Lerner David Prevails in Trademark Case
Claiming trademark infringement, unfair competition, and breach of contract, Osram Sylvania, Inc. (“OSI”) filed a complaint on November 23, 2020 in the Southern District of New York against Lerner David client Ledvance, LLC (“Ledvance”). OSI moved for a preliminary injunction, arguing that Ledvance, which held a license from OSI pursuant to the Sylvania Trademark License Agreement (“TMLA”) between the parties, simultaneously breached the TMLA and infringed OSI’s SYLVANIA mark by selling its licensed products through an Amazon Store. Lerner David vigorously opposed the motion, emphasizing that OSI had not proven the harm necessary to support a preliminary injunction. On January 27, 2021, OSI’s motion for a preliminary injunction was denied by Judge Ronnie Abrams. The Court addressed each of OSI’s contentions individually in a detailed opinion and agreed with Lerner David that OSI’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” OSI appealed the decision, and later withdrew its appeal after Ledvance’s opposition brief was filed. Once the matter continued through discovery, OSI moved for partial summary judgment, which was denied by newly appointed Judge Arun Subramanian in a detailed opinion on February 29, 2024. Thereafter, despite Ledvance’s willingness to proceed to trial, the parties reached a settlement agreement that was favorable to Ledvance. The agreement left a singular issue unresolved, namely, whether Ledvance’s Amazon Store, entitled LEDVANCE, constituted an impermissible Sylvania Brand Shop under the provisions of the TMLA. By agreement of the parties, this issue was submitted to arbitration. On August 5, 2024, Hon. James Orenstein (Ret.), acting as the arbitrator, awarded judgment in favor of our client. Specifically, OSI claimed that our client’s LEDVANCE Amazon Store, containing both SYLVANIA-branded and LEDVANCE-branded products, constituted an impermissible Sylvania Brand Shop. Each party submitted a pre-hearing memorandum on July 1, 2024. The parties presented evidence and arguments primarily at an in-person hearing on July 19, 2024, with a supplemental remote session on July 25, 2024. After consideration of the parties’ pre-hearing briefs, live testimony, and closing arguments, judgment was awarded in favor of Ledvance, such that Ledvance is now free to control and operate its LEDVANCE Amazon Store selling both SYLVANIA-branded and LEDVANCE-branded products. Ledvance was represented by Gregg Paradise and Daniela Caro-Esposito throughout this matter.
Lerner David Defeats Motion for Preliminary Injunction in Trademark Case
On January 27, 2021, Judge Abrams in the United States District Court, Southern District of New York, denied the opponent’s motion for a preliminary injunction, finding that the opponent failed to demonstrate any likelihood of irreparable harm. In the opponent’s motion, it argued that our client simultaneously breached a license agreement and infringed its mark by selling genuine, authorized products through an Amazon Store. The Court addressed each of the opponent’s points individually in a detailed opinion and stated that the opponent’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, the opinion expressed that our demonstration of Amazon’s search functions “cast further doubt on the plausibility” of the opponent’s argument. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.
Phytoceuticals, Inc. Prevails In Cancellation Proceeding Before The European Union Intellectual Property Office
On June 6, 2019, the European Union Intellectual Property Office issued a written decision determining that our client, Phytoceuticals, Inc.’s European Trademark Registration for the mark CELL SKIN LAB CLINICAL SKIN CARE was not invalid based upon prior use of the mark in Europe or the prior ownership of the mark as a result of an agreement between our client and the party seeking to cancel the registration. Likewise, the party seeking cancellation also failed on the grounds of bad faith. Based upon instructions and arguments prepared by our office and on actual evidence provided to our European associate, the European Union Intellectual Property Office specifically found that the filing for the trademark CELL SKIN LAB CLINICAL SKIN CARE was not unauthorized, and that our client, Phytoceuticals, Inc., had established prior rights in the mark in Europe. Further, the European Union Intellectual Property Office also found that the contract agreement entered into by our client with the party seeking cancellation, based upon principal/agent principals. Finally, the European Union Intellectual Property Office, based on evidence that our client provided, rejected all the accusations of the party seeking cancellation with respect to the fact that our client applied for the European Union Trademark in bad faith knowing that the party seeking cancellation had prior rights. Finally, based on these decision, the European Union Intellectual Property Office also awarded our client its reasonable fees and costs associated with this proceeding.
Lerner David Defeats Motion for Summary Judgment in Trademark Case
On December 20, 2018, Judge Wolfson in the United States District Court, District of New Jersey, denied the opponent’s summary judgment motion on all grounds that our client’s trademark is invalid. In the opponent’s motion, it argued that our client’s mark is invalid because 1) it creates a likelihood of confusion with other, third-party marks; 2) our client never actually used the mark in commerce; 3) our client committed fraud on the PTO in attempting to obtain registration; and 4) the defense of laches bars our client from asserting a trademark infringement claim. The Court addressed each of these points individually in a detailed opinion and reasoned that the opponent failed to meet its burden on each one, and that a genuine issue of fact exists with respect to each that precludes entry of summary judgment. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.
Global Trademark Skills Recognized
A global outlook characterises the thriving practice at Lerner David. This New Jersey boutique has its sights firmly trained on Asia; offices in China and Japan have brought in waves of new work, with many businesses looking for truly international trademark strategies. After determining which jurisdictions are most important to their clients, the team’s canny practitioners employ first-hand experience of the integrity of different trademark offices and courts around the world and then come up with a sound way forward. Of late, they have been particularly busy wrestling domain names away from cybersquatters and embarking on work in the social media sphere. Gregg Paradise’s background in computer science engineering gives him a crucial edge when start-ups are in the market for new counsel. He is a technical whizz who makes light work of even the most multifaceted briefs. His teammate Bruce Sales is a top negotiator. His 30 years of experience have imbued an instinctive understanding of which buttons to press; remaining calm, he gets favourable settlements time and again. The erudite Thomas Palisi manages portfolios with aplomb; issues surrounding the Madrid system are his bread and butter.
Lerner David Defeats Effort to Preliminarily Enjoin Rutgers University
Lerner David successfully defended Rutgers University and one of its football coaches, Arin Blazek, against entry of a preliminary injunction. Following full briefing by the parties and oral argument, U.S. District Judge Michael A. Shipp denied the preliminary injunction, agreeing with the position argued by Lerner David.
Lerner David Triumphs In Australian Trademark Strategy
Our firm developed a strategy for our client Bed Bath & Beyond in pursuit of revoking a trademark registration owned by a New Zealand company for the mark BED BATH & BEYOND. We successfully formulated and implemented a strategy by which the New Zealand company’s Australian registration for BED BATH & BEYOND was revoked and its effort to oppose our client’s application to register the BED BATH & BEYOND mark was defeated. With the assistance of Australian counsel, we were able to establish unequivocally that the New Zealand company was not making use of its BED BATH & BEYOND mark, resulting in revocation of the New Zealand company’s registration by IP Australia. IP Australia also ruled against the New Zealand company in its opposition to our client’s application for registration of the BED BATH & BEYOND mark.
Lerner David Defeats UDRP Complaint for Vipme.com Domain Name
A decision issued on December 20, 2016 by a FORUM administrative panel, resolving a dispute under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). Vipshop (US) Inc. prevailed against a UDRP complaint that was filed by VIP ME Enterprises LLC. The UDRP was filed on November 8, 2016 and requested that VIPME.com, a domain name used by Vipshop (US) Inc., be transferred to the Complainant because it violated Complainant’s trademark rights and was being used in bad faith. The Complainant owns a registered service-mark VIPME for, among other things, advertising on the Internet for others, and uses its VIP-ME.net website to promote its ViPme app that offers discounted bottle services in night clubs. Vipshop (US) Inc. is an online retailer that offers flash sales on women’s clothing and fashion accessories. The complaint alleged that Vipshop (US) used its VIPME.com domain name to advertise third party goods, albeit women’s clothing and apparel, in violation of Complainant’s registered VIPME service-mark. It also alleged that Vipshop (US) Inc. knew or should have known that Complainant applied for the VIPME service-mark before Vipshop (US) Inc. chose the name of its company and registered the VIPME.com domain name. As such, Complainant asserted that Vipshop (US) Inc. had no right or legitimate interest in the VIPME.com domain name and was using the domain name in bad faith. The panel disagreed with the Complainant and found it failed to show that Vipshop (US) Inc. lacked rights and a legitimate interest in VIPME.com and also failed to establish that Vipshop (US) Inc. acted in bad faith when it registered and used VIPME.com. Thus, the panel concluded that the Complainant failed to establish two of the three elements required to succeed in a UDRP proceeding and denied the complaint.
Lerner David Prevails on behalf of G&W Laboratories in Case of First Impression on Trademark Fraud
G&W LABORATORIES, INC. v. G W PHARMA LIMITED, Opposition No. 91169571 (TTAB January 29, 2009). In a case of first impression dealing with the scope of cancellation of a trademark registration including goods on which the trademark is not used, the Trademark Trial and Appeal Board held in favor of Lerner David's client G&W Laboratories. In an opposition proceeding before the Trademark Trial and Appeal Board, against the mark "G W Pharma," G W Pharma filed a counterclaim seeking cancellation of G&W's trademark registrations alleging fraud based on a lack of use of the mark by G&W for the Class 35 services. G W Pharma sought cancellation of the entirety of G&W's registrations -- not just in Class 35, but G&W's core goods in Class 5 as well. On Lerner David's motion to dismiss this counterclaim as to our client's core goods in Class 5, the Board issued a precedential decision, holding that a multiple-class application can be viewed as a series of applications for registration. Thus, the Board found, fraud in one class can not serve to invalidate any other class in a combined application. This decision fills a void in the line of cases going to back to Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), which have applied a very strict standard of fraud based on a party's failure to use its mark on each and every one of the goods and/or services identified in its registration.
Hollander Home Fashions successfully completes cancellation of ARCTIC DOWN mark.
Using our customary focus on strategic leveraging of intellectual property rights, we were able to guide our client to reestablish rights to the ARCTIC DOWN mark that it had previously decided to abandon. Through our careful investigation and coordinated tactical use of both Trademark Trial and Appeal Board cancellation procedures and knowledge of trademark prosecution were able to achieve cancellation of a blocking registration and allowance of our client's ARCTIC DOWN application.