NEWS

January 19, 2012

EDWARD ELLIS TO SPEAK ON THE AIA FOR THE NASSAU COUNTY BAR ASSOCIATION AND THE IEEE

Ed Ellis is speaking on the America Invents Act (AIA) for the Nassau County Bar Association and the Institute of Electrical and Electronics Engineers (IEEE) in Mineola, New York on January 30, 2012 from 5:30 p.m. to 7:30 p.m. The title of the program is "Patent Law Upheaval? The New America Invents Act & Its Impact on Patent Rights." This is a must see program if you are a patent owner, are interested in seeking patent protection, or are face with a patent infringement lawsuit. For more information about the program, please see http://bit.ly/we8KwG.

MARTIN SCHWIMMER APPEARED ON CNN INTERNATIONAL TO DISCUSS SOPA

Marty Schwimmer was on CNN International discussing SOPA, the Stop Online Piracy Act.
See http://bit.ly/z6jsPa.

January 18, 2012

PETER SLOANE PUBLISHES ABOUT TRADEMARK INVESTIGATIONS IN BNA'S PTCJ

Peter Sloane's interview with trademark investigator Tony Yarborough of Robert Jackson & Associates has just been published in BNA’s Patent, Trademark & Copyright Journal at 83 PTCJ 348. In the interview, Peter and Tony cover a wide range of issues from different investigation methods to ethical issues in trademark investigations to foreign trademark investigations. A copy of the piece may be found on our website at http://leasonellis.com/articles/Interview_With_an_Investigator.pdf.

January 18, 2012

DAVID LEASON QUOTED IN HEDGE FUND ALERT

David Leason was quoted in Hedge Fund Alert about a patent infringement suit filed by firm client Mount Lucas Management against Alpha Financial Technologies. In the complaint filed in federal court in New York, Mount Lucas has accused Alpha Financial of using Mount Lucas’ patented technology in the ATF Diversified Trends Indicator index. The lawsuit was prompted by a routine review of competitor’s funds for Mount Lucas by Leason Ellis. David was quoted in the piece as stating that Mount Lucas is not out to damage Alpha Financial’s business, but only to receive a fair royalty.

January 12, 2012

MARTIN SCHWIMMER TO SPEAK ABOUT SOPA FOR CIPLA

Martin Schwimmer is speaking on "Fighting Online Counterfeiting: Pros and Cons of SOPA Legislation" for the Connecticut Intellectual Property Law Association on Wednesday, January 25, 2012. The event will be held at The Graduate Club in New Haven. Marty will discuss recent court actions regarding infringement by non-U.S. entities and the controversial Stop Online Piracy Act (SOPA) draft legislation. For more information, please see http://cipla.net.

January 4, 2012

YUVAL MARCUS ELECTED TO BOARD OF DIRECTORS FOR THE BCW

The Business Council of Westchester (BCW) – the county’s business advocacy and membership organization – recently elected our partner Yuval H. Marcus and six other exceptional members of the business community to its Board of Directors. “These individuals bring a wide range of knowledge, skills and innovation to the Business Council, and we’re confident that each will make significant and creative contributions to our effort to provide growth opportunities, education and advocacy to our members,” said Dr. Marsha Gordon, the President and CEO of The Business Council of Westchester. To view the full press release, please see http://bit.ly/xgBs6Z.

December 19, 2011

MARTIN SCHWIMMER TO SPEAK ON ISSUES OF INTERMEDIARIES AND RIGHTS HOLDERS

Marty Schwimmer will be speaking at the University of San Francisco School of Law McCarthy Institute and Microsoft Corporation Symposium, titled “Trademark Law and Its Challenges,” hosted by Time Warner Inc. at the Time Warner Center in New York City on February 9, 2012. The symposium will bring together brand owners, trademark attorneys, and public policymakers to face off on today’s most pressing issues in trademark law. Marty will be on a panel addressing the role and responsibilities of intermediaries and rights holders. For more information, please see http://www.usfca.edu/law/mccarthysymp.

December 8, 2011

PETER SLOANE QUOTED IN MANAGING IP

Peter Sloane was quoted extensively on the Apple v. Samsung design patent and trade dress case in an article titled "No Injunction for Apple - But Samsung's Not Safe Yet" published by Managing Intellectual Property. A judge in California had denied Apple's request for a preliminary injunction against Samsung on design patent claims. According to Peter, "The trade dress claims could survive independently of the design patents." The full article, posted at http://bit.ly/vmFU4J, is behind a paywall.

November 16, 2011

NEW ARTICLE BY PETER SLOANE APPEARS IN IP TODAY

Peter Sloane's new article on the role of prefatory language in the identification of goods and services in U.S. trademark applications and registration was published in the October edition of Intellectual Property Today magazine. The article posits that while such wording can serve a notice function, it arguably does not have any legally cognizable significance in defining the scope of the trademark claims. A copy of the article can be found on our website at http://leasonellis.com/articles/Sloane_OCT11_V2.pdf.

November 2, 2011

EDWARD ELLIS TO SPEAK AT NASSAU COUNTY BAR ASSOCIATION/IEEE EVENT

On November 16, 2011, Ed Ellis will appear on a panel for the Nassau County Bar Association and the Long Island Chapter of the The Institute of Electrical and Electronics Engineers (IEEE). The panel will discuss "The America Invents Act and its Impact on Your Patent Rights." The discussion will be held at 15th and West Streets in Mineola, New York, and will begin at 12:30 p.m. To learn more, please see: http://www.ieee.li/calendar/2011-11-16.pdf.

October 27, 2011

MELVIN GARNER SPEAKS ABOUT IP ISSUES AT PRESENTATION IN CHINA

Mel Garner gave a two hour talk on IP barriers to Chinese companies entering the U.S. market at Homoral Intellectual Property Operation Consultancy in the City of Shenzhen, Peoples Republic of China. There were about 80 people in the audience, but it streamed live over the internet to about 2,000 people across China.

October 26, 2011

MARTIN SCHWIMMER TO SPEAK ABOUT ONLINE ISSUES FOR CIPLA

Marty Schwimmer is speaking on "New Tools and Theories in Battling Non-U.S. Online Infringements and an Update on New gTLDs" for the Connecticut Intellectual Property Law Association on Wednesday, November 2, 2011. The event will be held at The Graduate Club in New Haven. For more information, please see: http://www.cipla.net.

October 18, 2011

PETER SLOANE APPOINTED VICE CHAIR OF THE INTA PROGRAMS COMMITTEE

Peter Sloane has been appointed Vice Chair of the Programs Committee for the International Trademark Association. The appointment runs for the 2012-2013 Committee Term. INTA is a not-for-profit membership association dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective commerce.

October 10, 2011

MARTIN SCHWIMMER TO SPEAK AT AIPPI CONFERENCE IN INDIA

Marty Schwimmer will speak at the AIPPI Conference in Hyderabad, India on October 15, 2011. The title of the forum session is "Twitter, Facebook and Other Social Networks - Implications on Trademark and Domain Name Protection." The session will explore questions related to social networks and trademark and domain name protection strategies from different angles including what words or design elements are worth registering and what use in social networks can be considered a trademark use to maintain registration. Furthermore, different infringement scenarios will be discussed, including the liability of social network operators for infringements committed by their users. Finally, names used in social networks can produce conflicts similar to domain dispute scenarios, so the session will address how these cases can be handled. To learn more, see: http://bit.ly/oAPKDj.

October 3, 2011

FOUR LEASON ELLIS ATTORNEYS LISTED IN SUPER LAWYERS

Mel Garner, Paul Fields, Yuval Marcus and Peter Sloane are listed in "Super Lawyers" in Westchester and the New York metro area. Leason Ellis has four of the six IP lawyers named in Westchester. The supplement recently appeared in both Westchester Magazine and The New York Times Magazine..

September 23, 2011

ELIZABETH M. BARNHARD AND DR. SUSIE S. CHENG JOIN THE FIRM

We are proud to announce that Elizabeth M. Barnhard and Susie S. Cheng, Ph.D., two highly experienced attorneys, have joined our Pharma/Biotech Practice Group. Dr. Cheng joins as Partner with an emphasis on advising clients on the development and protection of worldwide patent portfolios, involving technologies including biologics (e.g., vaccines, antisense, proteins, antibodies, stem cells, growth factors), pharmaceuticals, enzyme replacement therapies, molecular diagnostics, medical devices, drug screening, small molecules cosmetic products and personal health products. Ms.Barnhard joins as Chair of the Pharma/Biotech Practice Group and Of Counsel with an emphasis on helping her clients develop comprehensive intellectual property portfolios that address their business needs and manage business issues and risks, and representing her clients in all phases of litigation involving patent, trademark, copyright and unfair competition. To learn more, please see: http://bit.ly/rq8Z5P.

September 21, 2011

MARTIN SCHWIMMER TO SPEAK ON UDRP AND TRADEMARK BULLYING FOR INTA

Marty Schwimmer is scheduled to speak tomorrow at the International Trademark Association conference on Trademarks and the Internet in Washington D.C. Marty is speaking on a morning panel titled "UDRP: The Next Ten Years" and an afternoon panel titled "Know When to Hold 'Em", about when Brand owners should or should not go after those who have infringed their rights. For more information, see: http://www.inta.org/Programs/Pages/11TrademarksAndTheInternetOverview.aspx.

September 17, 2011

NEW "AMERICA INVENTS ACT": LOTS OF CHANGES COMING YOUR WAY

Congress passed the Leahy-Smith America Invents Act (H.R. 1249), which makes major changes to the U.S. patent system. President Obama signed the Act into law on September 16, 2011. What does this mean for you if you have a patent already or want to get a patent for your invention? Enjoy this guest post by Elizabeth Barnhard on the America Invents Act featured on The Trademark Blog of Marty Schwimmer: http://bit.ly/rbJOJ0.

September 16, 2011

KARIN SEGALL APPOINTED ADJUNCT PROFESSOR AT PACE LAW SCHOOL

Karin Segall is now an adjunct professor at Pace Law School where she has begun teaching Trademark Practice and Procedure for the fall semester. This is the first time that Pace is offering this course, and it was specifically designed by Professor Segall from scratch. The class combines formal lecture presentations and case analysis with skill-based practice exercises and assignments so that students can apply the theoretical aspects of trademark law to practical situations. In just the first three classes, students have already been introduced to landmark decisions as well as preliminary searching strategies, comprehensive search analysis and the challenges clients face in selecting and clearing an available, enforceable, strong trademark that will also serve their branding goals.

September 8, 2011

YUVAL MARCUS AND MARTIN SCHWIMMER TO SPEAK ON SOCIAL MEDIA FOR WESFACCA

Yuval Marcus and Marty Schwimmer will speak for the Westchester/Southern Connecticut (WESFACCA) Chapter of the Association of Corporate Counsel about keyword advertising and new gTLDS in a program on September 13th from 8:30 a.m. to 12:00 p.m. at 400 Atlantic St., Stamford, CT. To learn more, please see: http://www.acc.com/chapters/wesfacca/index.cfm?eventID=11143.

August 30, 2011

LEASON ELLIS MOVES TO ONE BARKER AVENUE IN WHITE PLAINS

Leason Ellis has moved into awesome new digs! We are now located at One Barker Avenue in White Plains, New York. The firm braved Hurricane Irene and moved in over the weekend. Files are safe and sound.

August 2, 2011

PETER SLOANE WRITES FOR AMEX'S OPEN FORUM

Peter Sloane has written an article titled "5 Reasons NOT to File a Trademark Application" published on AMEX's OPENForum at http://bit.ly/ofJ87q. The reasons why someone may choose not to file include the failure to search the availability of the mark first, filing may prompt an unwarranted objection, the mark is too descriptive for registration, the anticipated lifespan of the mark is short, and the trademark owner may already own registration of a similar mark.

August 2, 2011

PAUL FIELDS NAMED AMONG WORLD'S LEADING TRADEMARK ATTORNEYS

Paul Fields has been nominated by his peers as one of the world's leading practitioners in trademark law. Paul is listed in The International Who's Who of Trademark Lawyers 2011. The nomination is the result of months of researching law firm clients and trademark lawyers from around the globe.

July 25, 2011

YUVAL MARCUS' ARTICLE ABOUT IP STRATEGY PUBLISHED IN WCBA NEWSLETTER

Yuval Marcus has written an article titled "The Importance of Having an Intellectual Property Strategy" published in the June 2011 edition of the Westchester Country Bar Association Newsletter. The article posits that as a first step in implementing an intellectual property strategy, companies should conduct IP audits to ensure that the protections they have in place are adequate to protect against threats from competitors. A copy of the article is available at http://bit.ly/pdXxAH.

July 18, 2011

MORE ACCOLADES AND ACCOMPLISHMENTS FOR MARTIN SCHWIMMER

Managing IP has named Marty Schwimmer to its list of the 50 most influential people in intellectual property law: http://bit.ly/oG88ST. Marty is of course known as the publisher of The Trademark Blog, www.trademarkblog.com, the world's oldest weblog on trademark law. Marty Schwimmer was also quoted in a World Trademark Review article about AB InBev filing for city dialing codes as trademarks: http://bit.ly/r7PpGx. According to Marty, area codes can be suggestive, and not descriptive, for food products (as opposed to communications products).

July 6, 2011

LEASON ELLIS TO HOST INTA ROUNDTABLE

We are pleased to host a roundtable for the International Trademark Association (INTA) on proper use of trademarks in advertising and product packaging on Thursday, July 14th, from 12:00 p.m. to 2:00 p.m. Join the discussion to learn more about proper use of your trademark in advertising and product packaging, trade dress, social media, and more. If you are interested in attending, please see http://bit.ly/pXKrQY or send an email to Marty Schwimmer at schwimmer@leasonellis.com.

June 21, 2011

MARTIN SCHWIMMER APPEARS ON CNN INTERNATIONAL

Martin Schwimmer appeared on CNN International last night to discuss the new top level domains. ICANN, the not-for-profit entity that oversees the domain name system, just approved a process for accepting applications for new TLDs.

June 14, 2011

MARTIN SCHWIMMER TO SPEAK AT NYIPLA PROGRAM

Martin Schwimmer is speaking at the "Hot Topics in Trademark Law" program for the New York Intellectual Property Law Association at The Princeton Club today. Marty will be discussing "Notice and Takedown for Trademarks." The program schedule is located at http://bit.ly/kvLepw.

June 1, 2011

MARTIN SCHWIMMER TO SPEAK AT GO DADDY REGISTRAR SUMMIT

Marty Schwimmer will be speaking on "Intermediate Liability for the Internet Business: Cases, Best Practices and Proposals" at the Go Daddy Registrar Summit in Scottsdale, Arizona on June 2, 2011.

May 31, 2011

PETER SLOANE AND MARTIN SCHWIMMER AUTHOR ARTICLE FOR AMEX OPEN FORUM

Peter Sloane and Martin Schwimmer have written an article titled "Why Choosing a Brand Name is Not Good Enough," which has been published in the American Express OPEN Forum. The article discusses how choosing a great brand name is just the start of the trademark protection process. In order to fully exploit the value of the brand, the trademark owner should search its availability and apply for registration. The article can be found at http://www.openforum.com/articles/why-choosing-a-great-name-is-not-good-enough.

May 23, 2011

ELIZABETH BARNHARD JOINS LEASON ELLIS AND BOLSTERS THE FIRM'S BIOTECH PRACTICE

We are pleased to welcome Elizabeth Barnhard to our firm. Elizabeth is a senior patent attorney specializing in pharmaceutical and biotechnology matters. During her fifteen-year career at Wyeth/Pfizer, she led multi-disciplinary patent teams servicing several therapeutic and research areas. Among other things, she developed, implemented and oversaw comprehensive global patent portfolios covering all aspects of potential product candidates including biologics, immunoconjugates, and small molecules. Elizabeth also managed complex licensed-in patent portfolios for several major research and development alliances in oncology, neurosciences and infectious diseases, performed transactional and licensing work, and conducted patentability, freedom-to-operate, product and manufacturing patent clearances. You can contact her by e-mail at barnhard@leasonellis.com.

May 4, 2011

MICHELLE DORMAN JOINS THE FIRM AS TRADEMARK ASSOCIATE

We are pleased to welcome Michelle Dorman to our firm as our new Associate. Michelle, a graduate of the University of Michigan and Brooklyn Law School, practices in all aspects of domestic and foreign trademark prosecution. Her experience extends to a wide range of industries including luxury goods, jewelry, food and beverages, and personal care products. While in law school, Michelle interned at Burberry Limited and Classic Media, Inc. She was previously an Associate at WolfBlock, LLP and Cozen O'Connor.

April 26, 2011

MARTIN SCHWIMMER TO LECTURE AT FORDHAM IP CONFERENCE

Marty Schwimmer will be a panelist this week at the Fordham IP Conference on "EC and US Initial Interest Confusion." He will also be speaking on "Notice and Takedown for Trademarks: the time has come for measures to combat deceptive trademark use online." Over 500 people will be attending the conference this Thursday and Friday, April 28-29, 2011. See http://fordhamipconference.com for more information.

April 24, 2011

On April 22, 2011, the USPTO announced that the "Track One" prioritized patent examination program, which was scheduled to go into effect on May 4, 2011, was postponed until further notice due to the cut in the federal budget signed by President Obama on April 15, 2011. We will keep you posted of any further developments.
http://www.uspto.gov/blog/.

April 22, 2011

MARTIN SCHWIMMER TO HOST INTA ROUNDTABLE

Marty Schwimmer will moderate an INTA roundtable on "Proper Use of Trademarks in Advertising and Product Packaging" at our office here in White Plains on Thursday, July 14th from 12:00 p.m. to 2:00 p.m. For more information, please contact Marty at schwimmer@leasonellis.com.

April 18, 2011

WORLD TRADEMARK REVIEW LISTS PETER SLOANE AMONG TOP TRADEMARK LAWYERS

Peter Sloane has been named to World Trademark Review's list of top trademark lawyers around the world: http://bit.ly/ePxlbf. In creating the list, WTRembarked on an exhaustive qualitative research project, conducted over a three-month period, to identify and rank the individuals to turn to for unparalleled trademark services when seeking local and international legal partners.

April 14, 2011

YUVAL MARCUS AND WILLIAM THORNEWELL PUBLISH NEW ARTICLE

The USPTO announced that it will begin accepting requests for prioritized examination of patent applications on May 4, 2011. Under this program, applicants may be able to have their patents processed within 12 months. Please see the attached documents for more details.
http://www.leasonellis.com/articles/USPTO_Announces_Launch_Date_for_Fast_Track_Patent_Processing.pdf.

April 12, 2011

YUVAL MARCUS AND WILLIAM THORNEWELL PUBLISH NEW ARTICLE

It can be unsettling when a business receives a demand letter. Often the letters are vague, deliberately so in some cases. A quick and accurate assessment of the merits of the claims will enable the company to gauge its exposure and develop an appropriate defense strategy. Yuval Marcus and Bill Thornewell have written a timely article published in the April 2011 edition of the Westchester County Bar Association Newsletter titled "Responding to IP Cease and Desist Letters." The article can be found on the web at http://bit.ly/eAgfgK.

April 7, 2011

YUVAL MARCUS CO-CHAIRS UJA-FEDERATION EVENT

Yuval Marcus just co-chaired UJA-Federation of New York's Westchester Business and Professional Division's 2011 Spring Breakfast. David M. Zaslav, president and CEO of Discovery Communications, was the guest speaker. Emmy Award-winning journalist Paula Zahn interviewed Zaslav during the event.

March 31, 2011

MARTIN SCHWIMMER TO SPEAK AT CITY BAR EVENT

Marty Schwimmer is speaking at the New York City Bar on April 1st in a program titled "Public & Private Small Companies: Corporate & Securities Law Issues for Internet, Fashion, Healthcare, Social Networking & Media, Internet, Finance & More." The program is a primer on how lawyers should advise small companies on corporate and securities law.

March 25, 2011

The USPTO announced that it will provide relief for applicants and patentees who were affected by the earthquake and tsunami in Japan. The official letter can be found at http://www.leasonellis.com/articles/USPTO_Press_Release.pdf

March 24, 2011

MARTIN SCHWIMMER QUOTED ON FALSE ADVERTISING SUIT AGAINST GROUPON

Marty Schwimmer was quoted in an article in MediaPostNews' Online Media Daily titled "Groupon Sued for False Advertising on Google." According to the article, a San Francisco tour company has sued Groupon for allegedly running misleading pay-per-click ads on Google, which purportedly increases the price of search ads. The article quotes Marty as stating that that the touring company's argument -- that allegedly false advertising drove up its keyword costs -- appears to be a first. A copy of the article can be found at http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=147156

March 18, 2011

MARTIN SCHWIMMER CO-AUTHORS ARTICLE IN THE TRADEMARK REPORTER

Marty Schwimmer has co-authored an article with Frederick W. Mostert, Chief Legal Counsel, Richemont, titled Notice and Takedowns for Trademarks, published in the January-February 2011 edition of The Trademark Reporter, Vol. 101, No. 1. The article outlines a proposal for a statutory notice and takedown procedure for online trademark infringements, analogous to the DMCA procedure. It consists of a review of intermediary liability case-law from around the world, such as Tiffany v eBay in the US and Louis Vuitton v eBay in France; a survey of existing 'eDRPs' (expedited dispute resolution procedures) such as DCMA, the UDRP for domain names, and eBay's VeRO program; and recommendations for a trademark notice and takedown procedure, learning from the weaknesses and strengths of prior eDRPs. The article concludes that for trademark notice and takedown to be truly effective, it should be implemented on a multi-lateral basis. A copy is available on our website at http://leasonellis.com/articles/Trademark_Reporter_Article.pdf

March 16, 2011

PETER SLOANE AND MATTHEW GANAS PUBLISH ON LEGAL ISSUES IN ADVERTISING

Practical Law Company has just published a paper on legal issues in U.S. advertising campaigns written by Peter Sloane and Matthew Ganas of Leason Ellis: http://bit.ly/hDcR9V. The paper provides information concerning the key legal issues that need to be considered when designing an advertising campaign. Access to the paper is by subscription only.

 

March 14, 2011

MARTY SCHWIMMER APPEARS ON TWIL PODCAST

Marty Schwimmer appeared on "This Week in Law" with Denise Howell on March 11, 2011 (TWiL 102). In the podcast, titled "Private Eyes," Marty joined Denise, Evan Brown and Kashmir Hill in discussing social media eyeglasses, Europe wants Google to forget, no photos of farms in Florida, and more. You can catch the episode at http://twit.tv/twil102 or http://www.facebook.com/thisWEEKinLAW.

 

March 9, 2011

MARTY SCHWIMMER QUOTED ON NEW NINTH CIRCUIT KEYWORD DECISION

Marty Schwimmer was quoted in Online Media Daily, a publication of MediaPost News, about the opinion in Network Automation Inc. v. Advanced Systems Concepts, Inc., 10-55840, decided by the United States Court of Appeals for the Ninth Circuit on March 8, 2011. In the article, titled "Court Lifts Ban On Search Marketer Using Rival's Trademark," Marty stated that "[t]his case makes it harder for trademark owners to stop a neutral keyword ad." The article may be found at http://bit.ly/ibOM3s. Marty posted additional commentary about the decision yesterday on The Trademark Blog at www.trademarkblog.com.

 

March 7, 2011

MAGISTRATE JUDGE ADOPTS LEASON ELLIS' POSITION IN RECOMMENDING TRANSFER

On March 1, 2011, Magistrate Judge Robert C. Mitchell of the United States District Court for the Western District of Pennsylvania issued a Report and Recommendation in The Foreign Candy Company, Inc. v. R.L. Albert & Son, Inc., Civil Action No. 10-999, recommending that defendant's motion to transfer the action to the U.S. District Court for the District of Connecticut be granted. In recommending transfer, the Court found that the District of Connecticut has a greater interest in adjudicating the case since R.L. Albert resides there and the only connections with the Western District of Connecticut were one sale of defendant's product and plaintiff's counsel's offices. Paul Fields, Yuval Marcus and Cameron Reuber filed the motion on behalf of R.L. Albert.

 

March 7, 2011

LEASON ELLIS AMONG TOP PATENT FIRMS IN IP TODAY SURVEY

The list of Top Patent Firms published by IP Today is out and Leason Ellis moved up the rankings once again. We obtained over 50% more patents for our clients in 2010 than in 2009. Leason Ellis is now ranked among the top 250 patent firms in the country.

 

March 1, 2011

LEASON ELLIS ANNOUNCES THE ADDITION OF TOP TRADEMARK, COPYRIGHT AND DOMAIN NAME ATTORNEY

Well-known IP Attorney Martin Schwimmer Joins the Firm. Click here to read the full press release.
 

February 28, 2011

KARIN SEGALL REPRESENTS WINNING APPLICANT IN TRADEMARK OPPOSITION

Karin Segall represented the successful applicant in Cake Divas v. Charmaine Jones, Opposition No. 91177301, in a decision handed down by the Trademark Trial and Appeal Board on February 23, 2011. In dismissing the opposition, the Board held that the applicant had established a proprietary interest in the mark CAKE DIVA prior to that of opposer.

 

February 28, 2011

MELVIN GARNER PARTICIPATES IN MOCK PRELIMINARY INJUNCTION HEARING

Mel Garner participated in a mock preliminary injunction hearing at the Honorable William C. Conner Inn of Court in Manhattan on February 24, 2011. Entitled "Red Stripe Doorstops and Dustpans," the fact pattern dealt with issues of trade dress infringement under Section 43(a) of the Lanham Act. The Honorable Richard M. Berman from the United States District Court for the Southern District of New York presided.

 

January 13, 2011

Karin Segall to Host INTA Roundtable on Trademark Law in the Fashion and Apparel Industries

On Thursday, January 27, 2011, Karin Segall will moderate a Roundtable for the International Trademark Association on trademark law in the fashion and apparel industries at our office in White Plains. At the Roundtable, participants will discuss the importance of trademark law in the fashion industry, and in the apparel industry in general, and how it can most effectively be used to protect a brand owner's rights. For more information about the Roundtable, please see www.inta.org/Roundtables/Pages/Roundtables.aspx or contact Karin at Segall@LeasonEllis.com.

 

January 13, 2011

Karin Segall Authors Article on "Trademark Trolls" in World Trademark Review

Leason Ellis Partner Karin Segall wrote an article titled "Trademark troll fails to obtain preliminary injunction," published in the October 25, 2010 edition WTR Daily, part of World Trademark Review. "Trademark trolls" rely on the fact that it may seem more practical to pay a license than to litigate whether the alleged trademark owner has valid rights. The article, posted on our website at www.leasonellis.com/articles.htm, details how one company stood up to a trademark troll and prevailed and sheds light on the flimsy and sometimes fraudulent efforts of the purported trademark owner who overstated his rights.
 

December 13, 2010

District Court Grants Preliminary Injunction Favoring Leason Ellis Client Katalyst Beverage Corporation

Firm client Katalyst Beverage Corporation, manufacturer of the popular Sippin Syrup® line of relaxation drinks, has been awarded a preliminary injunction against defendants Starco Impex Inc. d/b/a Wholesale Outlet, USA Millennium, and M. Tahir Javed in a trademark infringement action. On December 10, 2010, the United States District Court for the District of New Jersey handed down an Opinion and Order enjoining the defendants from manufacturing relaxation drinks under the confusingly similar mark "Sum Syzrrup" and from using a packaging design and style that infringes the trade dress of Sippin Syrup.®
 

December 2, 2010

YUVAL MARCUS JOINS WESTCHESTER COALITION FOR BUSINESS DEVELOPMENT

We are pleased to report that our partner Yuval Marcus has been named to the Westchester Coalition For Business Development. On November 30, 2010, The Business Council of Westchester announced the formation of the Coalition, a task force of influential business leaders whose mission is to develop strategies focused on retaining existing businesses and attracting new ones to Westchester County. For more information, please see: http://westchesterny.org/Press Release - Coalition for Business Development.pdf.
 

November 30, 2010

PETER SLOANE TO SPEAK AT IPO PTO DAY

Peter Sloane will speak on "Signature Requirements before the Trademark Office" at the 21st Annual Conference on USPTO Law and Practice for the Intellectual Property Owners Education Foundation on December 6th in Washington D.C. To view the brochure, please see http://bit.ly/ecREsM.
 

October 26, 2010

YUVAL MARCUS APPEARS ON PODCAST TO DISCUSS IP ISSUES FOR AUTHORS

Yuval Marcus recently appeared on the radio podcast "Your Book Is Your Hook" to discuss copyright and trademark protection for authors. You can listen to the podcast at http://bit.ly/deVEt2. The show was also broadcast on WomensRadio.com at http://bit.ly/c46ZOi.
 

October 22, 2010

DAVID LEASON AND MELVIN GARNER TO SPEAK AT WESFACCA PATENT LAW PROGRAM

On November 5th, David Leason and Melvin Garner will be panelists for a program entitled "PATENT LAW 2011: EFFECTIVE STRATEGIES & TECHNIQUES TO MAXIMIZE THE VALUE OF COMPANY INNOVATION and COMBAT PATENT INFRINGEMENT ASSERTIONS" offered by Westchester/Southern Connecticut Chapter of the Association of Corporate Counsel (WESFACCA). The program, which will cover a variety of patent law issues and will also include panelists from IBM Corporation, MasterCard Worldwide and Xerox Corporation, will be held at Nokia, Inc. in White Plains. David's program will concentrate on reexamination proceedings and how to utilize reexamination as part of a company's patent strategy. Mel's presentation will focus on tips and techniques to create a strong patent portfolio. For more information, please see the following link: http://www.acc.com/chapters/wesfacca/index.cfm?eventID=9774.
 

October 1, 2010

KARIN SEGALL JOINS IP FIRM LEASON ELLIS IN WHITE PLAINS FROM FOLEY & LARDNER IN MANHATTAN

Leason Ellis LLP is pleased to announce that Karin Segall will be joining the firm as a Partner in the firm’s Trademark and Copyright Practice Group. Ms. Segall, is an experienced trademark lawyer, whose practice encompasses all aspects related to the protection and enforcement of domestic and international trademark rights. She has a broad range of experience in a wide variety of industries including financial, telecommunications, consumer products, publishing, luxury goods, and pharmaceuticals.

Ms. Segall’s practice focuses on counseling clients, prosecuting domestic and international trademark applications, handling enforcement programs, negotiating licenses, and representing client in proceedings before the Trademark Trial and Appeal Board.

Ms. Segall will be coming to Leason Ellis from Foley & Lardner LP in New York City. Previously, Ms. Segall was a Partner at the intellectual property boutique firm of Darby & Darby, where she worked for ten years.

Ms. Segall is a frequent speaker and writer on a variety of intellectual property topics. She has presented at the Practicing Law Institute, the ABA Annual Meeting, the Association of the Bar of the City of New York, and the International Trademark Association on a variety of trademark-related topics. Ms. Segall is also a regular contributor to World Trademark Report.

With the addition of Ms. Segall, Leason Ellis will continues building its intellectual property practice. "Karin is well known throughout the trademark community both as a practitioner and as a prolific author. She is an outstanding addition to our Trademark and Copyright Practice Group” says David Leason, the Managing Partner.

"I am very excited to join Leason Ellis," says Ms. Segall. "The pendulum is swinging back to the boutique firm model for trademarks. Leason Ellis anticipated this shift and is already positioned to meet the needs of clients of all sizes who are facing the fast-paced, technology driven, cost-sensitive environment of the 21st century.”

Ms. Segall is a graduate of Williams College (cum laude) and the Brooklyn Law School (summa cum laude), where she was a member and editor of the Brooklyn Law Review.

About Leason Ellis 

Leason Ellis prides itself in delivering value to its clients by providing intelligent and unexpected solutions to the legal challenges that they face. Clients of the firm benefit from the years of experience cultivated by professionals from established specialty intellectual property firms. We invite you to contact us and learn more about our experience and personalized approach to intellectual property law and management.

Contact: David Leason, 914.288.0022, leason@leasonellis.com

September 28, 2010

WESTCHESTER COUNTY ASSOCIATION HONORS YUVAL MARCUS WITH APEX AWARD

We are thrilled to announce that the Westchester County Association (WCA) has awarded our partner Yuval Marcus with its Award for Professional Excellence (APEX) in the category of Professional/Entrepreneur for 2010. This is also the 60th anniversary year of the WCA. We look forward to celebrating this great achievement and anniversary at the Annual Fall Leadership Dinner at the Doubletree Hotel in Tarrytown on October 28, 2010. The keynote speaker will be Robert W. Selander, Executive Vice Chairman and former CEO of MasterCard Worldwide. For more information, please see http://bit.ly/bLQWHG. nt and anniversary at the Annual Fall Leadership Dinner at the Doubletree Hotel in Tarrytown on October 28, 2010. The keynote speaker will be Robert W. Selander, Executive Vice Chairman and former CEO of MasterCard Worldwide. For more information, please see http://bit.ly/bLQWHG.anniversary at the Annual Fall Leadership Dinner at the Doubletree Hotel in Tarrytown on October 28, 2010. The keynote speaker will be Robert W. Selander, Executive Vice Chairman and former CEO of MasterCard Worldwide. For more information, please see http://bit.ly/bLQWHG.
 

September 28, 2010

MELVIN GARNER AND PAUL FIELDS MAKE LIST OF SUPER LAWYERS FOR IP IN WESTCHESTER

A hearty congratulations to Mel Garner and Paul Fields, who have just been named to Super Lawyers' 2010 list of intellectual property lawyers in Westchester! Leason Ellis was the only firm in the county with more than one attorney on the IP list.
 

August 12, 2010

PAUL FIELDS NAMED TO THE INTERNATIONAL WHO'S WHO OF BUSINESS LAWYERS - TRADEMARKS 2010

We are pleased to report that our own Paul Fields has been named to The International Who's Who of Business Lawyers - Trademarks 2010. Since 1996, Who's Who Legal has identified the foremost legal practitioners in multiple areas of business law. Nominees are selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.
 

July 15, 2010

LEASON ELLIS JAPANESE PATENT GROUP EXPANDS

We are pleased to welcome Tomoko Yasukawa to the firm. Tomoko was born in Japan. She received a B.A. in English Literature from Jyochi University in Tokyo and then attended Babel Inc., where she received a certificate in Japanese/English General Translation. Tomoko later received an M.S. in Publishing from Pace University in New York. For the past three years, Tomoko worked for the intellectual property boutique of Darby & Darby as a Translator and Legal Support Assistant. At Darby, she acted as a liaison between Japanese clients and American attorneys, and she translated technical documents relating to patents and trademarks.

June 24, 2010

PETER SLOANE QUOTED IN ARTICLE ON LAW360

An article published yesterday in Law360 titled “Trademarks May Help Companies Skirt Patent Woes” included several comments from firm partner Peter Sloane. The article discusses how businesses are turning to trademarks to maintain market exclusivity. According to Peter, trademarks have many benefits including that they “can last as long as the mark is still in use.”
 

June 18, 2010

MELVIN GARNER RECOGNIZED IN THE LATEST CORPORATE COUNSEL EDITION OF SUPER LAWYERS MAGAZINE

Mel Garner has been named as a “Super Lawyer” in the 2010 Corporate Counsel Edition of the widely read publication Super Lawyers. Mel has been listed in the publication for several years running. Leason Ellis is the only law firm listed in the Intellectual Property section of the magazine located in White Plains, New York.

June 11, 2010

YUVAL H. MARCUS AND WILLIAM THORNEWELL PUBLISH ARTICLE IN THE IP STRATEGIST

Yuval H. Marcus and William Thornewell have written an article titled “The Art of the IP Infringement Demand Letter: Avoiding Anticipatory DJ Actions in Unfavorable Forums.” The article discusses certain techniques that can be used when drafting cease and desist letters in order to reduce the chances of having to defend a Declaratory Judgment action. The article explains how the nature of the IP rights involved – patents vs. trademarks and copyrights – impacts the appropriate strategy to implement. The article which was originally published in the Intellectual Property Strategist, Vol. 16, No. 9, June 2010 is available on the web at www.leasonellis.com/IP_Strategist_Article_6-1-10.PDF.
 

June 7, 2010

MELVIN GARNER NAMED TO THE INTERNATIONAL WHO'S WHO OF PATENT LAWYERS 2010

Firm Partner Mel Garner has been named to The International Who's Who of Patent Lawyers 2010. The publication is the fruit of months of research as Who's Who legal canvassed and analyzed the opinions of law firm clients and patent lawyers from around the world.

June 3, 2010

LEASON ELLIS REPRESENTS HONEYWELL IN TWO UDRP DOMAIN NAME VICTORIES

Ademco is the burglar and fire alarm equipment business of Honeywell International Inc. Leason Ellis, led by firm partner Peter Sloane, represented client Honeywell in securing transfer of two Ademco variant internet domain name registrations. In Honeywell International Inc. v. Ademco Online (Apr. 14, 2010), the National Arbitration Forum awarded transfer of the domain name ademcoonline.com. In Honeywell International Inc. v. Corp Development & Management (Apr. 16, 2010), the Forum decided in favor of transferring the domain name ademcosales.com. In both cases, the Panel found that the domain names had been registered and used without any right or legitimate interest and in bad faith. Copies of the decisions may be found at bit.ly/aGvmdX  and bit.ly/b9NQ2m.

May 14, 2010

LEASON ELLIS SHOOTS UP IN TRADEMARK RANKINGS

The May 2010 edition of Intellectual Property Today magazine lists Leason Ellis among the top trademark firms in the country. The firm increased the number of trademark registrations obtained for clients by more than 300% over the prior year, a greater increase than any other firm within the top 200. According to Peter Sloane, Chairman of the Trademark and Copyright Practice Group, “[w]e expect to achieve even greater growth in the coming year. The influx of new attorneys from Darby & Darby has turbocharged our trademark practice.”

April 7, 2010

LEASON ELLIS COMMISSIONS NEW MONSTER FROM GRAPHIC DESIGN GURU STEFAN BUCHER

Stefan G. Bucher is a leading graphic designer based in Pasadena, California. Over the years, he has designed CD covers for just about every major record company and done work for Sting and Whitney Houston. British Design & Art Direction gave him a “Yellow Pencil” award for “Most Outstanding Complete Book Design” and the Art Directors Club of New York has declared him a top “Young Gun.” Stefan is also the owner of the graphic firm 344 Design, Inc. and the proprietor of the Daily Monster website. Stefan has now created a custom made monster to adorn the wall of our main conference room.

The design ingeniously incorporates a one-of-a-kind monster in the foreground with the Leason Ellis logo in the background. Stefan rhapsodizes about the process of creating the monster and his introduction to intellectual property law on his website at

http://www.dailymonster.com/344_loves_you/2010/04/the-leason-ellis-monster.html.

The post concludes by thanking “everybody at Leason Ellis for letting me play, and for giving a great new home to this Monster.”

March 22, 2010

MELVIN GARNER, A LEADER IN THE IP BAR, JOINS LEASON ELLIS AS PARTNER FROM DARBY & DARBY

WHITE PLAINS, NEW YORK - Melvin C. Garner, a luminary in the field of intellectual property law, is joining Leason Ellis LLP, the largest IP law firm based in White Plains, the county seat of Westchester County, New York, as Partner. Mel was previously with Darby & Darby P.C., one of the oldest intellectual property firms in the world.

Mel specializes in the procurement and litigation of patent, trademark, trade secret and copyright matters involving various technologies including laser applications, video circuits, cellular telephones, office products, medical products and computer hardware and software. His clients range from Fortune 500 and Forbes International 500 corporations to small and mid-sized companies.

Mel is a Past President of the New York Intellectual Property Law Association and of the American Intellectual Property Law Association, and a board member of the National Inventors Hall of Fame. He is also a founder and member of the executive committee of the Hon. William C. Conner Inn. Mel is listed in Euromoney's Guide to the World's Leading Patent Law Experts. He has also been named as a "New York Super Lawyer" for the past four years. Mel has also been a commentator on patent issues including on the CNBC television program "Power Lunch."

Joining Mel at Leason Ellis is Mitsu Haraguchi, a registered patent agent with a Masters of Science in Biochemistry. Mitsu speaks Japanese and worked in the Japanese Practice Group of Darby & Darby.

"I am looking forward to joining Leason Ellis, which has an all-star team of patent, trademark and copyright lawyers," says Mel. "The fact that my Darby colleagues Paul Fields and Michael Sweedler also chose Leason Ellis reinforced my opinion of the firm."

David Leason, Managing Partner of Leason Ellis, states "it is a major coup for us to bring on Mel Garner. He is widely recognized as one of the best patent attorneys in the country. His joining our firm validates our belief that the boutique model is alive and well and that we are at the vanguard of those firms."

About Leason Ellis

Leason Ellis prides itself in delivering value to its clients by providing intelligent and unexpected solutions to the legal challenges that they face. Clients of the firm benefit from the years of experience cultivated by professionals from established specialty intellectual property firms. We invite you to contact us and learn more about our experience and personalized approach to intellectual property law and management.

Contact: David Leason, 914.288.0022, leason@leasonellis.com
 

March 15, 2010

NOTED IP ATTORNEY PAUL FIELDS JOINS LEASON ELLIS FROM DARBY & DARBY

WHITE PLAINS, NEW YORK - Paul Fields, a highly regarded intellectual property attorney, is joining Leason Ellis LLP, the largest IP law firm based in White Plains, the county seat of Westchester County, New York. Paul was previously with Darby & Darby P.C., one of the oldest intellectual property firms in the world.

Paul has extensive experience in litigating trademark, copyright and patent cases. He routinely advises clients on trademark and patent issues, including both procurement and maintenance, on a global basis.

A significant portion of Paul's practice focuses on trademark rights and related issues such as unfair competition and false advertising. His practice also includes the prosecution, enforcement, and counseling of patents and patent-related matters.

David Leason, Managing Partner of Leason Ellis, states, "Paul has an outstanding reputation in the intellectual property community as an attorney of the highest caliber. The depth of his practice will add tremendously to the capability of our firm."

According to Paul, "I look forward to rejoining my colleagues from Darby, who have done a tremendous job in building up Leason Ellis as the firm to watch among IP boutiques in the coming years. It is the right firm at the right time."

Paul has been recognized in numerous editions of The International Who's Who of Trademark Lawyers and New York Super Lawyers. He is also a frequent speaker at the International Trademark Association and at other intellectual property associations.

About Leason Ellis

Leason Ellis prides itself in delivering value to its clients by providing intelligent and unexpected solutions to the legal challenges that they face. Clients of the firm benefit from the years of experience cultivated by professionals from established specialty intellectual property firms. We invite you to contact us and learn more about our experience and personalized approach to intellectual property law and management.

Contact: David Leason, 914.288.0022, leason@leasonellis.com
 

March 15, 2010

PROMINENT PATENT ATTORNEY MICHAEL J. SWEEDLER JOINS
LEASON ELLIS FROM DARBY & DARBY

WHITE PLAINS, NEW YORK - Michael J. Sweedler, a renowned patent attorney, is joining Leason Ellis LLP, the largest IP law firm based in White Plains, the county seat of Westchester County, New York. Michael was previously with Darby & Darby P.C., one of the oldest intellectual property firms in the world.

Michael specializes in the procurement, analysis and litigation of patents involving diverse technologies involving telecommunications, medical devices and food products. Over the years, he has represented clients including such well known companies as Wyeth, C.R. Bard, The Topps Company and Nokia.

Michael prosecutes patents for leading manufacturers of electrical equipment and medical devices. He also provides opinions on infringement and/or validity of patents involving complex electronic and mechanical technologies, and he has served as an expert witness. In litigation matters, Michael has obtained a judgment in favor of the plaintiff on a patent covering the basic electrode used in fetal monitoring. He was also lead counsel for a major pharmaceutical company in a false advertising case and for a manufacturer of cellular telephones in a case before the International Trade Commission.

"I am very pleased to join Leason Ellis, a rapidly growing and progressive law firm in Westchester," says Michael. "I look forward to sharing my knowledge and experience with the firm and its clients. I know my clients will be happy there."

David Leason, Managing Partner of the firm, states, "we are very excited to have Michael join us here. I worked with Michael while at Darby and know him to be a truly exceptional patent attorney."

Michael has an AV preeminent rating from Martindale-Hubbell, the highest rating available. He earned his undergraduate degree in electrical engineering from Yale University and his law degree from George Washington University.

About Leason Ellis

Leason Ellis prides itself in delivering value to its clients by providing intelligent and unexpected solutions to the legal challenges that they face. Clients of the firm benefit from the years of experience cultivated by professionals from established specialty intellectual property firms. We invite you to contact us and learn more about our experience and personalized approach to intellectual property law and management.

Contact: David Leason, 914.288.0022, leason@leasonellis.com
 

March 9, 2010

LEASON ELLIS MAKES LIST OF TOP PATENT FIRMS AGAIN

As Leason Ellis approaches its second anniversary, it again made the list of Top Patent Firms in the widely-read monthly publication Intellectual Property Today. The criteria for making the list is based on a count of patents granted to clients of the firm. Our Managing Partner, David Leason, responded to this great news by noting "This year the ranking was tightened to exclude design patents, making it harder for firms to gain recognition, yet Leason Ellis is still moving in the ranks, with a total count that is more than double our performance in 2009 and earning us continued recognition in our trade."

January 21, 2010

LEASON ELLIS, a leading IP firm in Westchester, HOLDS THE LINE ON PRICING

Leason Ellis Maintains and Even Lowers some rates in intellectual property matters

WHITE PLAINS, NEW YORK — Following a year in which the firm continued to expand its business and client base by offering competitive pricing, Leason Ellis has decided not to raise its rates for 2010. Some attorneys at the firm have even reduced their hourly billing rates. In fact, the firm as a whole has not increased its fees since forming in 2008.

David Leason, Managing Partner of the firm, states, “when we opened our doors, we decreased our rates about 20% from our prior practice in Manhattan. Our commitment to keeping our rates affordable to our clients remains unchanged.”

This stands in stark contrast to the position taken by most other firms. According to the legal web site Law.com , about 90 percent of the firms that responded to its survey said that were increasing rates in 2010.

In this difficult economic environment, many clients are looking for certainty as to costs. Peter Sloane, Chairman of the Trademark and Copyright Practice Group at Leason Ellis, states “we have flat rates for many patent, trademark and copyright charges so that clients can budget their costs in advance. Unlike many other firms, we also do not charge for routine administrative expenses like postage, copying and faxing.”

Leason Ellis has seen significant growth over the past year. The firm has taken on additional office space and added several attorneys and staff. Intellectual Property Today magazine listed Leason Ellis among the top patent and trademark firms in the U.S. for 2009.

About Leason Ellis

Leason Ellis prides itself in delivering value to its clients by providing intelligent and unexpected solutions to the legal challenges that they face. Clients of the firm benefit from the years of experience cultivated by professionals from established specialty intellectual property firms. We invite you to contact us and learn more about our experience and personalized approach to intellectual property law and management.

Contact: David Leason, 914.288.0022, leason@leasonellis.com

January 20, 2010

PETER SLOANE TO SPEAK ON “NETWORK FOR RESULTS” FOR CONNECT-TO-CARE

On January 28th, Peter Sloane will present “Network for Results” at UJA Federation of NY’s Connect to Care. Whether or not you are currently employed, it is essential to increase the number of your contacts. Those in your network are potential employers, clients, customers, and referral sources now or in the future. You never know when you will need their help. But it is critical to project the right message and to safeguard the goodwill in your name. Networking without abandon is a sure way to destroy that goodwill. Come learn how to balance these competing interests in an informative presentation. To learn more, please see http://bit.ly/5SGp38

December 9, 2009

YUVAL MARCUS TO SPEAK ON IP RISKS IN INTERNET ADVERTISING

On January 29, 2010, Yuval Marcus will participate on a panel for a program entitled "Internet Sales, 3rd Party Manufacturing and Online Advertising -- Contemporary Challenges for In-House Counsel" offered by the Westchester/Southern Connecticut Chapter of the Association of Corporate Counsel (WESFACCA). His presentation will cover IP issues in online advertising including the purchase of trademarked keywords. For more information, please see the following link:

http://www.acc.com/chapters/wesfacca/index.cfm?eventID=4349

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