Ms. Tavakoli counsels clients regarding domestic and foreign trademark portfolios, including international trademark prosecution and maintenance, as well as trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She has experience working on all forms of intellectual property litigation and unfair competition matters. Ms. Tavakoli also represents clients in connection with federal and state litigation involving all forms of intellectual property infringement and licensing issues. She routinely advises clients on trademark, patent and copyright infringement; e-commerce; unfair competition; trade secrets; trade dress; and licensing matters.
Prior to joining Kelley Drye, Ms. Tavakoli worked as a law clerk and focused on complex intellectual property litigation and legal issues affecting biotechnology patents, pharmaceutical patents, mechanical inventions, and patents relating to online markets and auctions.
While earning her LL.M. degree in Europe, Ms. Tavakoli worked as a visiting associate in Barcelona, where she focused on trademark and copyright infringement, trade secrets, and licensing matters related to the television, film and entertainment industry. She also gained experience analyzing and comparing copyright licenses with parties throughout the European Union as well as countries in Asia and Africa.
Representative Experience
Telarix, Inc. v. Vero Systems, Inc. (E.D. Va.)Member of litigation team that represented Telarix, Inc. in patent infringement action involving optimal call routing technology and unfair competition claims. Prepared discovery motions, interrogatories and responses to interrogatories, prepared the direct and cross examinations of witnesses and defended depositions.
Three Rivers Pharmaceuticals, LLC v. Zydus Pharmaceuticals (USA) Inc. (E.D. Va.)
Successfully defended motion to compel entry upon land pursuant to Fed. R. Civ. P. 34(a)(2) in patent infringement action related to a process used to manufacture an anti-viral drug. Involved in preparation of briefs, pleadings and discovery requests.
Corliss O. Burandt v. Jon W. Dudas, Director of the United States Patent & Trademark Office (USPTO) (E.D.Va.)
Involved in drafting Opposition to Defendant's Motion for Summary Judgment and Plaintiff's Reply to Defendant's Opposition to Plaintiff's Cross-Motion for Summary Judgment seeking reversal of the USPTO’s denial of plaintiff’s petitions to accept payment of unavoidably delayed maintenance fees and reinstatement of patentee’s patent. Assisted in preparation of Oral Argument before the Court.
Worked with foreign counsel in representation of Merck & Co. Inc. (Merck Sharp & Dohme de España, S.A.) (collectively “Merck”) in defending the novelty and non-obviousness of bisphosphonate alendronate sodium patent covering Fosamax® stemming from disclosure statements in April and June 1996 articles in Lunar News recommending a single weekly dosage of alendronate whereas Merck’s patent claimed a once-a-week dosage of 70 mg for osteoporosis.
Assisted in the representation of a high-end denim brand in defending several of the company’s trademarks and Community Trademarks against trademark infringement via cyber-squatting. All disputes were successfully settled out of court.
Participated in litigation team representing a major U.S. film distributor in complex cross-border litigation involving exclusive film distribution licenses granted on behalf of a foreign distribution company who later violated the licenses and several copyrights owned by the U.S. film distributor concerning more than 183 film titles. The litigation involved enforcing an Independent Film and Television Alliance (IFTA) arbitration award in Europe, filing and granting of preliminary injunctions, oppositions against licensee’s bankruptcy proceedings, settlement negotiations, and the defense of U.S. film distributor in a counter-suit filed by licensee in order to stall enforcement of IFTA award and collection of overdue payments.
Memberships & Associations
American Intellectual Property Law Association, Trademark Litigation CommitteeInternational Trademark Association, Lefkowitz Moot Court Competition Committee
American Bar Association
District of Columbia Bar Association
