Fross Zelnick Lehrman & Zissu PC

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Gold - Firms: prosecution and strategy

Gold - Firms: enforcement and litigation

“Fross Zelnick has an amazing depth of experience when it comes brands. There are few, if any firms in the world with such a focus on trademark, media, entertainment and advertising law – no matter what problem you throw at its lawyers, they’ll figure a way out.” It is unique in terms of its bench strength, to which the rankings attest: many of its illustrious practitioners in the listings come in for vocal praise from clients – including a lot of the world’s best-loved brands – which speaks to their quality. Cara Boyle helps to uphold the outfit’s impeccable reputation for global brand management, and is cited for her “lowkey but direct and honest approach” and for the level of respect she commands among USPTO examiners. She is an integral member of a team that manages prosecution and enforcement for Peloton; so too are David Donahue and Leo Kittay. “David is excellent at giving general trademark advice and is brilliant in trademark disputes and TTAB proceedings. He’s creative, thoughtful, thorough and business-minded, and great at defining tailored strategies for every situation.” “Leo provides consistently practical advice and is a collaborative lawyer who involves colleagues when appropriate. He, along with the firm, provides an extraordinary level of support.” Like Donahue – and many others here – Karen Lim “stands out for her commerciality – she’s extremely easy to connect with on a business level and great at building rapport with clients”. Lim has previously lived and worked outside of the United States; as has Carlos Cucurella, a Barcelonan who has also practised in Spain. Another of the ensemble’s superlative cross-border brand protectors, Cucurella is “thorough, detail oriented and extremely responsive. When you entrust a matter to his care, you know it will be handled to the highest standard”. On the enforcement and litigation side, two stand-outs are Barbara Solomon and Craig Mende, who boast not only abundant trial experience, but also well-rounded skillsets that lend themselves well to litigation avoidance. In the words of one client: “Barbara is hands down the best trademark attorney around. She is whip-smart, practical, creative, efficient and incredibly hardworking. No issue is too complex for her – she obtains fantastic results regardless.” “Craig provides essential strategic advice and takes an incredibly commercial approach. He sizes things up from all angles and can find one solution to take care of 100 problems.” All these lawyers link up well with various colleagues, putting the firm’s collaborative approach on display. Playing a key role for Peloton, Allison Strickland Ricketts has prosecuted thousands of applications through to grant and is a powerhouse of rights procurement. She has recently undertaken important, time-sensitive work for a pharmaceutical multinational in connection with covid-19 related marks alongside Lim and Charles Weigell, who adds tremendous value with his combination of trademark, copyright and design patents know-how. James Weinberger and Lawrence Apolzon recently linked up with Cucurella to oversee a joint venture agreement on behalf of a high end alcoholic drinks company. Weinberger litigates with aplomb and provides commercially infused counsel on trademark and copyright strategy. Apolzon is a gifted deal negotiator who supports famous luxury, fashion and entertainment names in many other ways. Speaking of transactional work, Nadine Jacobson, together with Lim, is helping various companies to secure financing using the value of their IP assets as collateral. The scouting report has Jacobson and Lydia Gobena down as two of the savviest global strategists not just on Fross Zelnick’s superb roster or in the United States, but worldwide. Despite the challenges of the past two years, Fross Zelnick has maintained its practice at the highest level and has assumed responsibility for several large portfolios; Jason Jones has been a beneficiary of this and now supports a major videogame company on all aspects of portfolio management, clearance, prosecution and enforcement. Jones comes from a litigation background and is comfortably at ease in federal and state courts and the TTAB. He recently won an opposition for Robert Kirkman LLC, owner of THE WALKING DEAD trademark, against an application to register the mark THE TOKING DEAD, working in an effective pairing with Mende. Tamar Niv Bessinger has also seen her caseload grow in this way; her deftness in interacting with the USPTO and obtaining difficult trademark registrations has earned her much credit. Acting for Richemont, Laura Popp-Rosenberg and John Margiotta are defending several luxury watch brands against claims asserted by a jewellery and watch manufacturer for infringement of the trademark RED GOLD. Accomplished litigator Popp-Rosenberg gets a kick out of representing dynamic emerging brands and established market leaders, as it enables her to apply her skill in tailoring strategies according to need. Margiotta does a sterling job in this regard too, investing in really getting to know clients at the business and company culture levels. Luminary Richard Lehv continues to stand out for his litigation wisdom; his strategic thinking and advocacy often results in plaintiffs dropping their cases against his clients entirely.

Firm Profile

The world’s most celebrated brands and content providers trust Fross Zelnick to protect and enforce their valuable global trademark, copyright and design patent assets. Practising exclusively in these areas, the firm’s approximately 50 lawyers advise clients throughout the United States and around the world on matters involving strategy, registration, enforcement, litigation and transactions.

Fross Zelnick’s more than 50-year history affords its lawyers both extensive experience and knowledge in diverse markets around the globe, including in such pivotal regions as the United Kingdom, the European Union, China, Latin America, Africa and the Middle East. Since its establishment, Fross Zelnick has painstakingly built an unparalleled and dynamic network of trusted leading foreign practitioners to complement the firm’s expertise, which frequently enables exceptional responsiveness to client inquiries.

Whether managing global portfolios, rolling out new products or assisting iconic brands on major cross-border transactions, Fross Zelnick’s deep knowledge provides in-house counsel with practical guidance and industry-specific know-how in all matters relating to trademarks, copyright, trade dress, unfair competition, false advertising, design protection, cybersquatting and anti- counterfeiting.

Fross Zelnick’s litigators focus entirely on IP matters, successfully resolving disputes and appearing in state and federal courts, proceedings at the USPTO’s Trademark Trial and Appeal Board, and in arbitration and mediation. Internationally, the firm’s broad experience in foreign and multi-jurisdictional trademark and copyright litigation includes a long record of successfully enforcing clients’ IP rights and securing leading decisions in the field.

Trademarks

Fross Zelnick’s lawyers counsel US and international clients on the best strategies to search, clear, protect and enforce trademarks for US and worldwide use. Throughout the firm’s more than 50-year history of managing large trademark portfolios for top brand owners, there is likely no trademark issue that Fross Zelnick has not handled. In fact, other law firms frequently seek advice from Fross Zelnick when faced with unique or hard-to-handle US and international issues.

Copyright and content

Renowned for winning significant cases involving Batman, Superman, Winnie the Pooh and other famous characters, the firm’s extensive experience with copyright and content – both in the United States and internationally – includes litigation, counselling, registration, enforcement and defence, as well as statutory termination, copyright licensing and assignment, analysis of work-for-hire issues, and securing copyright registrations, including appeals of rejections issued by the US Copyright Office.

Design patents

Fross Zelnick’s lawyers advise clients on difficult issues involving design patents, industrial design protection, trade dress and three-dimensional marks, providing strategies to enhance the value and enforceability of the issued design patents. The firm’s experience includes clearing, prosecuting, protecting and enforcing design patents, as well as instructing prior art searches and providing opinions on patentability, novelty and infringement.

Litigation

Fross Zelnick’s litigation practice covers trademarks, copyright, design patents and related legal fields. With a reputation for best-in-class expertise, the firm’s lawyers are also frequently able to favourably resolve disputes long before cases go to trial. Clients benefit from the firm’s understanding of critical subtleties upon which litigation outcomes can often hinge.

Social media and domain names

Fross Zelnick advises on worldwide domain name registrations and disputes, monitors the Web for infringements, negotiates transactions and develops strategies for protecting IP rights online. Lawyers also advise clients on ways to protect their portfolios from improper use by others on social media and how clients can leverage their assets without infringing the intellectual property, publicity or privacy rights of others.

Publicity and privacy

Fross Zelnick has successfully represented renowned clients in some of the leading right-of-publicity matters, retrieved numerous infringing or disparaging trademarks and domain names from others for celebrity clients, and litigated high-profile cases involving the unauthorised use of well-known names and likenesses.

Anti-counterfeiting

To prevent the import, sale and distribution of a wide variety of infringing or counterfeit products, including apparel, footwear, cosmetics, jewellery and luxury goods, Fross Zelnick has developed and executed sophisticated cost-effective enforcement programmes for clients with impressive results.

Transactions

Whether buying, selling, spinning off or engaging in any transaction involving an IP portfolio, Fross Zelnick advises clients on structuring the deal’s IP provisions, performs necessary due diligence efficiently, and negotiates and drafts key documents. And when novel or delicate issues arise, the firm’s deep experience provides innovative solutions to meet clients’ needs.

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