed application for mark NAUTIC BLUE in class 25 based upon client’s rights in mark NAUTICA and NAUTICA BLUE. Obtained ruling on summary judgment motion.
Nautica Apparel v. Yacht Watchman International, Inc.
10/16/2002 Opposition No. 91/124389
Successful in opposing application for NAUTICARD in class 35 based upon client’s mark NAUTICA for retail store services. Judgment for client.
The Synergy Company of Utah, LLC v. IVC Industries, Inc.
06/27/2002 Cancellation No. 92/026899 (Co-Counsel)
Successfully defended against claim that client’s mark SYNERGY is generic.
Homework Solutions, Inc. v. Tax Centers of America, Inc.
07/13/2000 Opposition No. 91/094448
Successfully defended opposition to client’s application to register NANNYTAX for tax planning, tax preparation, tax advice and accounting services over claims of likelihood of confusion and genericness. Judgment for client; mark registered.
Raccioppi v. Apogee, Inc.
47 USPQ2d 1368 (TTAB 1998) (Co-Counsel)
Established authentication procedure for Internet documents submitted on summary judgment motion. Judgment for client, registration cancelled.
Baron Philippe de Rothschild S.A. v. S. Rothschild & Co. (Co-Counsel)
09/15/1998 and 11/04/1998 Opposition Nos. 91/104755 and 91/079773
Successfully defended opposition to client’s marks S. ROTHSCHILD and ROTHSCHILD for wearing apparel by owner of mark CHATEAU MOUTON ROTHSCHILD for wine. After successfully defending against motions for summary judgment the opposer withdrew its oppositions.
Aslanis Seafoods, Inc. v. La Gloria Foods Corp.
06/30/1998 Opposition No. 91/088423
Successfully opposed application for mark LA GLORIA for tortillas and taco shells on basis of likelihood of confusion with client’s mark GLORIA for edible olive oil, obtaining decision stating that goods in issue related. Judgment for client.
American Automobile Association, Inc. v. Diamond Tours, Inc.
12/29/1997 Cancellation No. 92/022491
Successfully defended client’s registration of mark DIAMOND TOURS INC for arranging travel tours and providing transportation therefore against likelihood of confusion claim by owner of various DIAMOND combination marks and diamond design marks for hotels, motels, resorts, restaurants, and related rating system. Judgment for client.
Goya Foods, Inc. v. Kola Colombiana, Inc.
07/29/1996 Opposition No. 91/086825
Successfully opposed application for mark TROPICAL KOLA ECUATORIANA for soft drinks on basis of likelihood of confusion with client’s mark TROPICOLA for soft drinks. Judgment for client.
Haverly Systems, Inc. v. Sungard Business Systems, Inc.
04/06/1994 Opposition No. 91/092403
Successfully opposed application for mark OMNI/400 for computer software for record keeping for managing defined contribution plans based upon likelihood of confusion with client’s mark OMNI for prerecorded computer programs. Application abandoned; judgment for client.
Goya Foods, Inc. v. Colita Beverage Corp.
08/11/1992 Opposition No. 91/084764
Successfully opposed application for mark PARCHITA for soft drinks on basis that the mark is generic. Judgment for client; application refused.
American Vitamin Products Inc. v. DowBrands Inc.
07/31/1992 Cancellation No. 92/019036 (Co-Counsel)
22 USPQ2d 1316 (TTAB 1992) (Co-Counsel)
On motion to dismiss, established client’s standing as Intent to Use Applicant. Successfully cancelled registrations for mark IPANA for toothpaste, mouth washes and breath fresheners, overcoming defense of residual goodwill. Judgment for client; registrations cancelled.
General Mills, Inc. v. Health Valley Foods
24 USPQ2d 1270 (TTAB 1992).
Successfully defended opposition to client’s application for FIBER 7 FLAKES for breakfast cereal over Opposer’s mark FIBER ONE for breakfast cereals, based primarily on asserted defense of weakness of term “fiber” and differing commercial impressions of marks. Judgment for client; registration issued to client.
Haverly Systems, Inc. v. Omni Publications International, Inc.
02/05/1991 Cancellation No. 92/015418 (co-counsel)
Successful in canceling registration for mark OMNI for plastic magnetic memory discs for use in the computer field on basis of likelihood of confusion with client’s mark OMNI for computer software. Judgment for client and offending registration cancelled.
Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co. Inc.
16 USPQ2d 1466 (TTAB 1990). (Co-counsel).
Successful in obtaining protective order on discovery. Obtained early ruling on the 75-interrogatory limit established by 37 CFR 2.120(d)(1).
National Aeronautics and Space Administration v. Bully Hill Vineyards Inc.
3 USPQ2d 1671 (TTAB 1987) (Co-Counsel)
Established that “Space Shuttle" is generic as applied to reusable spacecraft that carries humans and cargo to space and back and that term “Space Shuttle” does not constitute a “national symbol” within the meaning of the Lanham Act. Judgment for client and issuance of registration.
08/28/2007 National Arbitration Forum Decision #1040081
Successful in obtaining transfer of domain name, blackstonewines.com, to client on basis of client's superior and valid rights, likelihood of confusion withclient's BLACKSTONE trademark for wines, and bad faith on the part of the domain registrant. Obtained finding that client’s mark is famous and client’s wines “one of the most successful wine brands in the United States.”
http://domains.adrforum.com/domains/decisions/1040081.htm
Goya Foods, Inc. v. Holland Coffee, Inc.
09/12/2006 Cancellation No. 92/030908
Successful in obtaining cancellation of registration for the mark GAYO MOUNTAIN COFFEE for coffee beans on the basis of likelihood of confusion with client’s mark GOYA for coffee and related food products. Registration cancelled. Judgment for client.
Goya Foods, Inc. v. Cerveceria Nacional Domincana C. por A.
09/05/2006 Opposition No. 91/158354
Successfully opposed application for MALTA MORENA and design for a malt beverage on the basis of likelihood of confusion with client’s mark MORENA for malt beverages. Overcame defense that applicant disclaimed the entire word mark “Malta Morena” and its claim that “morena” is descriptive. Application denied. Judgment for client.
Drown Corp. v. Premier Wine & Spirits, Inc.
02/13/2006 National Arbitration Forum Decision #616805
Successful in obtaining transfer of domain name, premierwine.com, to client on basis of client's superior and valid rights, likelihood of confusion with client's family of PREMIER marks, and bad faith of domain registrant.
World Confections, Inc. v. Kencraft Inc.
01/26/2006 Opposition No. 91/158237
Judgment for client denying application for mark ALPINE CONFECTIONS for candy on basis of likelihood of confusion with client’s identical mark for related goods. Judgment issued on motion for summary judgment. Overcame asserted defense of priority.
Simi Winery, Inc / Franciscan Vineyards, Inc. v. Mr. Container / Simi Global, Inc.
09/09/2005 Cancellation No. 92/031424
Successful in obtaining cancellation of registration for mark SIMI in stylized form for a variety of food products and condiments on basis of likelihood of confusion with client’s mark SIMI for wine.
Instituto Do Vinho Da Madeira (Official Agency of the Regional Government of Madeira, Portugal) v. Constellation Brands, Inc.
01/25/2005 Opposition No. 91/158791
Successfully defended opposition to client’s application for ARBOR VALLEY AMERICAN MADEIRA for wine against likelihood of confusion claim asserted by owner of certification mark for “MADEIRA” for wine from autonomous region of Madeira, Portugal. Opposition dismissed and registration issued to client.
Representative Federal Court Actions
Iberia Foods Corp. v. Rolando Romeo d/b/a Rol-Rom Foods (3rd Circuit Court of Appeals) 150 F.3d 298; 47 USPQ2d 1604 (1998). Co-counsel on the brief. -- Grey-market case. Established importance of quality control standards on domestic goods manufactured abroad and its connection to whether such goods are considered “genuine” when imported into U.S. domestic market. Obtained ruling that client’s imported goods were “genuine” and that plaintiff’s goodwill was not harmed.
Goya Foods, Inc. v. Tropicana Products, Inc. (2nd Circuit Court of Appeals) 846 F.2d 848; 6 USPQ2d (1988). Co-counsel on the brief. -- Trademark Infringement / Declaratory Judgment action. Appeal from N.Y. district court dismissing client’s action on basis of no “justiciable controversy.” Judgment reversed. Established that pendency of a PTO proceeding is not a proper basis to forestall a lawsuit based upon a claim of trademark “infringement” or in seeking a declaration of non-infringement. Federal District Court
St. Helena Wine Company, Inc., d.b.a. Duckhorn Vineyards, v. Allied Management, Inc. and Adler Fels, d.b.a. Wood Duck Pond Winery, 1998 U.S. Dist. LEXIS 12558 (NDCa 1998). Co-counsel. -- On forum non conveniens motion, successful in obtaining transfer of action from California to New Jersey federal district court (client’s venue).
Goya Foods, Inc. v. Condal Distributors, Inc., 732 F. Supp. 453; 17 USPQ2d 1949 (SDNY 1990). Co-Counsel. -- Successful prosecution of preliminary injunction motion converted to final judgment. Obtained finding of trade dress infringement based upon similarities in appearance of parties’ respective rice packages and upon persuasive survey evidence.
Frederick Blum v. Harper's Bazaar et al, 1988 U.S. Dist. LEXIS 4424; 8 USPQ2d (SDNY 1988). Primary counsel. -- Successful defense in defeating cross-motion for summary judgment on issue of “works-made-for-hire” in copyright infringement action. Case settled with payment to client.
In Design a/k/a Hukafit Sportswear, Inc. v. S. Rothschild & Co., 1986 U.S. Dist. LEXIS 29875; Copy. L. Rep. (CCH) P25,890 (SDNY 1986). Co-counsel. -- Copyright Infringement action (sweater design). Successfully defeated motion for preliminary injunction and obtained ruling denying plaintiff’s claim for injunctive relief and denying plaintiff’s claims for damages.
U.S. Patent and Trademark Office Litigation (TTAB)
Ravenswood Winery Inc. v. DuClaw Brewery LLC
04/29/2005 Opposition No. 91/155312
Successfully opposed application for RAVENWOOD for beer, ale and porter filed on bases of likelihood of confusion with client’s mark RAVENSWOOD for wines and dilution of client’s famous mark. Application withdrawn; judgment for client.
Nautica Apparel, Inc. v. Michael H. Valentine
08/06/2004 Opposition No. 91/159247
Successfully opposed application for NAUTI-CREW in class 25 based upon client’s rights in mark NAUTICA for clothing and retail clothing store services; Judgment for client.
Ridge Vineyards, Inc. v. Allied Management, Inc.
04/20/2004 Opposition No. 91/117041
Successfully defended opposition to client’s application for SONOMA RIDGE for wines against likelihood of confusion claim asserted by owner of mark RIDGE for wines, including successful defense of summary judgment motion. Opposition withdrawn; registration issued to client.
35 Food Corp. v. LFI, Inc.
03/30/2004 Cancellation No. 92/019494
Successful in obtaining cancellation of registration for ANTONIO (food products) on basis of likelihood of confusion with client’s common law rights in mark ANTONIO’S by first obtaining summary judgment on issue of priority and later judgment on basis of likelihood of confusion. Offending registration cancelled.
World Confections, Inc. v. Kencraft, Inc. (Mark: ALPINE CONFECTIONS)
01/25/2006 Opposition No. 91/158237
Opposition granted on summary judgment motion on basis of priority and likelihood of confusion. http://ttabvue.uspto.gov/ttabvue/v?pno=91158237&pty=OPP&eno=28
Drown Corp. v. Rouse Property Management, Inc.
12/31/2003 Cancellation No. 92/030585
Successful in obtaining cancellation of registration for PREMIER SHOPPER CLUB on basis of likelihood of confusion with client’s marks PREMIER CARD and PREMIER SMART BUYERS CARD. Registration abandoned; judgment for client.
Red Bull GMBH v. Westmoor Manufacturing Corp.
12/18/2003 Opposition No. 91/118892 (Co-Counsel)
Successfully defended opposition to client’s application for BUNCHA BULL for clothing against likelihood of confusion claim asserted by owner of mark RED BULL for various goods and services (including promotional clothing). Judgment for client and registration issued.
Nautica Apparel, Inc. v. Mariner International Travel, Inc.
11/20/2003 Opposition No. 91/125273
Successfully opposed application for mark NAUTIC BLUE in class 25 based upon client’s rights in mark NAUTICA and NAUTICA BLUE. Obtained ruling on summary judgment motion.
Nautica Apparel v. Yacht Watchman International, Inc.
10/16/2002 Opposition No. 91/124389
Successful in opposing application for NAUTICARD in class 35 based upon client’s mark NAUTICA for retail store services. Judgment for client.
The Synergy Company of Utah, LLC v. IVC Industries, Inc.
06/27/2002 Cancellation No. 92/026899 (Co-Counsel)
Successfully defended against claim that client’s mark SYNERGY is generic.
Homework Solutions, Inc. v. Tax Centers of America, Inc.
07/13/2000 Opposition No. 91/094448
Successfully defended opposition to client’s application to register NANNYTAX for tax planning, tax preparation, tax advice and accounting services over claims of likelihood of confusion and genericness. Judgment for client; mark registered.
Raccioppi v. Apogee, Inc.
47 USPQ2d 1368 (TTAB 1998) (Co-Counsel)
Established authentication procedure for Internet documents submitted on summary judgment motion. Judgment for client, registration cancelled.
Baron Philippe de Rothschild S.A. v. S. Rothschild & Co. (Co-Counsel)
09/15/1998 and 11/04/1998 Opposition Nos. 91/104755 and 91/079773
Successfully defended opposition to client’s marks S. ROTHSCHILD and ROTHSCHILD for wearing apparel by owner of mark CHATEAU MOUTON ROTHSCHILD for wine. After successfully defending against motions for summary judgment the opposer withdrew its oppositions.
Aslanis Seafoods, Inc. v. La Gloria Foods Corp.
06/30/1998 Opposition No. 91/088423
Successfully opposed application for mark LA GLORIA for tortillas and taco shells on basis of likelihood of confusion with client’s mark GLORIA for edible olive oil, obtaining decision stating that goods in issue related. Judgment for client.
American Automobile Association, Inc. v. Diamond Tours, Inc.
12/29/1997 Cancellation No. 92/022491
Successfully defended client’s registration of mark DIAMOND TOURS INC for arranging travel tours and providing transportation therefore against likelihood of confusion claim by owner of various DIAMOND combination marks and diamond design marks for hotels, motels, resorts, restaurants, and related rating system. Judgment for client.
Goya Foods, Inc. v. Kola Colombiana, Inc.
07/29/1996 Opposition No. 91/086825
Successfully opposed application for mark TROPICAL KOLA ECUATORIANA for soft drinks on basis of likelihood of confusion with client’s mark TROPICOLA for soft drinks. Judgment for client.
Haverly Systems, Inc. v. Sungard Business Systems, Inc.
04/06/1994 Opposition No. 91/092403
Successfully opposed application for mark OMNI/400 for computer software for record keeping for managing defined contribution plans based upon likelihood of confusion with client’s mark OMNI for prerecorded computer programs. Application abandoned; judgment for client.
Goya Foods, Inc. v. Colita Beverage Corp.
08/11/1992 Opposition No. 91/084764
Successfully opposed application for mark PARCHITA for soft drinks on basis that the mark is generic. Judgment for client; application refused.
American Vitamin Products Inc. v. DowBrands Inc.
07/31/1992 Cancellation No. 92/019036 (Co-Counsel)
22 USPQ2d 1316 (TTAB 1992) (Co-Counsel)
On motion to dismiss, established client’s standing as Intent to Use Applicant. Successfully cancelled registrations for mark IPANA for toothpaste, mouth washes and breath fresheners, overcoming defense of residual goodwill. Judgment for client; registrations cancelled.
General Mills, Inc. v. Health Valley Foods
24 USPQ2d 1270 (TTAB 1992).
Successfully defended opposition to client’s application for FIBER 7 FLAKES for breakfast cereal over Opposer’s mark FIBER ONE for breakfast cereals, based primarily on asserted defense of weakness of term “fiber” and differing commercial impressions of marks. Judgment for client; registration issued to client.
Haverly Systems, Inc. v. Omni Publications International, Inc.
02/05/1991 Cancellation No. 92/015418 (co-counsel)
Successful in canceling registration for mark OMNI for plastic magnetic memory discs for use in the computer field on basis of likelihood of confusion with client’s mark OMNI for computer software. Judgment for client and offending registration cancelled.
Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co. Inc.
16 USPQ2d 1466 (TTAB 1990). (Co-counsel).
Successful in obtaining protective order on discovery. Obtained early ruling on the 75-interrogatory limit established by 37 CFR 2.120(d)(1).
National Aeronautics and Space Administration v. Bully Hill Vineyards Inc.
3 USPQ2d 1671 (TTAB 1987) (Co-Counsel)
Established that “Space Shuttle" is generic as applied to reusable spacecraft that carries humans and cargo to space and back and that term “Space Shuttle” does not constitute a “national symbol” within the meaning of the Lanham Act. Judgment for client and issuance of registration.
Neil B. Friedman
Associate
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Admissions:
Associate
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Admissions:
Admitted to bar, 1996, New Jersey
1997, New York, U.S. District Court, Eastern and Southern Districts of New York and District of New Jersey
1997, New York, U.S. District Court, Eastern and Southern Districts of New York and District of New Jersey
Education:
Queens College of the City University of New York
(B.A., 1992)
Touro College Jacob D. Fuchsberg Law Center (J.D., cum laude, 1996)
Notes and Comments Editor, Touro International Law Review
(B.A., 1992)
Touro College Jacob D. Fuchsberg Law Center (J.D., cum laude, 1996)
Notes and Comments Editor, Touro International Law Review
Member:
New York State Bar Association (Member, Intellectual Property Section)
Practice Areas:
Trademarks
Copyrights
Litigation
Domain Name Disputes
Licensing
Intellectual Property
Anti-counterfeiting
White Collar Crime
Criminal Law
Computer Law
Copyrights
Litigation
Domain Name Disputes
Licensing
Intellectual Property
Anti-counterfeiting
White Collar Crime
Criminal Law
Computer Law
Recent Cases:
King Zak Industries, Inc. v. Christmas Tree Shops, Inc. (D.NJ 2007). Commenced an action on behalf of King Zak to enforce its copyright and trade dress rights in product packaging for plasticwear products. The case settled on confidential terms.
Franciscan Vineyards, Inc. v. Frontier Wine Imports and Estancia Piedra S.L. (D.NJ 2007). Instituted an action for trademark counterfeiting and infringement arising from defendants’ unauthorized use of Franciscan’s famous ESTANCIA trademark on wines.
Nautica Apparel, Inc. v. Ike S.r.l and Maga USA, LLC (D.NJ 2007). Brought an action on behalf of Nautica to enforce the famous NAUTICA trademarks against an Italian watch manufacturer and its U.S. distributor.
Juicebox Wine Company, LLC v. Constellation Wines U.S., Inc. (D. Mass. 2007). Defended Constellation Wines in a declaratory judgment action and instituted counterclaims against Juicebox for trademark infringement, cyber-squatting, false designation of origin, false advertising, unfair competition, injury to business reputation and false and deceptive business practices arising. Shortly after our client, Constellation Wines, moved for a preliminary injunction, the matter settled on confidential terms and a permanent injunction and final judgment on consent was ordered by the Court.
Urban Outfitters, Inc., Urban Outfitters Wholesale, Inc. and Free People, LLC v. BCBG Max Azria Group, Inc., Streetbeat Sportswear, Inc. and Max Rave (E.D. Pa. 2007). Defended Streetbeat Sportswear and its related companies against plaintiffs’ claims of trademark infringement and unfair competition arising from Streetbeat’s use of its incontestable trademark registration TRUE PEOPLE.
Allied Management, Inc., Adler Fels Winery, LLC and Amerivine, Inc.v. Raymond R. Horwath, The Wheat Beer Company, L.P. (D.NJ 2006) and Raymond R. Horwath, The Wheat Beer Company, L.P., Starr Milano, Inc., v. Allied Management, Inc., Adler Fels Winery, LLC, David Coleman, and Amerivine, Inc.(N.D. Ca. 2006). Instituted a declaratory judgment action in New Jersey and defended a trademark infringement action in California on behalf of Allied Management, Inc., Adler Fels Winery, LLC, David Coleman, and Amerivine, Inc. concerning the use of the trademark BIG ASS on wine. The cases were settled on favorable terms.
Star Creations, Inc. d/b/a ajmadison.com v. Rainbow Appliance Company, LLC a/k/a Rainbow Appliance, Inc. d/b/a Rainbowappliance.com, TD Sherman Limited Liability Company and Eli Klein (D.NJ 2006). Brought an action on behalf of Star to enforce its registered copyrights and for theft of trade secrets, confidential information, proprietary information and intellectual property.
Nautica Apparel, Inc. v. Quoizel, Inc. and Capitol Lighting Executive Management Corporation d/b/a www.1800lighting.com (D.NJ 2006). Commenced an action on behalf of Nautica to enforce the famous Nautica trademarks. The case settled on favorable terms and a permanent injunction was issued against Quoizel, Inc. enjoining them from making any use of the Nautica trademarks and any marks confusingly similar thereto including the term Nautical.
Charles Komar & Sons, Inc. v. Dollar General Corporation (SDNY 2005). Commenced an action on behalf of Komar, a leading women’s sleepwear manufacturer, to enforce Komar’s registered copyrighted designs. The case settled on favorable terms.
Charles Komar & Sons, Inc. v. A&E Stores, Inc., Jinadasa (U.S.A.) Ltd., Hema Jinadasa, Lati Fashions International, Inc. and Mousa Lati, (D.NJ 2005). Brought an action on behalf of Komar, a leading women’s sleepwear manufacturer, to enforce Komar’s registered copyrighted designs. The case settled on favorable terms against all defendants and permanent injunctions were issued by the Court against Jinadasa (U.S.A.) Ltd., Hema Jinadasa, Lati Fashions International, Inc. and Mousa Lati.
Charles Komar & Sons, Inc. v. Family Dollar Stores, Inc. (D.NJ 2005). Represented Komar, a leading women’s sleepwear manufacturer, in an action to enforce Komar’s registered copyrighted designs. The case settled on favorable terms.
Kipling Switzerland AG and Kipling Belgium NV v. Ramon F. Totengco and Rafe Studio Ltd. (England & Wales High Court of Justice, Chancery Division 2005). In association with local counsel in the United Kingdom, commenced an action on behalf of Kipling for trademark infringement in connection with Kipling’s famous monkey design trademark. The case settled on favorable terms.
Star Creations, Inc. d/b/a ajmadison.com v. Skynet Communications, Corp. d/b/a lizmadison.com and Allen Benz (EDNY 2005). Brought an action on behalf of Star to enforce its MADISON and AJ MADISON trademarks. The case settled on favorable terms and a permanent injunction was issued by the Court to protect Star’s trademarks.
Car Cash of New York, Inc. v. Fast Cash for Cars, Inc. (D.NJ 2005). Defended Fast Cash for Cars in an action brought by Car Cash of New York alleging trademark infringement, dilution, unfair competition and injury to business reputation arising from the use of certain keyword advertising on the internet. The case settled on confidential terms shortly after Fast Cash for Cars answered and counterclaimed.
Coast Internet Solutions, Inc. v. Fastservers, Inc. (D.NJ 2005). Brought a declaratory judgment action on behalf of Coast Internet Solutions seeking a declaration of non-infringement of certain of Fastserver’s trademarks. The case settled on favorable terms.
Angels Baseball, LP v. Charles Komar & Sons, Inc. (TTAB 2005). Defended Komar in an opposition proceeding involving its trademark application for ANGEL BOTTOMS. The case settled on favorable terms and the opposition was dismissed with prejudice.
Royal Wine Corporation v. Herzog Wine Collection Ltd. (TTAB 2005). Commenced an opposition proceeding on behalf of Royal Wine to enforce Royal’s HERZOG trademarks on wine. The opposition was sustained and registration to the applicant was refused.
Retail Brand Alliance v. Oxford Industries, Inc. (TTAB 2005). Commenced an opposition proceeding on behalf of Retail Brand Alliance (the owner of the BROOKS BROTHERS trademarks) to prevent the application for BROOKISLE from proceeding to registration. The opposition was sustained and the applicant withdrew its trademark application with prejudice.
Candela NYC, LLC v. Hazel Fraser (TTAB 2005). Commenced an opposition proceeding on behalf of Candela to enforce its CANDELA trademark. The opposition was sustained and the applicant withdrew its trademark application with prejudice.
Tommy Hilfiger Licensing, Inc. v. Hanara International, Inc., Worfly International, Inc. and Y.K. Trading, Inc. (NDTX 2004). Commenced an action for trademark counterfeiting, trademark infringement and related Lanham Act claims. The case settled on favorable terms against all defendants and permanent injunctions were issued by the Court against Hanara International, Inc., Worfly International, Inc. and Y.K. Trading, Inc.
Nike, Inc. and Tommy Hilfiger Licensing, Inc. v. Ocean State Jobbers, Inc. d/b/a Ocean State Job Lot (D. RI 2004). Commenced an action for trademark counterfeiting, trademark infringement and related Lanham Act claims. The case settled on favorable terms and a permanent injunction was issued by the Court against Ocean State Jobbers, Inc.
Franciscan Vineyards, Inc. v. Frontier Wine Imports and Estancia Piedra S.L. (D.NJ 2007). Instituted an action for trademark counterfeiting and infringement arising from defendants’ unauthorized use of Franciscan’s famous ESTANCIA trademark on wines.
Nautica Apparel, Inc. v. Ike S.r.l and Maga USA, LLC (D.NJ 2007). Brought an action on behalf of Nautica to enforce the famous NAUTICA trademarks against an Italian watch manufacturer and its U.S. distributor.
Juicebox Wine Company, LLC v. Constellation Wines U.S., Inc. (D. Mass. 2007). Defended Constellation Wines in a declaratory judgment action and instituted counterclaims against Juicebox for trademark infringement, cyber-squatting, false designation of origin, false advertising, unfair competition, injury to business reputation and false and deceptive business practices arising. Shortly after our client, Constellation Wines, moved for a preliminary injunction, the matter settled on confidential terms and a permanent injunction and final judgment on consent was ordered by the Court.
Urban Outfitters, Inc., Urban Outfitters Wholesale, Inc. and Free People, LLC v. BCBG Max Azria Group, Inc., Streetbeat Sportswear, Inc. and Max Rave (E.D. Pa. 2007). Defended Streetbeat Sportswear and its related companies against plaintiffs’ claims of trademark infringement and unfair competition arising from Streetbeat’s use of its incontestable trademark registration TRUE PEOPLE.
Allied Management, Inc., Adler Fels Winery, LLC and Amerivine, Inc.v. Raymond R. Horwath, The Wheat Beer Company, L.P. (D.NJ 2006) and Raymond R. Horwath, The Wheat Beer Company, L.P., Starr Milano, Inc., v. Allied Management, Inc., Adler Fels Winery, LLC, David Coleman, and Amerivine, Inc.(N.D. Ca. 2006). Instituted a declaratory judgment action in New Jersey and defended a trademark infringement action in California on behalf of Allied Management, Inc., Adler Fels Winery, LLC, David Coleman, and Amerivine, Inc. concerning the use of the trademark BIG ASS on wine. The cases were settled on favorable terms.
Star Creations, Inc. d/b/a ajmadison.com v. Rainbow Appliance Company, LLC a/k/a Rainbow Appliance, Inc. d/b/a Rainbowappliance.com, TD Sherman Limited Liability Company and Eli Klein (D.NJ 2006). Brought an action on behalf of Star to enforce its registered copyrights and for theft of trade secrets, confidential information, proprietary information and intellectual property.
Nautica Apparel, Inc. v. Quoizel, Inc. and Capitol Lighting Executive Management Corporation d/b/a www.1800lighting.com (D.NJ 2006). Commenced an action on behalf of Nautica to enforce the famous Nautica trademarks. The case settled on favorable terms and a permanent injunction was issued against Quoizel, Inc. enjoining them from making any use of the Nautica trademarks and any marks confusingly similar thereto including the term Nautical.
Charles Komar & Sons, Inc. v. Dollar General Corporation (SDNY 2005). Commenced an action on behalf of Komar, a leading women’s sleepwear manufacturer, to enforce Komar’s registered copyrighted designs. The case settled on favorable terms.
Charles Komar & Sons, Inc. v. A&E Stores, Inc., Jinadasa (U.S.A.) Ltd., Hema Jinadasa, Lati Fashions International, Inc. and Mousa Lati, (D.NJ 2005). Brought an action on behalf of Komar, a leading women’s sleepwear manufacturer, to enforce Komar’s registered copyrighted designs. The case settled on favorable terms against all defendants and permanent injunctions were issued by the Court against Jinadasa (U.S.A.) Ltd., Hema Jinadasa, Lati Fashions International, Inc. and Mousa Lati.
Charles Komar & Sons, Inc. v. Family Dollar Stores, Inc. (D.NJ 2005). Represented Komar, a leading women’s sleepwear manufacturer, in an action to enforce Komar’s registered copyrighted designs. The case settled on favorable terms.
Kipling Switzerland AG and Kipling Belgium NV v. Ramon F. Totengco and Rafe Studio Ltd. (England & Wales High Court of Justice, Chancery Division 2005). In association with local counsel in the United Kingdom, commenced an action on behalf of Kipling for trademark infringement in connection with Kipling’s famous monkey design trademark. The case settled on favorable terms.
Star Creations, Inc. d/b/a ajmadison.com v. Skynet Communications, Corp. d/b/a lizmadison.com and Allen Benz (EDNY 2005). Brought an action on behalf of Star to enforce its MADISON and AJ MADISON trademarks. The case settled on favorable terms and a permanent injunction was issued by the Court to protect Star’s trademarks.
Car Cash of New York, Inc. v. Fast Cash for Cars, Inc. (D.NJ 2005). Defended Fast Cash for Cars in an action brought by Car Cash of New York alleging trademark infringement, dilution, unfair competition and injury to business reputation arising from the use of certain keyword advertising on the internet. The case settled on confidential terms shortly after Fast Cash for Cars answered and counterclaimed.
Coast Internet Solutions, Inc. v. Fastservers, Inc. (D.NJ 2005). Brought a declaratory judgment action on behalf of Coast Internet Solutions seeking a declaration of non-infringement of certain of Fastserver’s trademarks. The case settled on favorable terms.
Angels Baseball, LP v. Charles Komar & Sons, Inc. (TTAB 2005). Defended Komar in an opposition proceeding involving its trademark application for ANGEL BOTTOMS. The case settled on favorable terms and the opposition was dismissed with prejudice.
Royal Wine Corporation v. Herzog Wine Collection Ltd. (TTAB 2005). Commenced an opposition proceeding on behalf of Royal Wine to enforce Royal’s HERZOG trademarks on wine. The opposition was sustained and registration to the applicant was refused.
Retail Brand Alliance v. Oxford Industries, Inc. (TTAB 2005). Commenced an opposition proceeding on behalf of Retail Brand Alliance (the owner of the BROOKS BROTHERS trademarks) to prevent the application for BROOKISLE from proceeding to registration. The opposition was sustained and the applicant withdrew its trademark application with prejudice.
Candela NYC, LLC v. Hazel Fraser (TTAB 2005). Commenced an opposition proceeding on behalf of Candela to enforce its CANDELA trademark. The opposition was sustained and the applicant withdrew its trademark application with prejudice.
Tommy Hilfiger Licensing, Inc. v. Hanara International, Inc., Worfly International, Inc. and Y.K. Trading, Inc. (NDTX 2004). Commenced an action for trademark counterfeiting, trademark infringement and related Lanham Act claims. The case settled on favorable terms against all defendants and permanent injunctions were issued by the Court against Hanara International, Inc., Worfly International, Inc. and Y.K. Trading, Inc.
Nike, Inc. and Tommy Hilfiger Licensing, Inc. v. Ocean State Jobbers, Inc. d/b/a Ocean State Job Lot (D. RI 2004). Commenced an action for trademark counterfeiting, trademark infringement and related Lanham Act claims. The case settled on favorable terms and a permanent injunction was issued by the Court against Ocean State Jobbers, Inc.
Admitted to the Bar of the State of New Jersey, December 2001 Admitted to the Bar of the State of New York, January 2002 United States Court of International Trade 2004 United States District Court for the Southern District of New York 2005
Education:
St. John’s University, Jamaica, N.Y., (B.A.,
Government and Politics, 1996)
Pace University School of Law, White Plains, N.Y. (J.D., 2000)
Temple University School of Law, Philadelphia, Pa. (LL.M, 2000)
Government and Politics, 1996)
Pace University School of Law, White Plains, N.Y. (J.D., 2000)
Temple University School of Law, Philadelphia, Pa. (LL.M, 2000)
Languages:
Spanish
Greek
Read/Write French, Basque and Portuguese
Greek
Read/Write French, Basque and Portuguese
Practice Areas:
Intellectual Property Law
Trademarks
Copyrights
Litigation
Infringement
Licensing
Computer Law
Trademarks
Copyrights
Litigation
Infringement
Licensing
Computer Law
Ms. Kurth is a registered patent attorney. Her practice focuses on the procurement, licensing, and enforcement of Intellectual Property rights, including patents, trademarks, copyrights, and trade secrets.
Ms. Kurth has experience representing clients before the U.S. Patent and Trademark Office to acquire patents for technologies in the mechanical and software arts, including medical devices, computer software, business methods, and other types of technologies.
Ms. Kurth has experience representing clients before the U.S. Patent and Trademark Office to acquire patents for technologies in the mechanical and software arts, including medical devices, computer software, business methods, and other types of technologies.
Admissions:
New Jersey
U.S. District Court, District of New Jersey
U.S. Patent and Trademark Office
U.S. District Court, District of New Jersey
U.S. Patent and Trademark Office
Education:
University of Notre Dame (B.S., 1984)
South Texas College of Law (J.D., 2005)
Judicial Law Clerk, Honorable Victor Ashrafi, Somerset County Superior Court (2005-2006)
South Texas College of Law (J.D., 2005)
Judicial Law Clerk, Honorable Victor Ashrafi, Somerset County Superior Court (2005-2006)
Practice Areas:
Trademark
Copyright
Patents
Licensing
Intellectual Property
Computer Law
Copyright
Patents
Licensing
Intellectual Property
Computer Law
New Jersey
U.S. District Court, District of New Jersey
U.S. District Court, District of New Jersey
Education:
Rutgers University (B.A., 1991)
Rutgers University Law School (J.D., 2003)
Rutgers University Law School (J.D., 2003)
Membership:
Mercer County Bar Association
Somerset County Bar Association
The Association of the Federal Bar of the State of New Jersey
New Jersey Intellectual Property Law Association
John C. Lifland American Inn of Court
Somerset County Bar Association
The Association of the Federal Bar of the State of New Jersey
New Jersey Intellectual Property Law Association
John C. Lifland American Inn of Court
Practice Areas:
Trademark
Copyright
Litigation
Copyright
Litigation
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Thomas M. Cooley Law School
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