Kelley Drye

Practices 

Contact Information

Andrea L. Calvaruso
Practice Chair

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

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Trademark and Copyright

Recognized as a Leading Practice by Legal 500

Recognized as a leading practice by Legal 500

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Recognized as a Leading Trademark and Copyright Practice by Chambers USA

Recognized as a Leading Trademark and Copyright Practice

Learn More

Kelley Drye represents and advises clients in all aspects of trademark and copyright practice including clearance, prosecution, maintenance and enforcement of trademarks and copyrights worldwide; distribution and licensing arrangements; grey market and counterfeiting issues; marketing practices; and adversarial proceedings in U.S. Federal District Court, U.S. Trademark Trial and Appeal Board (TTAB), and ICANN Domain Dispute proceedings. The international flavor of Kelley Drye’s practice has proven advantageous in handling the diverse legal problems arising out of the globalized economy.

Kelley Drye’s Trademark and Copyright practice is highly respected in the field. The group was recognized as a leading practice by Chambers USA 2014, which noted that our lawyers “never fail to produce high-value and innovative work.” For the third consecutive year the group received a Tier 1 ranking in the “Trademark Law – National” category in the “Best Law Firms” studies published by U.S. News and Best Lawyers.

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Trademark Counseling, Prosecution, and Filings
Kelley Drye provides trademark counseling and manages domestic and international trademark portfolios on behalf of national and multinational clients. Kelley Drye’s services include:
  • Trademark clearance and related counseling

  • Prosecution of trademark applications in the U.S. and abroad

  • Managing worldwide trademark portfolios, including trademark audits, maintenance and enforcement

  • Managing worldwide assignment programs

  • Strategic counseling and creation of corporate programs for protecting and strengthening trademarks, trade dress and related business reputation and goodwill

  • Negotiating and drafting licenses, distribution agreements, assignments and security agreements

  • Representation of clients in adversarial proceedings in the TTAB
Design and Trade Dress Protection
Kelley Drye also handles design and trade dress issues such as:
  • Counseling clients regarding developing, maintaining, and strengthening trade dress rights

  • Counseling regarding trade dress vs. design patent protection
Copyright
Kelley Drye provides copyright counseling including:
  • Acquisition and registration of copyrighted works

  • Evaluation of ownership interests

  • Developing copyright protection strategies

  • Negotiating and drafting confidentiality agreements, work-for-hire agreements, assignments and licenses

  • Enforcement of copyright interests including DMCA takedown notices, managing enforcement programs, and copyright litigation
Licensing, Distribution, and Corporate Transactions
  • We provide advice, and negotiate and draft trademark and copyright license agreements

  • We prepare distribution agreements for branded goods and provide advice on related regulatory and antitrust issues

  • We conduct due diligence investigations and audits with respect to trademarks, copyrights and other IP assets

  • We prepare and record trademark and copyright assignments in the U.S. and abroad

  • We record security interests in trademarks and copyrights and provide related advice
Internet
Our attorneys are fully conversant with the challenges the Internet poses to rights holders and the law which governs these issues. Our services include:
  • Assisted brand owners in applying for the New gTLDs and enforcing rights pursuant to ICANN's related Dispute Resolution Policies

  • Counseling regarding creation and content of websites

  • Resolving domain name, hyperlink and framing disputes

  • Preparing and filing copyright applications for website content and source codes

  • Negotiation and drafting agreements with content and Internet service providers

  • Providing representation and advice regarding protection of clients’ proprietary rights in internet related matters including ICANN Domain Dispute proceedings.
Litigation
Kelley Drye is especially suited to handle trademark and copyright litigation. The value placed on established brands has grown dramatically, as has the cost of protecting those brands. Our objective is to recover, whenever possible, monetary damages as well as the expenses involved in enforcing trademarks and copyrights against infringers. We strive to devise a litigation strategy that is cost-effective and tailored to reach the objectives our client sets for that particular case. The type of disputes we handle include:
  • Trademark and trade dress infringement, dilution and unfair competition actions in federal and state courts

  • Actions for §43(a) Lanham Act violations, false advertising and deceptive consumer practices in federal and state courts

  • Copyright infringement actions in federal court

  • Trademark proceedings in the Trademark Trial and Appeal Board of the United States Patent and Trademark Office

  • ICANN Domain Dispute proceedings

  • Appeals to the Federal Circuit Court of Appeals

  • Proceedings before U.S. International Trade Commission and U.S. Customs Service
Our record of success, as shown by the annexed list of representative matters handled by our attorneys, speaks for itself.

Anti-Counterfeiting and Grey Goods
Kelley Drye has brought or supervised anti-counterfeiting suits across the world, and is well-versed in combating the marketing of grey goods including:.
  • Counseling on international distribution systems and measures to alleviate product diversion and grey goods problems

  • Coordinating investigations of counterfeiting activities here and abroad

  • Conducting and supervising seizure actions
Strategies & Policing
  • We work with our clients to develop strategies and establish individualized corporate programs for protection of trade names, trademarks, trade dress copyrights, and related business reputation and goodwill, including worldwide enforcement programs

  • We provide advice regarding advertising and promotional issues

Representative Experience

Trademark and Unfair Competition
  • Represented liquor brand and its subsidiary at trial against claims brought by a joint venture owned by the Castro regime and Pernod-Ricard, S.A. The Court cancelled the joint venture’s federal registration of the HAVANA CLUB mark and dismissed all of plaintiffs’ unfair competition claims; decision was affirmed by the Second Circuit on appeal.

  • Defended OTC drug manufacturer at trial in an unfair competition lawsuit brought in the Eastern District of New York. The jury unanimously found that defendant’s statement, used on wholesalers’ and retailers’ store brand packaging for joint care products is not false and misleading and does not violate Section 43 of the Lanham Act, and awarded damages on our client’s counterclaims.

  • Represented liquor brand in trademark litigation. Obtained judgment for the client after bench trial in the Southern District of New York.

  • Served as appellate counsel for a stock exchange. We were successful in reversing a summary judgment granted below in the Southern District of New York.

  • Represented cosmetics brand in a trademark infringement action. We obtained a favorable settlement in the case in the Eastern District of New York.

  • Defended distributor of motor scooters from claims of reverse passing off under the Lanham Act. The case, in the Western District of Washington, was dismissed with prejudice after denial of plaintiff’s preliminary injunction motion.

  • 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.

  • Represented comic book publisher in bringing opposition proceeding before the U.S. Trademark Trial and Appeal Board. Opposition sustained on Summary Judgment, refusing registration of applicant’s trademark.

  • Obtained judgment on behalf of an international beauty pageant enterprise in sustaining opposition after trial in opposition proceeding before the United States Trademark Trial and Appeal Board. Successfully prevented registration of applicant’s trademark.

  • 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.

  • Represented a publication in a successful trademark infringement and unfair competition suit in the Northern District of Illinois.

  • Defended cosmetics brand in trademark infringement suit. Achieved favorable outcome when the court denied a preliminary injunction motion.

  • Defeated a 2009 motion for preliminary injunction that was sought, based on alleged infringement of plaintiff's trademark, to prevent the distribution of a popular reality television program on a prominent cable network.

  • Defending the broadcast network and the merchandise distributor of a pioneering reality television show against a trademark lawsuit filed in Hawaii, won summary judgment against "reverse confusion" claims brought by a Hawaiian company that marketed similar products under a similar trademark; that trial court victory was affirmed by the U.S. Court of Appeals for the Ninth Circuit.

  • Defending the world-famous trademark of a Los Angeles radio station, secured a TRO and preliminary injunction to prevent a Palm Springs station from using a confusingly similar name; the trademark injunction was unanimously affirmed by the U.S. Court of Appeals for the Ninth Circuit.

  • Represented nutritional supplement maker in achieving a favorable settlement of Lanham Act claims asserted against competitor in the dietary supplements industry in the Northern District of California.
Copyright
  • Defended leading toy manufacturer in trade dress and copyright infringement action. Case dismissed by plaintiff following early discovery and motion practice.

  • Successful defense of computer software case on behalf of our client in the Southern District of New York.

  • Prosecuted copyright infringement and DMCA claims against computer game hackers; permanent injunction entered in the Northern District of Illinois.

  • Represented an international restaurant corporation in defeating TRO and preliminary injunction motions alleging violations of federal and state trademark and anti-dilution statutes in the Eastern District of Missouri.

  • 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.

  • Represented 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.

  • Represented international beauty pageant enterprise in bringing an ICANN Domain Dispute Proceeding before the WIPO Arbitration and Mediation Center. Obtained judgment in client’s favor ordering transfer of domain name to the plaintiff.

  • 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.

  • Defending a major studio, a highly honored producer, and several other defendants against a copyright lawsuit in New York federal court, won summary judgment in 2010 against claims that a recent hit movie infringed the copyright of a short story upon which a 1954 classic film was based.

  • Defending more than 30 named defendants, including a major motion picture studio and three well-known actresses, in 2009 and 2010 secured the dismissal of numerous copyright and RICO claims based on the release and distribution of a successful romantic comedy.

  • Protecting the release of a 2009 premium cable documentary, defeated both an application for temporary restraining order and a motion for preliminary injunction based on claims of copyright infringement, paving the way for the film's timely release and forcing the dismissal of the action.

  • Secured the dismissal, with prejudice, of a copyright infringement claim against a leading television cooking show. Persuaded the district court to issue groundbreaking rulings that: (1) copyright infringement claims may be dismissed at the pleading stage based on lack of substantial similarity; (2) no amount of access can establish actionable copying if the works are not substantially similar; and (3) judicial notice is appropriate to establish that allegedly copied elements are generic and therefore not copyright-protected.

  • Defended a major motion picture studio in a copyright infringement action growing out of a hit 1980s motion picture. Secured the dismissal, with prejudice, of all claims, and successfully defended that dismissal on appeal in the U.S. Court of Appeals for the Ninth Circuit in 2006.

  • Secured the early dismissal, with prejudice, of copyright and accounting claims brought in 2005 against the producers, distributor and director of one of the most financially successful films of 2002.

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Publications
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July 11, 2014

Recent Decisions Continue to Reshape the Law Regarding Copyright Protection for Fictional Characters

Bloomberg BNA’s Patent, Trademark & Copyright Journal

Events
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May 20, 2014

Update on New Top Level Domain Names

Trademark Talk: Hot Topics and Recent Developments in Trademark Law

Additional Resources