On behalf of client Estée Lauder Cosmetics, Ltd.—owner of the MAC trademark for cosmetics and skin care products—the firm successfully opposed in the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office an application to register the mark MCCOSMETICS NY that covered cosmetics.More
Creel Abogados, S.C. and Carlos Creel v. Creel, Garcia-Cuellar, Aiza y Enriquez, S.C.
Fross Zelnick attorney Laura Popp-Rosenberg represented Mexican law firm Creel, García-Cuéllar, Aiza y Enríquez, S.C. (“CGCAE”) in an opposition brought by the firm’s former partner Carlos Creel Carrera and Creel Abogados, S.C. the new law firm he formed along with other partners who left CGCAE (together,More
Louis Vuitton Malletier v. Quanzhow Viition Gifts Co., Ltd.
Fross Zelnick partner John P. Margiotta and associate Shelby P. Rokito, on behalf of client Louis Vuitton Malletier, prevailed in a cancelation action filed before the USPTO’s Trademark Trial and Appeal Board (“TTAB”) against Quanzhow Viition Gifts Co., Ltd.More
In re Lego Juris A/S
Fross Zelnick partner Charles T.J. Weigell III successfully persuaded the USPTO’s Trademark Trial and Appeal Board (“TTAB”) to reverse disclaimer requirements on behalf of our client LEGO involving applications for “Monkie Kid” in logo form with Chinese characters. The examining attorney had previously required disclaimer of KID and the transliteration of the corresponding Chinese characters apart from the mark and denied registration. More
Moshik Nadav Typography LLC v. Banana Republic, LLC
Case No. 20-CV-8325
On behalf of client Banana Republic, the firm was successful in dismissing a case brought by typographer Moshik Nadav, who alleged that our client used an ampersand he designed without permission in connection with certain promotions, alleging in three separate amended complaints claims sounding in unjust enrichment,More
Meomi Design, Inc. v. Know Yourself, PBC
Laura Popp-Rosenberg assisted Meomi Design, Inc., owner of the beloved children’s entertainment and educational property OCTONAUTS, in its successful opposition to registration of the mark ORGANAUTS for a competing children’s entertainment and educational property.More
Lacoste Alligator S.A. v. Southern Smocked Company, LLC
On behalf of client Lacoste Alligator S.A., the Trademark Trial and Appeal Board held that the Lacoste Alligator Logo is inherently strong, “renowned” in the clothing market, and “quite strong” commercially. The Lacoste marks are thus entitled to a “broad scope of protection.” The Board concluded that the applicant’s cartoon alligator created a likelihood of confusion with our Lacoste’s marks.More
Robert Kirkman, LLC v. The Toking Dead
Opposition No. 91242007 (T.T.A.B. July 22, 2020)
On behalf of Robert Kirkman, LLC—owner of THE WALKING DEAD trademark associated with the comic book and television series—we successfully opposed in the TTAB an application to register the mark THE TOKING DEAD that covered retail merchandise related to comic books about zombies that smoke cannabis. More
Retrobrands USA LLC v. Intercontinental Great Brands, LLC
On behalf of client Intercontinental Great Brands, LLC (“IGBL”)—owner of the famous CHICLETS brand of chewing gum—we successfully defended against a cancellation action filed in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office in which Retrobrands USA, LLC sought to cancel IGBL’s registrations for the CHICLETS trademark on the ground that IGBL allegedly had abandoned the trademark in the United States.More
Saleh v. Sulka Trading Ltd., et al.
Case No. 19-2461 (2d Cir. 2020)
The Second Circuit affirmed the S.D.N.Y.’s dismissal of a declaratory judgment action brought by Plaintiff Abdul Rehman Karim Saleh against our clients, Sulka Trading Ltd. and A. Sulka and Company Limited (together, “Sulka”). Sulka filed its motion to dismiss based on the ground that there was no actual controversy between the parties sufficient to create subject matter jurisdiction under the Declaratory Judgment Act because Saleh showed no evidence of an intent and ability to use the SULKA mark in an infringing manner in the U.More