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Areas of Expertise:
Robert specializes in intellectual property litigation, including patent, trademark, copyright, false advertising and unfair competition matters in federal court. He also has experience with obtaining United States utility and design patents, primarily in the mechanical, material and process arts. He also is skilled in obtaining trademark and copyright protection. He has negotiated and drafted major intellectual property licensing agreements, in areas such as consumer products, as well as pharmaceuticals. He has extensive litigation experience at both the trial court and appellate court levels, as well as before the Trademark Trial and Appeal Board. He also has experience drafting opinion letters regarding patent validity and infringement, as well as trademark clearance, validity and infringement opinions.
Education:
• Stanford University, Stanford Law School, J.D., 1993
• Massachusetts Institute of Technology, B.S., Mech. Eng., 1990
Bar Admissions:
• New York State
• United States Supreme Court
• United States Courts of Appeal for the Second, Fifth, Ninth and Federal Circuits
• United States District Court for the Southern and Eastern Districts of New York, and for the District of New Jersey
• United States Patent & Trademark Office, registered patent attorney.
Representative Matters:
• Represented an Italian restaurant in NYC in a trademark battle with a pizzeria using the same mark. In the first action, obtained summary judgment and an award of attorneys' fees based on bad faith infringement and Defendants' fraud before the Court. The judgment was substantially affirmed by the U.S. Court of Appeals for the Second Circuit. In a second action, tried a trademark infringement case to a jury, and obtained a verdict in favor of the client, including a finding that Defendants infringed in bad faith.
• Represented a major direct marketing company in a trademark and copyright counterfeiting suit involving consumer products marketed on television and sold in retail stores, and successfully obtained a temporary restraining order and immediate seizure order against the counterfeiter.
• Represented a high-end handbag manufacturer in a product configuration trade dress infringement suit. Tried the counterfeiting case to a jury, and obtained a verdict in favor of the client as well as an award of attorneys' fees, which was upheld on appeal.
• Represented an advertiser and marketer of prepaid debit cards in a false comparative advertising and trademark infringement suit, and obtained a preliminary injunction on consent. Also, represent the same client in a patent infringement suit involving prepaid tickets. Manage a complete portfolio of intellectual property rights, including patent applications and trademark registrations, for the client.
• Represented a major advertising agency in a patent infringement action, and successfully obtained an early dismissal of all claims against the client.
• Represented a manufacturer of deep fryers in a patent infringement action, and obtained a preliminary injunction.
• Represent a seller of prepaid telephone cards in a patent infringement suit.
• Represented a major direct marketing company in a series of false advertising and product configuration trade dress infringement suits against sellers of competing household can openers, and obtained successive temporary restraining orders and preliminary injunctions against various defendants.
• Represented apparel manufacturers in copyright infringement suits.
• Represented a major university in pharmaceutical patent litigation.
Reported Decisions:
• Stern v. Trustees of Columbia University, 434 F.3d 1375 (Fed. Cir. 2006)
• Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003)
• Coach v. We Care Trading Co., Inc., 67 Fed. Appx. 626 (2d Cir. 2002)
• Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 58 U.S.P.Q.2d 1048 (S.D.N.Y. 2001)
• SEB S.A. v. Montgomery Ward & Co., Inc., 137 F. Supp.2d 285 (S.D.N.Y. 2001)
• Jeri-Jo Knitwear, Inc. v. Club Italia, Inc., 1999 U.S. Dist. LEXIS 10632 (S.D.N.Y. 1999)
• Telebrands Corp. v. The Media Group, Inc., 45 U.S.P.Q.2d 1342 (S.D.N.Y. 1997)
• Telebrands Corp. v. Wilton Industries, Inc., 983 F. Supp. 471 (S.D.N.Y. 1997)
• Pasfield v. ITT Hartford Group, Inc., 44 U.S.P.Q.2d 1776 (S.D. Cal. 1997)
• Telebrands v. E. Mishan & Sons, 46 U.S.P.Q.2d 1493 (S.D.N.Y. 1997)
Professional Associations:
• American Bar Association
• Hispanic National Bar Association
• Puerto Rican Bar Association
• New York Intellectual Property Lawyers Association
• International Lawyers Network
• Out Professionals
• Association of the Bar of the City of New York, former member of the Copyright & Literary Property Committee (1999-2001)
• MIT Alumni Association, MIT Club of New York.
Publications:
• "Is That a Coach Bag? Product Configuration Trade Dress in the Second Circuit," INTELLECTUAL PROPERTY TODAY, July 2002
• "False Comparative Advertising," INTELLECTUAL PROPERTY COUNSELING AND LITIGATION (Matthew Bender & Co., Inc.), 1996
Lectures:
• "Obtaining Intellectual Property Protection," Montclair State University, April 2004
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