Kelley Drye

Attorneys & Professionals 

Andrea L. Calvaruso

Partner Email vCard
New York
Phone: (212) 808-7853
Fax: (212) 808-7897

Andrea Calvaruso is a partner in the firm’s New York office and chair of the Trademark and Copyright practice group.  She has also been selected to serve as the chair of the Copyright and Literary Property Committee of the New York City Bar Association for the 2013-2016 term.  Her work has been recognized in the 2013-2014 editions of Chambers USA and the 2011-2014 U.S. editions of The Legal 500, reporting that her clients praise her as “smart, reliable, trustworthy, knowledgeable and responsive.”  For the third consecutive year, the Trademark practice group was also recognized with a Tier 1 – National ranking in the “Trademark Law” category in the “Best Law Firms” studies published by U.S. News and Best Lawyers.

Ms. Calvaruso represents clients in a wide range of industries, including consumer products, entertainment and fashion; negotiates and drafts intellectual property-related agreements; and counsels clients in matters such as evaluation of ownership interests, licensing issues, promoting and enforcing property rights, trademark search evaluations, content clearance, U.S. copyright filings, and domestic and international trademark filings.

Ms. Calvaruso also litigates trademark, trade dress, unfair competition, and copyright cases.  She joins many of her colleagues at the firm whose clients have international operations, managing worldwide trademark portfolios and trademark enforcement programs, including instruction and supervision of litigation and opposition proceedings abroad.

Ms. Calvaruso’s experience includes handling actions in U.S. Federal District Court and inter partes proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), and ICANN Proceedings.

Representative Experience
Counseling and Transactional Work
Agreements

Negotiate and draft merchandise license and other entertainment and intellectual property related agreements for international entertainment client.

Negotiated licenses for well-known jewelry designer involving licensed use of intellectual property associated with two blockbuster Hollywood motion pictures.

Provide advice to famous designer of apparel, home furnishings, fragrance and accessories regarding license agreement with photographers.

Provided advice regarding license to use entertainment client’s trademarks in connection with house ware products for sale in national department store chain.

Provide advice and counseling to international athletic apparel and footwear retailer regarding use of client’s intellectual property in third party works such as television programs and motion pictures and cross promotion campaigns.

Negotiated and provided advice regarding purchase agreement for sale of intellectual property associated with entertainment enterprise to company owned by well-known sports and entertainment personality.

Portfolio Management and Advice

Provided counsel and assistance to several famous fashion and lifestyle companies with respect to each company’s application to register a new Generic Top-Level Domain with ICANN, including negotiating registry agreements with registry service providers and assistance with other aspects of application and review and dispute processes.

Represented international entertainment client in a meeting at the Trademark Review and Adjudication Board for the People’s Republic of China with high ranking officials, including the Vice Director General, regarding several pending trademark applications and adversarial proceedings.

Selected by several famous European fashion houses to manage, enforce and provide strategic advice regarding each company’s U.S. trademark and copyright portfolios.

Manage and provide strategic advice regarding worldwide trademark and copyright portfolio for famous international entertainment enterprise, including trademark clearance, filing, maintenance, and enforcement of trademark registrations in over 80 countries worldwide.  Manage worldwide enforcement program including current supervision of dozens of opposition proceedings for client worldwide.

Provide advice and representation to international athletic apparel and footwear retailer regarding clearance, maintenance and enforcement of intellectual property including trademark clearance and filings, review of product design, promotions, and proceedings in the U.S. Trademark Office.

Managed and provided strategic advice regarding worldwide trademark portfolio for Fortune 500 medical, dental and veterinary supply company including trademark clearance, maintenance and enforcement of trademark portfolio worldwide, advice regarding IP related agreements, and representation in worldwide opposition proceedings.

Review content and provide intellectual property counseling with respect to annual worldwide pageant television broadcasts including script, images, promotional videos, in-broadcast videos and stage set, print publications, website content, licensed products and promotions. 

Review content of promotions and advertising campaigns created for third party customers by advertising arm of media client’s business with respect to copyright, fair use, parody, rights of publicity, privacy, trademarks, and other intellectual property clearance, including website content, social media sites, videos, advertisements and promotions.

Review and clear content of client’s lifestyle magazines, internet content and other publications, including cook books and diet books produced and published by client with respect to intellectual property related issues.

Reviewed intellectual property portfolio of premium consumer foods company in connection with asset disposition in bankruptcy proceeding and provided advice regarding ownership interests.

Adversarial Proceedings
U.S. District Court

Obtained judgment in favor of famous apparel, home furnishings, fragrances, and accessories designer in action for contempt of an injunctive order in the U.S. District Court for the Southern District of New York.

Represented famous apparel, home furnishings, fragrances, and accessories designer in action in the U.S. District Court for the Southern District of New York seeking a declaratory judgment that, inter alia, it did not infringe upon defendant’s copyrights. Obtained confidential settlement favorable to client prior to discovery.

Obtained dismissal of claims against international apparel retailer prior to conclusion of discovery in action filed in the United States District Court for the Southern District of New York alleging, inter alia, false advertising, trademark infringement, and copyright infringement.

Represented defendant electronics company in trademark and trade dress infringement action brought in the United States District Court for the Northern District of California.  Negotiated confidential settlement favorable to client prior to trial.

Litigation counsel for international fashion designer in bringing copyright infringement action in the U.S. District Court for the Southern District of New York.  Obtained permanent injunction and confidential settlement favorable to client prior to trial.

Defended shoe manufacturer in trademark infringement litigation in the U.S. District Court for the Northern District of New York. Obtained dismissal of all charges against client and favorable settlement prior to trial.

Litigation counsel for international beauty pageant enterprise in bringing a trademark and copyright litigation in the U.S. District Court for the District of Nevada.  Obtained permanent injunction in connection with favorable settlement agreement prior to discovery.

Defended a watch retailer in litigation brought by a major international luxury goods enterprise alleging trademark infringement and counterfeiting in the U.S. District Court for the Southern District of New York.  Obtained dismissal of all claims against client and obtained favorable settlement prior to trial.

Defended Brazilian newspaper publishing company in copyright infringement litigation in the U.S. District Court for Southern District of New York.  Obtained dismissal of claims and obtained favorable settlement prior to discovery.

Defended scrap book manufacturer in trade dress infringement action in the U.S. District Court for the Southern District of New York.  Obtained dismissal of all claims and obtained favorable settlement.

TTAB

Obtained judgment on behalf of an international beauty pageant enterprise sustaining opposition prior to trial in proceeding before the TTAB.  Successfully prevented registration of applicant's trademark.

Represented successful New York City tour company in opposing trademark registration in proceeding before the TTAB.  Obtained confidential settlement favorable to client prior to trial, including withdrawal of offending trademark application.

Obtained favorable decision on motion to dismiss all claims with prejudice in opposition proceeding before the TTAB, objecting to client magazine publisher’s registration of trademark.

Represented comic book publisher in bringing opposition proceeding before the TTAB where applicant alleged use and registration of trademark constituted parody.  Opposition sustained on Summary Judgment, refusing registration of applicant’s trademark.

Obtained judgment on behalf of an international beauty pageant enterprise sustaining opposition after trial on the merits in proceeding before the TTAB.  Successfully prevented registration of applicant’s trademark.

ICANN Proceedings

Represented famous apparel, home furnishings, fragrances, and accessories designer in Objection and Dispute Resolution Proceeding before the International Chamber of Commerce (ICC), in response to Community Objection to .POLO new gTLD application.

Obtained decision on the merits after ICANN Domain Dispute arbitration in favor of international beauty pageant client, holding that the domain name missuniversecanada.com was registered in bad faith and must be transferred to client.

Obtained decision on the merits after ICANN Domain Dispute arbitration in favor of internationally renowned educational institution, holding that the domain name juilliard.me was registered in bad faith and must be transferred to client.

Obtained decision on the merits after ICANN Domain Dispute arbitration in favor of international beauty pageant client, holding that the domain name missuniverseescort.com was registered in bad faith and must be transferred to client.

Obtained decision on the merits after ICANN Domain Dispute arbitration in favor of international beauty pageant client, holding that the domain name missuniversesexvideo.com was registered in bad faith and must be transferred to client.

Obtained decision on the merits after ICANN Domain Dispute arbitration in favor of international beauty pageant client, holding that the domain name missusapageant.org was registered in bad faith and must be transferred to client.

Memberships & Associations

Chair, Copyright and Literary Property Committee, Sept. 2013-Sept. 2016, Association of the Bar of the City of New York
Copyright Society of the U.S.A.
International Trademark Association (INTA)
National Women’s Law Center Leadership 35 Committee

Professional Activities

Preliminary Judge, 2013 MISS USA Pageant, Las Vegas, Nevada

Honors & Awards

Ranked as a leading practitioner in the Intellectual Property: Trademark & Copyright area by Chambers USA, 2013-2014.

Recommended in US Legal 500 for her work in the Intellectual Property - Trademarks Litigation and Trademarks Non-Contentious areas, 2011-2013.

Listed in New York “Super Lawyers,” 2013-2014.

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January 22, 2015

In Fashion

Kelley Drye Fashion & Retail Law Summit