Andrea Calvaruso chairs the firm’s Trademark and Copyright practice group. 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 involved in both prosecution and 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 2013–2016 editions of Chambers USA and the 2011–2016 U.S. editions of The Legal 500 U.S. 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.” For the fourth consecutive year, and an affirmation of Andrea’s leadership and commitment, the firm’s Trademark and Copyright practice was recognized with a Tier 1—National ranking in the Trademark Law category of the “Best Law Firms” rankings published by U.S. News and Best Lawyers. 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 is also involved in 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 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.
Counseling and Transactional
Negotiate and draft merchandise licenses, sponsorship agreements 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
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.
Adams v. The Hartz Mountion 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.
Trademark and Unfair Competition
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.
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. PoloAssociation, 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.: Represent 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.
Sterling Jewelers, Inc. v. Artistry Ltd.: Represent 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. Summary judgment motion pending.
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.
Lodestar Anstalt v. Bacardi & Co. Ltd., et al.: Representing Bacardi Group in the TTAB opposition proceeding and related trademark infringement litigation pending in the Central District of California, regarding its use and registration of the BACARDI UNTAMEABLE mark.
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.
Gucci America, Inc. v. Beyond the Rack Enterprises, Inc. et al.: Represent Gucci America, Inc. in a trademark infringement and confidential action pending in the U.S. District Court for the Southern District of New York.
Currently representing Take-Two Interactive, Inc. in dozens of pending TTAB proceedings and previously represented client in dozens of terminated TTAB proceedings with respect to intellectual property associated with famous marks including TAKE TWO, 2K, GRAND THEFT AUTO, ROCKSTAR, and BULLY.
Currently represent The Miss Universe Organization in dozens of pending TTAB proceedings and previously represented client in dozens of terminated TTAB proceedings with respect to famous marks including MISS UNIVERSE, MISS USA, and MISS TEEN USA.
Currently represent Avon in several pending TTAB proceedings and previously represented client in dozens of terminated TTAB proceedings with respect to famous marks including AVON, ANEW, and related marks.
Marc Fisher, LLC v. Gucci America, Inc.: Represent Gucci America, Inc. in a TTAB action filed by Marc Fisher, LLC challenging Gucci’s registration of its iconic horsebit trademark.
Gucci America, Inc. v. UGP, LLC: Represent Gucci America, Inc. in TTAB opposition proceeding seeking to prevent registration of Gucci formative marks for electronic cigarettes, filed by an alleged heir of the Gucci family.
On Location Tours, Inc. v. Joanne Konstantinakos d/b/a Destination On Location: Represented On Location Tours, a successful New York City tour company, in TTAB opposition proceeding. Obtained a confidential settlement favorable to the client prior to trial, including the withdrawal of the offending trademark application.
Pabst Blue Ribbon v. Professional Bull Riders, Inc.: Represent Professional Bull Riders in TTAB proceeding seeking cancellation of client’s PBR mark.
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 decisions on the merits after an ICANN Domain Dispute in multiple arbitrations in favor of The Miss Universe Organization, holding that the domain names were registered in bad faith and must be transferred to the client.
Obtained a decision on the merits after an ICANN Domain Dispute arbitration in favor of the Juilliard School, holding that the domain name juilliard.me was registered in bad faith and must be transferred to the client.
Obtained decisions on the merits in multiple ICANN Domain Dispute proceedings in favor of multiple other clients, including among others, Avon, Dogeared, and Foot Locker, holding that the domain names were registered in bad faith and must be transferred to the client.