To find an attorney complete one or more of the fields and click search.
Mr. Jones is a Partner in Fross Zelnick's litigation practice, focusing on litigation in the areas of copyright, trademark, and unfair competition. Named a New York SuperLawyers Rising Star in 2012, 2013, and 2014, he represents clients on matters related to intellectual property rights across a range of industries, including publishing, fashion, entertainment, pharmaceuticals, and consumer products.
Hendrix College (B.A. 2000, cum laude with distinction); University of Texas School of Law (J.D., 2004), Order of the Coif.
Law Clerk to the Honorable Vaughn R. Walker, Chief Judge of the United States District Court for the Northern District of California (2004-2005); Member: Federal Bar Council (Intellectual Property Committee); New York State Bar Association - Intellectual Property Law; Adjunct Professor: New York Law School
Super Lawyers® 2012-2018, New York Metro Rising Stars, Intellectual Property Litigation
New York State
United States District Courts for the Southern and Eastern Districts of New York
United States Court of Appeals for the Second Circuit
United States Court of Appeals for the Federal Circuit
2018 WL 3529479, Opp. No. 91200616, Canc. No. 92053622 (T.T.A.B. July 19, 2018).
After a seven-year battle before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office, the Firm prevailed on behalf of client UMG Recordings, Inc. (“UMG”)—owner of the JACKSON 5 trademark—in its challenge to an attempt to register the mark J5 for clothing and related merchandise by Siggy Music, Inc., a company owned by original Jackson 5 musical group member Sigmund Esco “Jackie” Jackson. In a lengthy decision dated July 19, 2018, the Board confirmed that UMG, as successor to Motown Records, owned the JACKSON 5 trademark as well as its functional equivalents, including the short form J5. It further held that UMG’s JACKSON 5 trademark is “famous” and “commercially strong” and that Siggy Music’s use and registration of J5 would likely cause confusion in the marketplace.
2018 WL 558888, Case No. 16-cv-5440-RS (N.D. Cal. Jan. 25, 2018)
On behalf of our client, plaintiff Asuragen, Inc., the Firm defeated defendant Accuragen, Inc.'s motion for summary judgment in an infringement action between two providers of genomic services and their respective ASURAGEN and ACCURAGEN trademarks.
122 F. Supp. 3d 1338 (M.D. Fla. 2015), aff'd, 684 Fed.Appx. 981 (11th Cir. 2016)
Following an evidentiary hearing, on behalf of client The Gap, Inc. and its Old Navy brand, the Firm was successful in defeating a motion for a preliminary injunction brought by plaintiff Hoop Culture, Inc. over its alleged EAT...SLEEP...BALL. trademark. The U.S. District Court for the Middle District of Florida held that the plaintiff did not show a substantial likelihood of success on the merits of its claims on either ownership of a valid mark - despite the fact that it had a federal registration - or likelihood of confusion. The Court also held that plaintiff failed to establish the requisite irreparable injury. This decision was affirmed by the U.S. Court of Appeals for the Eleventh Circuit.
Represented luxury goods plaintiff in a trademark infringement and dilution action. Secured consent judgment.
8:13-cv-02967-GJH (D. Md. Jan. 30, 2014)
The Firm successfully defeated a motion for a preliminary injunction motion on behalf of client Athleta, Inc., a leading retailer of women’s performance apparel and gear and part of The Gap, Inc.’s portfolio of companies. Plaintiff Body Wisdom Media, Inc. sought a preliminary injunction to stop Athleta’s use of a pinwheel design as a logo, alleging likelihood of confusion with Body Wisdom’s own pinwheel design logo used in connection with fitness DVDs. Athleta had adopted the challenged pinwheel logo seven years prior and had used it across its business since that time. The U.S. District Court in Maryland denied Body Wisdom’s motion, ruling that Body Wisdom was not likely to succeed on the merits of its infringement claim, because, inter alia, the parties’ goods are different and had coexisted under the respective marks without confusion for a number of years. The court also held that any injunction would harm Athleta, which uses the challenged pinwheel design across its entire business.
No. 12-cv-1986 (S.D.N.Y. 2013)
Represented Defendant Boundless Learning, Inc. (“Boundless”) in a recently settled case in the U.S. District Court for the Southern District of New York brought by three publishers of college-level textbooks in biology, economics and psychology, respectively. The publishers claimed Boundless infringed Plaintiffs’ copyrights in violation of the U.S. Copyright Act and engaged in unfair competition and false advertising under the U.S. Trademark Act by creating free, electronic textbooks for students that covered the same factual concepts and topics as Plaintiffs’ textbooks and were marketed as alternatives to their products.
Opp. No. 91198282 (T.T.A.B. Sept. 12, 2012)
The Firm successfully represented our client, Frank Sinatra Enterprises, LLC, which holds the exclusive right to commercially exploit Mr. Sinatra’s name and likeness, in its challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to Michigan-based caterer Bill Loizon’s attempt to register the mark FRANKS ANATRA in connection with his catering business.
Index No. 603350/2008, Slip Op. (N.Y. Sup. Aug. 4, 2011)
The firm obtained partial summary judgment dismissing the plaintiff's entire $5.6 million claim for damages against our client Universal Music Corp. d/b/a Universal Music Publishing Group ("UMPG") in a license dispute concerning a celebrity fragrance for Prince, the famous recording artist.
2011 WL 1652171 (T.T.A.B. 2011)
On behalf of our client Clinique Laboratories LLC—owner of the famous CLINIQUE trademark in connection with cosmetics and cosmetic services—we successfully opposed Absolute Dental LLC’s attempt to register the trademark CLINIQUE DENTIQUE for “cosmetic dentistry services” with the United States Patent and Trademark Office.
768 F. Supp. 2d 672 (S.D.N.Y. 2011)
The firm obtained summary judgment in favor of client, People for the Ethical Treatment of Animals (“PETA”), dismissing copyright infringement claim brought against PETA in the U.S. District Court for the Southern District of New York on basis of alleged use in PETA animal rights campaign of historical facts and not-new idea of comparing mistreatment of slaves in 19th century America to mistreatment of animals today.
732 F. Supp. 2d 712 (E.D. Ky. 2010)
On behalf of our client Cadbury Adams USA LLC--maker of the famous DENTYNE brand of chewing gum--we defeated a motion for a preliminary injunction brought by plaintiff which sought to block the launch of Cadbury's new breath purifying gum, DENTYNE PURE, on the grounds that the name DENTYNE PURE was confusingly similar to plaintiffs' MENTOS PURE FRESH and MENTOS PURE WHITE names used for chewing gum.
David Donahue and Jason Jones Contributed the U.S. Section to ICLG: Copyright 2019, 5th Edition
David Donahue and Jason Jones contributed the U.S. section to The International Comparative Guide to: Copyright 2019, a print and on-line comparative guide to copyright law across 29 countries.
From Disparagement to Fame and Other Key Developments in U.S. Trademark Law
Supreme Court Rules on TTAB Preclusion
David Donahue and Jason Jones explain the recent U.S. Supreme Court's ruling in B&B Hardware, Inc. v Hargis Industries, Inc. in the May 2015 edition of Managing Intellectual Property.