March 2018

News & Press

MANAGING INTELLECTUAL PROPERTY 2018 has again named Fross Zelnick in the first tier in the United States in the Trademark Contentious and Trademark Prosecution categories.

WTR 1000 ranked Fross Zelnick in the Gold Tier in the United States in its 2018 rankings of The World’s Leading Trademark Professionals.  Specific mention was made of SUSAN UPTON DOUGLASS and BARBARA SOLOMON for U.S.-National, and LAWRENCE APOLZON, CARA BOYLE, CARLOS CUCURELLA, DAVID DONAHUE, DAVID EHRLICH, LYDIA GOBENA, JANET HOFFMAN, NADINE JACOBSON, RICHARD LEHV, JOHN MARGIOTTA, CRAIG MENDE, PETER SILVERMAN, ALLISON STRICKLAND RICKETTS, JAMES WEINBERGER, and ROGER ZISSU for U.S.-New York.

WE ARE PLEASED TO ANNOUNCE THAT LEO KITTAY became a Partner of the firm effective January 1, 2018.  Leo litigates and counsels clients on trademark, copyright, unfair competition, false advertising, right of publicity and related commercial matters across diverse industries.  A significant amount of Leo’s time is devoted to advising startup and emerging growth companies—from promising early-stage ventures to some of the most celebrated startups in the world—on all matters relating to brands and content.  Currently serving on the NationSwell Council, a membership community of service-minded leaders, Leo is a former member of the Brooklyn Law School Board of Trustees and the New York City Bar’s Media and Communications Law Committee.  Leo is a graduate of Princeton University, where he earned an A.B. in Philosophy cum laude in 1996 and was awarded The Class of 1869 Prize in Ethics. He graduated from Brooklyn Law School magna cum laude in 2008, where he was a member of the Order of the Coif, a Faculty Scholar and a Prince Scholar, and was awarded the Donald W. Matheson Memorial Prize and the Gerald Shargel Scholarship for Excellence in Criminal Law. Leo also served as Articles Editor of the Brooklyn Law Review.  Before joining Fross Zelnick, Leo served as law clerk to the Honorable Alvin K. Hellerstein, United States District Court for the Southern District of New York.  Prior to attending law school, Leo worked as a theater and television actor in New York City for nearly ten years.

DAVID DONAHUE coauthored an amicus brief submitted to the United States Court of Appeals for the District of Columbia Circuit on behalf of the International Trademark Association (INTA) in American Society for Testing and Materials et al., v. Public.Resource.Org, Inc., Dkt. No. 17-7035 (4th Cir.).  In support of the Appellees, INTA urges the Fourth Circuit to affirm a decision of the United States District Court for the District of Columbia in which the district court held, among other things, that the United States Supreme Court’s ruling in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), did not preclude the Appellees’ Lanham Act trademark infringement claims where the Defendant-Appellant created error-ridden digital copies of Appellees’ safety standards bearing Appellees’ trademarks and made them available online.  INTA’s brief asks the Fourth Circuit to rule that the trademark owners may assert Lanham Act claims over misattribution or unauthorized use of trademarks in connection of goods that contain copyrightable materials.

ALLISON STRICKLAND RICKETTS was quoted in a March 7, 2018 article by World Trademark Review on the launch of a pilot program by the United States Patent and Trademark Office to combat fraudulent specimens submitted in trademark applications.  She commended the Office “for giving stakeholders an avenue to help fight fraudulent trademark applications,” noting that “[i]t is challenging enough for entrepreneurs and others to find a trademark to use for their business, without having the register cluttered with registrations based on false claims of use.”  The pilot program facilitates the reporting of “digitally created, altered or fabricated” specimens by making available a dedicated email address, TMSpecimenProtest@uspto.gov, to which anyone can send such reports.  Information on the evidence that must accompany such reports can be viewed at www.uspto.gov. 

JAMES WEINBERGER was quoted in the December 12, 2017 World Trademark Review article on the jury verdict by the U.S. District Court of San Diego rejecting the contention that San Diego Comic-Con’s mark COMIC-CON mark had become generic.  He stated that “Taking it to jury and winning shows real determination and resolve… That their mark has been upheld will have more of an atmospheric effect than a precedential effect.  It is empowering because every cease and desist letter they write from now on can refer to the fact that a federal jury found their mark valid and another convention liable.  This is a very valuable tool as part of an enforcement strategy.”

FROSS ZELNICK welcomes ROBIN WARREN as an associate in our International group and SEAN HARB and MELISSA GOLDSTEIN as associates in our Litigation group.  Robin received her J.D. from Brooklyn Law School and her B.A. from Cornell University.  Sean received his J.D. from Stanford Law, an M.A. in Teaching from American University, and a B.A. with Highest Honors from the University of California, Berkeley.  He clerked for the Honorable Edgardo Ramos at the U.S. District Court for the Southern District of New York.  Melissa received her J.D. from New York University School of Law and her B.A. from the University of Pennsylvania.  We also welcome back ROBIN N. BAYDURCAN as an associate in our International group.  Robin returns to us after a year as in-house counsel at a real estate corporation.