Andrea Calvaruso chairs the firm’s Trademark and Copyright practice group and is a member of the firm’s Executive Committee. She represents clients from a wide range of industries, including retail, fashion, entertainment and consumer products, working diligently to build and enforce their intellectual property rights both in the U.S. and abroad. Andrea’s practice is unique in that she is has broad experience in prosecution and transactional work as well as litigation. As a result, she offers her clients far more breadth and depth of practice than most of her peers. Andrea not only helps her clients build and protect their intellectual property rights through strategic counseling and domestic and international prosecution, but also aggressively represents such clients in court and other adversarial proceedings.
Andrea’s abilities are recognized in the 2013–2021 editions of Chambers USA
, the 2011–2021 U.S. editions of The Legal 500 U.S.
, and the 2017-2018 editions of World Trademark Review
. In Chambers
, Andrea’s clients praise her as “smart, reliable, trustworthy, knowledgeable and responsive,” that she “understands IP inside out,” is “smart, capable and pragmatic” and “has a dynamic personality and is very good at negotiating through difficult matters.” In the World Trademark Review
, it was noted that “her all-encompassing appreciation for trademark law is complemented by holistic outlook, meaning that she leaves no stone unturned.” In Legal 500
, she is noted as “exceptional.” Also notable, Andrea served as chair of the copyright and literary property committee of the New York City Bar Association from 2013–2016.
Andrea regularly negotiates and drafts intellectual property-related agreements, and advises on issues pertaining to the evaluation of ownership interests and licensing matters. She also handles trademark search evaluations, content clearance, U.S. copyright filings, and domestic and international trademark filings. As many of Andrea’s clients have international operations, she advises on the management of their worldwide trademark portfolios and trademark enforcement programs, including instruction and supervision of litigation and opposition proceedings on a global scale.
Andrea is a highly effective litigator. She has favorably resolved and litigated claims pertaining to trademark, trade dress, unfair competition, rights of publicity and copyright cases. Her experience includes the successful advocacy and resolution of claims before the U.S. Federal District Court, and inter partes proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), as well as ICANN proceedings. Andrea views every dispute as unique, and is dedicated to creating a tactical advantage, both in and out of court. She works closely with her clients to design creative strategies that have the best possible chance of succeeding.
In Fashion: Kelley Drye Fashion & Retail Law Summit, host and organizer, annual gathering of nearly 100 executives and in-house counsel in the fashion and retail industries.
2013 MISS USA Pageant, preliminary judge, Las Vegas, Nevada.
Trademark and Unfair Competition
Bacardi & Co. Ltd. et al vs. Hatuey Carta Blanca Beverage Co
.: Representing Bacardi brand in a U.S. Trademark Trial and Appeal Board proceeding opposing registration of the mark HATUEY CARTA BLANCA RUM based on Bacardi’s HATUEY trademark registrations.
Bruce Brown Films, LLC v. Foot Locker, Inc., Nike, Inc. et al
.: Represented Foot Locker Retail Inc. and Nike, Inc. in a trademark litigation in the United States District Court for the Central District of California arising from the use of the phrase “ENDLESS SUMMER” together with a stylized blue wave and orange sun in connection with the marketing and promotion of Nike branded footwear. Negotiated a settlement favorable to client after mediation.
Lodestar Anstalt v. Bacardi & Company Limited, et al.
: Obtained summary judgment dismissing all claims against client in the U.S. District Court for the Central District of California arising from client’s use of the BACARDI UNTAMEABLE trademark. The case is on currently on appeal to the Ninth Circuit.
IMG Worldwide, LLC et al. v. Fashion Week Inc. et al.
: Represented IMG Worldwide, LLC and International Merchandising Company, LLC (operating companies of Endeavor) in a trademark litigation dispute against Fashion Week, Inc. related to claims arising out of Defendant’s escalating campaign to improperly trade on the decades of goodwill and fame associated with client’s trademarks NEW YORK FASHION WEEK, NYFW, and related marks. Negotiated a favorable settlement for client after commencement of discovery.
Charisma World Wide Corp., SA., v. Avon Products Inc
.: Obtained a favorable settlement for Avon in a trademark litigation regarding Avon’s use of the CHARISMA mark in Panama. Avon transferred the case to Andrea and her team after the Court denied the company’s motion to dismiss. After extensive discovery, Andrea negotiated a case settlement.
Represented the owner of the UFC brand, in a U.S. trademark opposition proceeding in connection with its application to register DANA WHITE’S TUESDAY NIGHT CONTENDER SERIES. Negotiated favorable settlement on behalf of client.
Bacardi & Co. Ltd. and Martini & Rossi Corp. vs. Martini Sports, LLC
: Successfully prevented registration of third party mark including the iconic Martini Racing Stripes in a Trademark Trial and Appeal Board proceeding and obtained a favourable settlement of dispute regarding use of mark.
Fashion Week, Inc. v. Council of Fashion Designers of America, Inc.
: Successfully defended WME | IMG in a TRO and preliminary injunction action in the Southern District of New York seeking to enjoin our client WME | IMG and the Council of Fashion Designers of America from using NEW YORK FASHION WEEK and NYFW trademarks in connection with the famous bi-annual fashion events in New York City. Plaintiff withdrew all claims after the Court denied its motion for a preliminary injunction.
Steve Madden, Ltd. v. Jasmin Larian, LLC
.: Achieved a favorable settlement for fashion company Cult Gaia in trade dress infringement litigation regarding the distinctive ARK bag.
Gucci America, Inc. v. UGP, LLC
: Obtained a judgment after trial in Trademark Trial and Appeal board in favor of Gucci America, Inc., rejecting registration of trademark applications including the GUCCI mark by an alleged heir of the Gucci family.
U.S. Polo Association, Inc. et al. v. PRL USA Holdings, Inc. et al.
: Obtained Second Circuit affirmance for Polo Ralph Lauren Corp. of District Court injunction barring the U.S. Polo Association, from use of polo player logo for fragrance and other goods and services.
U.S. Polo Association, Inc. et al. v. PRL USA Holdings, Inc.; PRL USA Holdings, Inc. v. United States Polo Association, Inc. et al.
: Represented RLC in several ongoing litigations with the U.S. Polo Association and its master trademark licensee in the U.S., JRA Trademark Company Ltd., alleging violation of intellectual property rights and contempt of prior judgment arising from use of a polo player logo in connection with various goods and services, pending in the U.S. District Court for the Southern District of New York. Obtained favorable settlement for client.
Sterling Jewelers, Inc. v. Artistry Ltd.
: Obtained summary judgment dismissing all claims filed against client, Sterling Jewelers, Inc., the largest specialty jewelry retailer in the United States, in a declaratory judgment action in the U.S. District Court for the Northern District of Ohio seeking a judgment that Sterling’s ARTISTRY DIAMOND trademarks for the sale of jewelry at the retail level do not infringe common law trademark rights held by Artistry Ltd., a wholesale jewelry company. Won affirmance of summary judgment on all claims after full briefing and oral argument before the Sixth Circuit Court of Appeals.
NSI International, Inc. v. Imperial Toy LLC
: Obtained a Temporary Restraining Order in the U.S. District Court for the Southern District of New York on behalf of NSI International in a trademark litigation dispute relating to Imperial’s Googly Ball knock-off of the trade dress packaging of NSI’s Wubble Bubble toy. Case settled favorably after a win on preliminary injunction.
Maxim Integrated Products, Inc. v. Altronix Corp.
: Represented a defendant electronics company in a trademark and trade dress infringement action brought in the U.S. District Court for the Northern District of California. Negotiated a confidential settlement that was favorable to the client prior to trial.
Represent Take-Two Interactive Software in numerous favorable ICANN proceedings, including obtaining decisions resulting in the transfer of the domain names that unfairly traded on client’s trademarks including ROCKSTAR GAMES, GTA, GRAND THEFT AUTO, RED DEAD and RED DEAD REDEMPTION, and 2K.
Represented IMG Worldwide, LLC, William Morris Endeavor Entertainment, LLC, and WME IMG, LLC d/b/a Endeavor v. Ashley Wolford, Emilio Azuero, Berkeley Film Studio. Won ICANN Domain Dispute proceeding against 19 domain names using the client’s ENDEAVOR, IMG and WME trademarks and used in connection with websites that mimicked the client’s business and offered competing services.
Represented Polo Ralph Lauren in an Objection and Dispute Resolution Proceeding before the International Chamber of Commerce (ICC) in response to a Community Objection to Polo’s new gTLD application.
Obtained numerous decisions on the merits after an ICANN Domain Dispute Proceeding in favor of The Miss Universe Organization, holding that the domain names were registered in bad faith and must be transferred to the client.
Adams v. The Hartz Mountain Corp.
: Represented The Hartz Mountain Corporation in a lawsuit filed in the Western District of Washington by artist Juli Adams. Adams alleged Hartz violated a license of IP copyrighted illustrations and a trademark claim with Adams through its use of the ANGRY BIRDS trademark in connection with the sale of pet toys. Just weeks before trial, the case settled favorably.
Saks Inc., v. Attachmate Corp.
: Represented Saks in a declaratory judgment action pending in the Southern District of New York seeking a declaratory judgment that it did not breach agreements, or violate copyrights of the software company. Obtained a favorable settlement after pre-trial briefings.
The Bon-Ton Stores, Inc. v. Attachmate Corp. and Micro Focus (US), Inc.
: Represented The Bon-Ton Stores in an action in the U.S. District Court for the Southern District of New York seeking a declaratory judgment that, among other things, it did not infringe upon the defendant’s copyrights. Obtained a confidential settlement favorable to the client prior to discovery.
Polo Ralph Lauren Corp. et al. v. Attachmate Corp.
: Represented Polo Ralph Lauren in an action in the U.S. District Court for the Southern District of New York seeking a declaratory judgment that, among other things, it did not infringe upon the defendant’s copyrights. Obtained a confidential settlement favorable to the client prior to discovery.
A Black Bike, Inc. v. Club Monaco, Inc. et al.
: Obtained the dismissal of claims against an international apparel retailer prior to the conclusion of discovery in an action filed in the United States District Court for the Southern District of New York alleging, among other things, false advertising, trademark infringement and copyright infringement.
S.A.R.L. Divertis Properties Group v. Denmay, Inc.
: Represented Divertis, a French game company, in its lawsuit in the Southern District of New York against Denmay, Inc.: dba Blue Orange Games. This action was for an order enforcing a judgment of the Tribunal Grande Instance de Paris, a permanent injunction and damages for unfair competition and trademark, copyright and trade dress infringement caused by Blue Orange’s continued promotion, distribution and sale of Divertis’ SPOT IT! games in the U.S. after termination of the parties’ license agreement. The matter settled favorably. The plaintiff’s card game is sold under license by Divertis in 25 countries and is a best-seller, amounting to approximately $91 million in sales worldwide since 2009, including over $41 million in sales in the U.S. alone since 2010.
Ventura Content, Ltd. v. UGC Internet Ventures Ltd., et al.
: Obtained a motion to dismiss on behalf of UGC Internet Ventures, Ltd., an online video viewing platform, in a copyright infringement matter in the U.S. District Court for the Northern District of Georgia.
Counseling and Transactional
Provide counseling, advice, and representation regarding use of name and likeness to iconic beauty and wellness expert related to dispute with former namesake company and launch of new beauty brand.
Negotiate and draft merchandise licenses, sponsorship agreements, trademark licenses and other entertainment and intellectual property-related agreements for an international entertainment company.
Negotiated licenses for a well-known jewelry designer involving licensed use of intellectual property associated with two blockbuster Hollywood motion pictures.
Provide advice to a famous designer of apparel, home furnishings, fragrance and accessories regarding license agreements with photographers and other vendors.
Provided advice regarding a license to use an entertainment client’s trademarks in connection with houseware products for sale in a national department store chain.
Provide advice and counseling to an international athletic apparel and footwear retailer regarding the use of a client’s intellectual property in third-party works, such as television programs and motion pictures, license agreements, sponsorship agreements, concept stores and cross-promotion campaigns, including negotiating and drafting agreements.
Negotiated and provided advice regarding a purchase agreement for the sale of intellectual property associated with an entertainment enterprise to a company owned by a well-known sports and entertainment personality.
Provide counseling and advice regarding an IP and asset purchase agreement related to a clothing and accessories line of a famous entertainer.
Provide counseling and advice regarding a consultancy agreement for a famous international fashion designer.
Portfolio Management and Advice
Advise the Major League Baseball Players Association (MLBPA) in connection with clearance and filings of new marks for a wide range of merchandise and services.
Provided counsel and assistance to several famous fashion and lifestyle companies with respect to each company’s application to register a new gTLD with ICANN, including negotiating registry agreements with registry service providers and assistance with other aspects of application and review and dispute processes.
Represented an 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 a worldwide trademark and copyright portfolio for a famous international entertainment enterprise, including trademark clearance, filing, maintenance and the enforcement of trademark registrations in over 80 countries worldwide. Manage the worldwide enforcement program, including current supervision of dozens of opposition proceedings for the client worldwide.
Provide advice and representation to an international athletic apparel and footwear retailer regarding the clearance, maintenance and enforcement of intellectual property, including trademark clearance and filings, review of product design and promotions, as well as proceedings involving the U.S. Trademark Office.
Provide advice and representation to an international beauty and cosmetics company regarding the clearance, maintenance and enforcement of intellectual property, including trademark clearance and filings, review of product design and promotions, as well as proceedings involving the U.S. Trademark Office.
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.
Reviewed the content of promotions and advertising campaigns created for third-party customers by an advertising arm of the 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 a client’s lifestyle magazines, internet content and other publications, including cook books and diet books produced and published by the client with respect to intellectual property-related issues.
Ranked as a leading practitioner in the Intellectual Property: Trademark & Copyright area by Chambers USA, 2013-2021.
Recognized by Legal 500 for her work in the Intellectual Property: Trademarks Litigation and Intellectual Property: Trademarks Non-Contentious areas, 2011-2021.
Recommended in World Trademark Review as “The World’s Leading Trademark Professionals” for 2017 and 2018.
Listed in New York Super Lawyers, 2013–2021 and inclusion as a Top Women in IP law in 2020.
Copyright and Literary Property Committee, chair, 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, prior member