December 2016

News & Press

ROGER ZISSU delivered the Copyright Society of the USA’s annual Donald C. Brace Memorial Lecture on November 17, 2016, joining an impressive list of judges, professors, and practitioners who have been selected to give this lecture in prior years. His talk urges the acceptance of satire as a positive purpose for the unauthorized use of a copyrighted work in fair use evaluation under Section 107 of the U.S. Copyright Act.

BEST LAWYERS in its 2017 “Best Law Firms” rankings released on November 1, 2016, ranked Fross Zelnick in National Tier 1 in the United States for Copyright Law and Trademark Law, and in National Tier 2 for Litigation-Intellectual Property, as well as in Metropolitan Tier 1 in New York City for Copyright Law and Litigation-Intellectual Property.

WHO’S WHO LEGAL’s August 2016 Trademarks Analysis noted that Fross Zelnick “has one of the most prestigious trademark practices in the world” and reported that it earned “the single most listings of any one office in our research by some distance.” The report named SUSAN UPTON DOUGLASS as one of only four most highly-regarded individuals in North America (specifically, USA-East Coast), with respondents regarding her as “a supreme talent.” Also commended were JANET HOFFMAN (“another of the firm’s superstars” who is the “go-to US lawyers for the CIS region”); LYDIA GOBENA (“extremely thorough and super-efficient”); NADINE JACOBSON (“immensely clever and clear-sighted”); and ROGER ZISSU (“‘one of the most noteworthy figures’ in regards to trademark litigation in the New York bar”).

SUPER LAWYERS named LAWRENCE APOLZON, DAVID DONAHUE, SUSAN UPTON DOUGLASS, DAVID EHRLICH, JANET HOFFMAN, NADINE JACOBSON, RICHARD LEHV, JOHN MARGIOTTA, CRAIG MENDE, BARBARA SOLOMON, JAMES WEINBERGER, and ROGER ZISSU to its list of 2016 New York Metro Super Lawyers. The publication also named HINDY DYM, JENNIFER INSLEY-PRUITT, JASON JONES, and LEO KITTAY as 2016 New York Metro Rising Stars.

JOHN MARGIOTTA and EMILY WEISS, on behalf of our client Cartier International A.G., prevailed in an opposition proceeding before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Cartier had opposed an application to register the mark TRINITY in connection with leather handbags on the basis of likelihood of confusion with its own TRINITY mark for jewelry. The Board held that confusion was likely, finding that Cartier’s TRINITY mark was strong and that jewelry and handbags were related. Details of the decision can be viewed here.

ROBIN N. BAYDURCAN moderated a CLE program called “Intellectual Property Rights in a Post-Brexit World” for the New York State Bar Association Intellectual Property Section on November 10, 2016. The panelists discussed the political background and trade implications of Brexit, as well as next steps for brand owners.

TAMAR BESSINGER, JENNIFER INSLEY-PRUITT, and KATE LYON DAYTON contributed a chapter entitled “Ethics in the Trademark Arena” published on the INTA website on September 14, 2016 as part of its Trademark Administration resource at www.inta.org.

ERICA GOULD attended the VII International Seminar “Intellectual Property Challenges in Today's World" (“Retos de la Propiedad Intelectual en el Mundo Actual”) in Havana, Cuba, October 19-21, 2016. The seminar was sponsored by the Cuban Industrial Property Office (OCPI), the Cuban National Copyright Center (CENDA), and local law firms. Erica was the only United States citizen in attendance.

KAREN LIM was invited to speak at the Asian Patent Attorneys Association 66th Council Meeting in Bali, Indonesia. Together with two other panelists, she spoke at the Workshop “Social Media—A Playground for Creators Where Sharing is the Norm?” on October 9, 2016. Her presentation focused on trademark, copyright, and right-of-publicity issues as they have played out in social media cases in the U.S., and the impact of the sharing culture of social media on enforcement efforts.

CRAIG MENDE was selected to be an officer of the Copyright Society of the USA. He will serve as Secretary on the Copyright Society’s Executive Committee for a two-year term ending in 2018. Craig previously co-chaired the New York chapter for three years and served as a Trustee and non-officer Executive Committee member.

CHARLES WEIGELL moderated a CLE presentation “The USPTO Today and Tomorrow” for the New York State Bar Association Intellectual Property Section on November 10, 2016. The Trademark Law Offices Group Director of the USPTO discussed current initiatives and future trends in technology, electronic filing, trademark examination, and the registration process.